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`Paper No. ___
`Filed: March 26, 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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`—————————————————
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`Case IPR2017-00219
`Patents 7,116,710
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`—————————————————
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`PATENT OWNER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
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`Case IPR2017-00219
`Patents 7,116,710
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`I.
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`INTRODUCTION
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`The Board should exclude new evidence in support of arguments raised for
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`the first time in Petitioner’s Reply, including new attorney-generated graphs, data,
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`theories of unpatentability, witness testimony and inexcusable failure to address
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`reasonable expectation of success (“REOS”). Petitioner’s argument that the
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`conclusory assertion that reengineering the Divsalar code is “simple” shows a
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`REOS was not presented in the petition and is wrong as a matter of law and fact.
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`II. ARGUMENT
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`A. The new arguments were not a part of the petition
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`Evidence in support of Petitioner’s arguments never advanced in the petition
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`should be excluded under FRE 401-403, including EXS1244-1249, 1257-1261,
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`1265, and 1268. For example, Petitioner now claims that the conclusory assertion
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`that the proposed modification is “simple” addressed REOS. Opp. 4. But the
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`“simplicity” argument in the petition is clearly labeled as one regarding motivation
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`to combine, not REOS (Pet. 37-38), and this is merely a post hac attempt to cure a
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`deficient petition. Moreover, the relative complexity of performing a modification
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`simply does not speak to whether it would be conducted in the first place or
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`expected to be successful. And besides elements being capable of combination,
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`there must also be an expectation “that the combination would have worked for its
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`intended purpose.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
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`-1-
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`Case IPR2017-00219
`Patents 7,116,710
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`1314, 1326 (Fed. Cir. 2009). The petition made no showing that its proposed
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`modification would have been expected to function, let alone improve codes,
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`which cannot be cured in Reply with unreliable and misleading evidence that
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`Caltech is not permitted to rebut with its own evidence.
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`Further, Petitioner is simply wrong that its proposed modification was
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`“simple.” Frey, the only reference that discloses irregular repetition of information
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`bits, explicitly states that “[f]inding a good [irregular] profile is not trivial,” and
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`depends on parameters such as “the permuter and the distortion measure”
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`(EX1202, 5), neither of which Frey discloses. See EX2004 ¶69. Petitioner also
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`concedes that the field of error-correction codes was unpredictable (Reply 9), and
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`yet “[u]npredictability of results equates more with nonobviousness rather than
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`obviousness.” Honeywell Int’l, Inc. v. Mexichem Amanco Holding S.A., 865 F.3d
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`1348, 1356 (Fed. Cir. 2017).
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`Petitioner also contends that it “is entitled to respond” to Caltech’s
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`arguments in the POR. Opp. 4-5. But petitioner misses the point—critical aspects
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`of an obviousness inquiry must be addressed in the petition. Fed. Register Vol. 77
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`No. 157 at 48767 (identifying improper Reply). Attempting to fill an identified
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`void in the petition materials is not legitimate Reply material. Presenting an
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`entirely new modification to an RA code because the original modification has
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`been rebutted is not legitimate Reply material. Such content is more prejudicial
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`Case IPR2017-00219
`Patents 7,116,710
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`than probative as Caltech has no meaningful opportunity to respond.
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`B. Other Divsalar-related exhibits should be excluded
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`Petitioner claims EXS1257 and 1258 rebut Dr. Divsalar’s testimony. But
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`Dr. Divsalar’s testimony that irregular repetition would add complexity with no
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`expected benefit (or even functionality) remains unrebutted. EX2031 ¶¶33-36.
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`Petitioner’s pivot from a modified code with a rate of 1/3 to a new modification
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`with a much slower rate of 1/5 underscores, not rebuts, Dr. Divsalar’s testimony.
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`Petitioner claims Exhibit 1261 impeaches Dr. Divsalar’s testimony that IRA
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`codes “are not a subset of the RA codes described in [Divsalar].” Opp. 6-7. First,
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`this was not an argument raised in the Reply. Second, the argument is nonsensical
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`as Exhibit 1261 (not prior art) is not reflective of a POSA at the time and, at any
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`rate, is entirely consistent with Dr. Divsalar’s testimony.
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`C. Cross-examination of witnesses does not cure Caltech’s prejudice
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`Contrary to Federal Circuit guidance, Petitioner argues that prejudice to
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`Caltech regarding EXS1244-1249, 1232-1234, 1237, 1257-1261, 1262, 1264,
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`1265, and 1268 could be cured by post-reply cross-examination (and presumably
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`observations on cross). Opp. 8-9, 13. But observations on cross-examination are
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`not “a substitute for the opportunity to present arguments and evidence.” In re
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`Nuvasive, Inc., 841 F.3d 966, 973 (Fed. Cir. 2016). And Caltech will have no
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`opportunity to submit its own evidence to rebut Petitioner’s new belated evidence.
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`-3-
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`Case IPR2017-00219
`Patents 7,116,710
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`Moreover, Petitioner does not explain how its own improper questioning of
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`Caltech’s witnesses (EX1262, 1264) would be cured by cross-examination of its
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`own declarants. And Caltech objected to EX1274 for violating the Board’s
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`prohibition on including substantive argument and the exhibit should be excluded
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`under FRE 401-403. See Paper 58 (due after motion to exclude).
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`With particular regard to Dr. Frey, Petitioner does not dispute that he did not
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`consider Dr. Davis’s cross-examination. Cross-examination of Dr. Frey would not
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`cure his failure to consider the full scope of Dr. Davis’s testimony in the first place.
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`As to the Allerton witnesses and the supplemental information, Caltech
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`responded to the petition’s assertion that Frey was published on March 20. Caltech
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`relied on the Board’s guidance that worries about Petitioner pushing an earlier
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`publication date were mere “speculat[ion]” and therefore premature. Paper 41, 3-
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`4. Petitions require more than bare notice pleading, and “on or before March 20”
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`is simply not adequate to apprise Caltech of intent to use an earlier date, let alone
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`what that date might be. Moreover, with regard to antedating, only the last date of
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`a range of dates is considered. See Oka v. Youssefyeh, 849 F.2d 581, 584 (Fed. Cir.
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`1988). No February date was asserted in the petition, and Caltech will have no
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`opportunity to present its own evidence to rebut the new publication theory.
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`D. Dr. Davis’s unavailability remains suspect
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`Petitioner falsely claims Caltech disputes the authenticity of Dr. Davis’s
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`-4-
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`Case IPR2017-00219
`Patents 7,116,710
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`Fulbright scholarship. Opp. 12. Rather, Petitioner’s assertion of Dr. Davis’s
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`unavailability strains credulity considering that (1) Dr. Davis knew of his Fulbright
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`responsibilities by at least February 2017, a year before the Reply materials were
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`due; (2) Dr. Frey asserts that his declaration efforts only took a few hours
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`(EX1265, ¶¶45-55); (3) Dr. Davis testified that Petitioner’s counsel conducts most
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`of the drafting of witness testimony (EX2066 12:6-7); and (4) Dr. Davis remains
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`available for deposition in the U.S. (EX1273 ¶3).
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`E.
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`Exhibit 1267 should not be considered in a vacuum
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`Petitioner provides no response to Caltech’s showing that, per FRE 106,
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`Exhibit 1267 should only be considered in the context of the relevant district court
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`record. Mot. 13-14. Moreover, Petitioner is wrong that Judge Pfaelzer held that
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`DVB-S2 “does not satisfy the limitations of the ’710 patent.” Reply 14-15. Judge
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`Pfaelzer only held that Hughes’s infringement of the ’032 patent involved a
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`genuine dispute of material fact to be resolved by the jury. EX1267, *5.
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`F.
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`Exhibits that Petitioner does not rely on should be excluded
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`Petitioner does not dispute it has not relied upon EXS1212, 1229-1231,
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`1235, 1236, 1238-1243, and 1255. Opp. 14-15. Petitioner argues EXS1213, 1216,
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`1219, 1245, 1248-1249, 1259, and 1260 should be admitted to “maintain a
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`complete record” (Opp. 15) but does not otherwise argue they are relevant. They
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`should be excluded.
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`-5-
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`Case IPR2017-00219
`Patents 7,116,710
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`Date: March 26, 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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`-6-
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`Case IPR2017-00219
`Patents 7,116,710
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`CERTIFICATE OF SERVICE
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`I certify that the foregoing Patent Owner’s Reply in Support of Motion to
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`Exclude was served on this 26th day of March, 2018, on the Petitioner at the
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`electronic service addresses of the 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 26, 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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`-7-
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