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`Paper No. ___
`Filed: April 3, 2017
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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,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_____________________________
`
`Case IPR2017-00219
`Patent No. 7,116,710
`_____________________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
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`

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`TABLE OF CONTENTS
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`I.INTRODUCTION ................................................................................................ 1
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`II.THE PRESENT PETITION RECYCLES PREVIOUS CHALLENGES
`REJECTED BY THE OFFICE ..................................................................... 3
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`III.THE PETITION RELIES ON IMPROPER EVIDENCE AND
`UNSUBSTANTIATED ALLEGATIONS .................................................... 8
`
`A.
`
`B.
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`The Petition Fails to Establish That Divsalar Qualifies as Prior
`Art ...................................................................................................... 8
`Petitioner has not shown that Pfister qualifies as a prior art
`printed publication .............................................................................. 9
`
`IV.THE PROPOSED GROUNDS OF CHALLENGE FAIL ................................ 12
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`A. Ground 1 fails ................................................................................... 12
`1. Divsalar in view of Luby fails to disclose the “partitioning”
`limitation in claim 1 and its dependent claims ................................................ 13
`2. The petition does not demonstrate that either Divsalar or Luby
`teaches irregular repetition of information bits as required by the challenged
`claims…………………………………………………………………………19
`3. The petition does not demonstrate that a person of ordinary skill in
`the art would have had reason to combine the teachings of Divsalar and Luby
`as proposed .................................................................................................... 31
`B.
`Ground 2 fails ................................................................................... 36
`1. Petitioner’s insufficient rationale to combine Divsalar and Luby
`with Luby97 fails to show that the claims are obvious ................................... 37
`2. The references fail to disclose limitations in claim 15 and its
`dependent claims ............................................................................................ 39
`3. The references fail to disclose limitations in claim 25 and its
`dependent claims ............................................................................................ 41
`C.
`Ground 3 fails ................................................................................... 42
`D. Ground 4 fails ................................................................................... 43
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`V.CONCLUSION ................................................................................................. 44
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`VI.APPENDIX ..................................................................................................... 46
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`-i-
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`I.
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`INTRODUCTION
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`The Board should not institute inter partes review (IPR) on claims 1-8, 10-
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`17, and 19-33 of U.S. Patent No. 7,116,710 (“the ’710 patent”) because petitioner
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`Apple Inc. (“Petitioner” or “Apple”) has not met its burden of showing that it has a
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`reasonable likelihood of prevailing on any of its proposed grounds of
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`unpatentability.
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`As an initial matter, the present petition rehashes substantially the same art
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`and arguments that have already been presented to the Office and rejected by the
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`Board in previous IPR challenges. Petitioner acknowledges that the ’710 patent
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`was already “challenged in two petitions for inter partes review” (Pet. p. 3.)—the
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`Board rejected both of those petitions.
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`In one of those previous challenges, the Hughes IPR2015-00068 case, the
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`Hughes petitioner relied on the Divsalar reference in view of a patent to Luby, et
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`al. (“the Luby ’909 patent”) in each of the grounds presented. In this instance,
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`Petitioner presents the same Divsalar reference and substitutes the Luby paper for
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`the Luby ’909 patent to present substantially the same art and arguments that the
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`Board rejected in a prior petition. This is particularly important in the present
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`case—both for purposes of analysis under 35 U.S.C. §325(d) and because the
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`current Luby paper presents the same deficiencies that were a basis for rejecting
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`the Divsalar/Luby ’909 patent challenge.
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`-1-
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`In the present instance, the Petitioner has fundamentally misapprehended the
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`disclosure of Luby by focusing on the buzzword “irregular” without adequately
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`addressing substance of the disclosure. Once the disclosure of Luby is scrutinized
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`closely, as the Board did in the previous Hughes IPR2015-00068 Decision denying
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`institution (Paper 18), the Petitioner’s challenge in this case similarly collapses on
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`itself. There, the Board recognized that “irregular graphing” in Luby is not the
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`same as the irregular repetition recited in the ’710 patent claims. IPR2015-00068,
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`Paper 18 at 15 (“Petitioner has not provided sufficient evidence or argument to
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`support the contention that ‘irregular graphing’ of Luby teaches the…” irregular
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`repetition of information bits, as recited in the claims in the claims.)
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`Submitted herewith is a declaration from Dr. R. Michael Tanner, an expert
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`in graphical analysis of codes and the inventor of the “Tanner graph.” (Ex. 2001,
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`¶¶ 1-6); see also Ex. 2002.1 Dr. Tanner confirms, as previously recognized by the
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`Board, that the “irregular graphing” of Luby fails to provide the irregular repetition
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`of information bits recited in the challenged claims. As discussed in greater detail
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`1 Dr. Tanner’s testimony is submitted to explain a deficiency in the petition
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`materials. See e.g., Arris Group, Inc., et al. v. Mobile Telecomms. Techs., LLC, No.
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`IPR2016-00765, Paper 12 (PTAB September 21, 2016) (crediting testimony
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`explaining the failure of the petitioner to address or recognize a deficiency in the
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`disclosure of a cited reference).
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`-2-
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`below, Dr. Tanner explains how the very Tanner graph provided by Petitioner as a
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`regular repeat-accumulate code already exhibits irregularity as defined by Luby
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`(i.e., “irregular graphing”). In other words, Petitioner fundamentally
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`misapprehends the difference between “irregular graphing” in Luby and irregular
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`repetition in the challenged claims.
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`As such, even assuming the relied-upon references qualify as prior art—
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`which they do not—the proposed grounds of challenge fail to demonstrate that
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`each feature of claims 1-8, 10-17 and 19-33 of the ’710 patent is found in the cited
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`art. Multiple aspects of the claimed subject matter are missing from the asserted
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`references. Moreover, the rationale for combining the references is unsupported
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`and is tainted by the same misapprehension of the reference disclosures.
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`Accordingly, institution of inter partes review should be denied.
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`II. THE PRESENT PETITION RECYCLES PREVIOUS
`CHALLENGES REJECTED BY THE OFFICE
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`The instant petition presents one in a series of challenges to the ’710 patent,
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`but rehashes substantially the same art and arguments already presented to the
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`Office and rejected by the Board. Accordingly, the Board should exercise its
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`discretion in denying institution on all grounds in the petition. 35 U.S.C. § 325(d)
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`(“In determining whether to institute or order a proceeding under this chapter,
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`chapter 30, or chapter 31, the Director may take into account whether, and reject
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`-3-
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`the petition or request because, the same or substantially the same prior art or
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`arguments previously were presented to the Office.”) (emphasis added).
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`The present petition fails to offer any art or arguments substantially different
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`from what has already been presented to—and rejected by—the Board. Petitioner
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`acknowledges that the’710 patent was already “challenged in two petitions for
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`inter partes review.” (Pet. p. 3.) The Board rejected both of those petitions. See
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`Hughes Network Systems, LLC v. California Institute of Tech., Case No. IPR2015-
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`00067, Paper 18 (Apr. 27, 015); see also Hughes Network Systems, LLC v.
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`California Institute of Tech., Case No. IPR2015-00068, Paper 18 (Apr. 27, 015).2
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`Petitioner has also filed two more pending petitions challenging claims of the ’710
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`patent. See IPR2017-00210; see also IPR2017-00211.3
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`Both of the rejected Hughes IPRs similarly presented grounds based on
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`Divsalar. Compare IPR2015-00067, Paper 1 at 21-49 (challenging claims as
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`2 Counsel for Petitioner Apple also represented Hughes in the previous Hughes
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`district court litigation.
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`3 Accordingly, the ’710 patent has been challenged in five total IPR proceedings
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`to date—thereby indicating patent owner harassment with serial petitions. See,
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`e.g., Ube Maxell Co., Ltd. v. Celgard, LLC, Case No. IPR2015-01511, Paper 10
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`(Jan. 7, 2016) (denying institution of sixth petition under § 325(d)).
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`-4-
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`obvious over at least Divsalar) with Pet. p. 34-71 (challenging claims as obvious
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`over at least Divsalar). One of the rejected Hughes IPRs similarly presented
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`grounds based on Divsalar and the Luby ’909 patent4, the latter of which is similar
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`in scope to the Luby paper on which Petitioner relies in the present petition.
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`Compare IPR2015-00068, Paper 1 at 14-43 (challenging claims as obvious over at
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`least Divsalar and Luby ’909 patent) with Pet. p. 34-71 (challenging claims as
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`obvious over at least Divsalar and Luby). Concurrent with the present petition,
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`Petitioner filed two IPR petitions (IRP2017-00210 and IPR2017-00211) based on
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`the very same Divsalar, Luby97, and Pfister references and advanced substantially
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`the same arguments. Compare IPR2015-00210, Paper 1 at 42-74 (challenging
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`claims as obvious over at least one or more of Divsalar, Luby97, and/or Pfister)
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`with Pet. p. 34-71 (challenging claims as obvious over at least one or more of
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`Divsalar, Luby, Luby97, and Pfister); compare IPR2015-00211, Paper 1 at 37-76
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`(challenging claims as obvious over at least one or more of Divsalar, Luby97,
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`and/or Pfister) with Pet. p. 34-71 (challenging claims based on Divsalar in view of
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`Luby or Divsalar in view of Luby and Luby97); compare IPR2015-00068, Paper 1
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`at 14-43 (challenging claims based in part on Divsalar) with Pet. p. 34-71
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`(challenging claims as obvious over at least one or more of Divsalar, Luby,
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`Luby97, and Pfister). In addition, the claims of the ’710 patent challenged in the
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`4 See IPR2015-00068, Ex. 1016 (U.S. Patent No. 6,081,909).
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`-5-
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`two prior proceedings are also challenged in the instant petition. See IPR2015-
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`00067 and IPR2015-00068 (challenging claims 1, 2-6, 15-16, and 20-22); see also
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`Pet. p. 4 (challenging claims 1-8, 10-17, and 19-33).
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`As explained above, the present petition differs in part from the -00068
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`petition in that the Luby ’909 patent (Ex. 2003) has been replaced with the Luby
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`reference (Ex. 1204). But Petitioner has not explained why either this petition or
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`the -00068 petition substantially differs either from each other, or from the other
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`petitions against the ’710 patent, such that the additional burden on Caltech and
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`Board resources is reasonable. The Board should deny the instant petition under a
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`plain and ordinary reading of § 325(d) because it presents “the same or
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`substantially the same prior art or arguments previously [] presented to the Office.”
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`Cf. Maxell Co., Ltd., Case No. IPR2015-01511, Paper 10 at 15-16 (factoring in
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`failure to explain the need for redundant proceeding).
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`Although the instant petition challenges some claims that were not
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`challenged in the prior petitions, the Board has indicated this is not a determinative
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`factor and has denied institution under 35 U.S.C. § 325(d) in similar scenarios.
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`See, e.g., Ford Motor Co. v. Paice LLC, Case No. IPR2015-00767, Paper 14 at 7
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`(PTAB Aug. 18, 2015) (“We also have considered Petitioner’s arguments that
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`because it presents a new set of claims, e.g., consisting of previously challenged
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`claims, but also including newly challenged claims, we must consider the
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`-6-
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`Petition…. We are not persuaded by this argument because the express language
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`of 35 U.S.C. § 325(d) does not mention claims as being a factor in deciding
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`whether to institute trial.”); see also Blue Coat Systems LLC v. Finjan, Inc., Case
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`No. IPR2016-01443, Paper No. 13 at 10 (serial petition being directed to different
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`claims denied institution under §325(d)).
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`Given the significant overlap between the asserted art and corresponding
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`argument in the present petition compared to the previous Hughes petitions, it is
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`immaterial that the earlier petition was filed by a different party. See, e.g., Apple,
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`Inc. v. Limestone Memory Sys. LLC, Case No. IPR2016-01567, Paper 11 at 9-12
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`(PTAB Jan 18, 2017). In that proceeding, Apple similarly filed an IPR petition
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`following denial of a petition against the same patent that had been filed by an
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`unrelated party. The Board rejected Apple’s challenge to a claim based on §
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`325(d), noting Apple’s failure to “identify new arguments based on additional
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`references,” to “make persuasive assertions that differentiate its Petition from the
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`[earlier] Petition,” or to explain why the prior art relied upon by Apple “which is
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`substantially the same prior art as that previously presented, does not have the
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`earlier noted deficiency.” Id. at 12.
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`Accordingly, because the instant petition presents the same or substantially
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`the same prior art or arguments previously presented to the Office and because
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`-7-
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`Petitioner appears to have used previously rejected petitions as a roadmap5 to
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`bolster its petition, with the effect of harassing Caltech, the Board should exercise
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`its authority under § 325(d) to deny the petition.
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`III. THE PETITION RELIES ON IMPROPER EVIDENCE AND
`UNSUBSTANTIATED ALLEGATIONS
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`A. The Petition Fails to Establish That Divsalar Qualifies as Prior
`Art
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`Each of Grounds 1 through 4 in the petition rely on Divsalar (Ex. 1203).
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`The petition identifies Divsalar as prior art under 35 U.S.C. §102(b), asserting that
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`Divsalar was published in March 1999 in the 36th Allerton Conference
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`proceedings. Pet, pp. 25-26. To support this assertion Petitioner cites to Ex. 1215,
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`which purports to be a copy of the Table of Contents from the 37th Allerton
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`Conference proceedings, which is listed as having occurred roughly 6 months after
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`the asserted March 1999 102(b) date.6 As might be expected, the Divsalar paper is
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`5 In fact, Petitioner has already effectively had multiple bites at the apple in this
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`case. During the course of litigation, and after filing its IPR petitions, Petitioner
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`learned of certain critical defects in the petition materials. Petitioner then re-filed
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`different versions of the references on which its challenges relied in an effort to
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`cure those defects. See, e.g., Paper No. 12.
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`6 The petition also cites to Dr. Davis’ declaration. See Pet, p. 26, citing Ex.
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`1206, ¶76. But Dr. Davis’ declaration adds no additional information of value, as
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`-8-
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`not listed in the Table of Contents from the 37th Allerton Conference proceedings.
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`As such, Ex. 1215 is an irrelevant document vis-à-vis Divsalar (Ex. 1203).
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`To the extent that Petitioner intends to cite not to Ex. 1212, which purports
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`to be a declaration from a librarian (Ms. Fradenburgh) previously submitted in the
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`IPR2015-00059 case, Ms. Fradenburgh is not a witness in this proceeding. As
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`such, the document may not be offered as evidence to prove the truth of the matter
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`asserted—that Divsalar is 102(b) prior art to the ’710 patent. (Pet. p. 25) In other
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`words, Ex. 1212 is inadmissible hearsay. Fed. R. Evid. 801(c). Even if
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`considered, Ex. 1212 is woefully deficient in content.
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`Furthermore, Petitioner here misapprehends the scope of the Board’s
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`decision in IPR2015-00059. The Board’s decision to apply Divsalar as prior art in
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`that case relied at least partially on a waiver theory. See, e.g., IPR2015-00059,
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`Paper 42, page 31 (Denying patent owner’s motion to strike Ms. Fradenburgh’s
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`testimony on the basis of no timely evidentiary objection). No such waiver theory
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`applies in the present case. Ex. 1212 is inadmissible hearsay here (as is Ex. 1203),
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`a point Caltech will vigorously pursue.
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`B.
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`Petitioner has not shown that Pfister qualifies as a prior art
`printed publication
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`he only provides one conclusory sentence, does not purport to have any personal
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`knowledge on the issue, and cites no additional corroborating evidence.
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`-9-
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`Each of Petitioner’s Grounds 3 and 4 relies on the Pfister Slides (Ex. 1205).
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`Pfister is a set of slides that was purportedly presented at the Allerton Conference.
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`(Pet. pp. 32-33; Ex. 1205; Ex. 1220, ¶ 6.) The petition offers no specific
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`explanation and identifies no particular theory as to how or why the Pfister slides
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`are believed to qualify as prior art for this proceeding. The petition generically
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`asserts that slides were presented in the month of “September 1999,” but does not
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`assert the Pfister Slides constitute a “printed publication.” (Pet., p. 32.); see 35
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`U.S.C. §311(b).
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`First, without corresponding explanation, the petition merely directs the
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`Board to “Ex. SIEGEL_DEC, p. 3,” which presumably is the declaration by
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`Professor Paul H. Siegel submitted as Ex. 1220. (Pet. p. 32.) The Board should
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`disregard any information presented in Ex. 1220 because none of it is discussed or
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`explained in the petition. 37 C.F.R. § 42.6(a)(3) (expressly prohibiting
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`incorporation by reference of arguments from one document into another
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`document); DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir. 1999)
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`(incorporation by reference “amounts to a self-help increase in the length of the
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`brief”) (“A brief must make all arguments accessible to the judges, rather than ask
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`them to play archaeologist with the record.”).
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`Second, even if the Board considers professor Siegel’s declaration, it still
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`would not provide evidence that Ex. 1205 qualifies as a prior art printed
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`-10-
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`publication. Both the petition and the declaration are essentially devoid of any
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`details surrounding the alleged presentation of materials.
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`Professor Siegel declares that he presented the slides at the 1999 Allerton
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`Conference, (Ex. 1220 ¶ 6), and that the conference in general “was open to the
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`public for attendance” (id. ¶ 5). The Federal Circuit and the Board, however, have
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`noted that the mere presentation of slides accompanying an oral presentation at a
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`professional conference does not establish such slides as a ‘printed publication.’”
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`In re Klopfenstein, 380 F.3d 1345, n. 4 (Fed. Cir. 2004); Temporal Power Ltd.,
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`IPR2015-00146 Paper 10 at 10 (quoting In re Klopfenstein).
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`In this instance, neither the petition nor Professor Siegel’s declaration
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`provides any real information about the alleged presentation, other than to allege
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`that some presentation occurred. Neither asserts that the Pfister slides were
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`distributed to anyone, in any way or were indexed with the conference. Neither
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`states whether all or just some of the slides were displayed/discussed, or how long
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`any of the slides were displayed. Neither addresses how many people, if anyone,
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`actually attended the presentation session of the conference and the skill level of
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`the actual attendees. And neither addresses the existence of reasonable
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`expectations that the material displayed would not be copied or how easily they
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`could have been copied. Dr. Siegel also provides no support showing how and
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`when the 1999 Allerton conference and proceedings were publicized, and provides
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`no explanation of how he knows that the proceedings were “generally known to
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`those who were interested in topics relating to error-correcting codes and iterative
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`decoding.” (Ex. 1220, ¶ 5.)
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`Such information is critical to establishing the Pfister Slides as a printed
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`publication, assuming Petitioner is even making this assertion in the first place.
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`Moreover, Petitioner’s burden must be satisfied in its petition. The lack of
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`evidence and explanation in the Petition, however, is incurable and fatal to
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`Petitioner’s reliance on the Pfister Slides as prior art in this proceeding.
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`Indeed, as noted above, the Board has disqualified slides as prior art printed
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`publications under similar circumstances. See, e.g., Temporal Power Ltd.,
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`IPR2015-00146 at 10. The Board should similarly reject the Pfister Slides here.
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`Accordingly, the Board should deny grounds 4 and 5 on the additional basis
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`that Petitioner has not established Pfister as a prior art printed publication.
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`IV. THE PROPOSED GROUNDS OF CHALLENGE FAIL
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`A. Ground 1 fails
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`The petition fails to establish that Divsalar qualifies as a prior art printed
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`publication, as explained above. Thus, the Board should reject ground 1 on that
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`basis alone. Nonetheless, regardless of whether Divsalar is disqualified as prior
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`art, the petition fails to demonstrate that claims 1-8 and 11-14 would have been
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`obvious over the combination of Divsalar in view of Luby as asserted in Ground 1.
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`-12-
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`Numerous claim limitations are undisclosed by either reference, and the petition
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`fails to demonstrate that a person of ordinary skill in the art would have been
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`motivated to combine the references in the manner proposed.
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`1.
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`Divsalar in view of Luby fails to disclose the
`“partitioning” limitation in claim 1 and its dependent
`claims
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`The proposed combination fails to disclose a number of limitations in the
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`challenged claims, including the claim 1 limitation “partitioning said blocks of data
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`into a plurality of sub-blocks, each sub-block including a plurality of data
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`elements.” The ‘710 patent specification illustrates data partitioning and encoding.
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`For example, the specification, referring to Fig. 2, recites an embodiment where
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`“[t]he outer coder 202 receives the uncoded data [which] may be partitioned into
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`blocks of fixed size, say k bits. The outer coder may be an (n,k) binary linear
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`block coder, where n>k.” (Ex. 1201 at 2:41-44.) Regarding repeating, “[t]he
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`coder accepts as input a block u of k data bits and produces an output block v of n
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`data bits.” (Id. at 2:44-45.) Moreover, “[t]he rate of the coder may be irregular . . .
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`and may differ for sub-blocks of bits in the data block. In an embodiment, the
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`outer coder 202 is a repeater that repeats the k bits in a block a number of times q
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`to produce a block with n bits, where n=qk.” (Id. at 2:48-52; see also id. at 1:59-64
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`(“The data block is apportioned into two or more sub-blocks and bits in different
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`sub-blocks are repeated a different number of times according to a selected degree
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`-13-
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`profile.”), Fig. 2.) The bits output from the outer coder are also “scrambled before
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`they are input to the inner coder 206,” where the scrambling operation “may be
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`performed by the interleaver 204.” (Id. at 3:18-20.)
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`Turning first to Divsalar, Petitioner concedes that “Divsalar does not teach
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`partitioning the data block into a plurality of sub-blocks and repeating information
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`bits in different sub-blocks a ‘different number of times.’” (Pet. p. 45.) Petitioner
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`instead relies on Luby for the irregular repetition limitation, and simply concludes
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`that Luby also teaches these limitations. (Id.) Petitioner states: “Any coding
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`scheme that repeats different information bits different numbers of times will de
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`facto partition information bits into sub-blocks, with bits in one sub-block being
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`repeated a certain number of times and with bits in another sub-block being
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`repeated a different number of times.)”7 (Pet. p. 46-47.)
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`Petitioner does not cite any statement in Luby expressly teaching that a
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`block of data is partitioned into sub-blocks such that each sub-block includes a
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`plurality of data elements. Instead, Petitioner acknowledges it is actually relying
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`on an inherency theory, arguing that any coding scheme that includes irregularity
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`7 Petitioner’s argument is confusing, as it is unclear whether Petitioner is
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`arguing that the process of repeating bits irregularly is what partitions a block of
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`data into sub-blocks, or whether repeating bits irregularly requires partitioning a
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`block of data into sub-blocks before the repetition is performed.
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`-14-
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`necessarily partitions a block of data into sub-blocks. (Id. p. 46-47.) The contours
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`of said inherency theory, however, are unexplained and unsubstantiated in the
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`petition. Petitioner cites to Dr. Davis’s declaration, but the declaration parrots the
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`petition, with the exception that it uses the word “necessarily” instead of the phrase
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`“de facto.” (Id. (citing Ex. 1206, ¶ 424).) The cited paragraph provides no
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`additional analysis of this element, and in fact is nearly a verbatim copy of the last
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`and first paragraphs of pages 46-47 of the petition. (Compare Pet. pp. 46-47 with
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`Ex. 1206 ¶ 424 (merely replacing a handful of words with synonyms while
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`providing no independent analysis)).
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`Petitioner has also not shown that an irregular coding scheme necessarily
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`results in the “partitioning” step. (Bettcher Industries, Inc. v. Bunzl USA, Inc., 661
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`F.3d 629, 639-40 (Fed. Cir. 2011) (“Inherency, however, may not be established
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`by probabilities or possibilities. The mere fact that a certain thing may result from
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`a given set of circumstances is not sufficient.”) (citing In re Oelrich, 666 F.2d
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`5778, 581 (CCPA 1981)).) Petitioner provides no facts or data to support its
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`conclusion, nor can it.
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`In particular, the petition suggests that “incorporating irregularity into RA
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`codes would also have required only minimal modification . . . .” (Pet. p. 37.)
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`According to Petitioner, “this reconfiguration process would have been simple . . .
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`because irregular codes are so similar to RA codes that the Tanner graph
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`-15-
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`representing any RA code can be modified to represent an irregular code by the
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`addition (or removal) of a single edge.” (Id. at 38-40 (showing a graph
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`redistributing a single edge between nodes).) However, the petition does not
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`provide reasoning to support the assertion that any encoding method that repeats
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`bits different numbers of times must necessarily “partition[] said data block into a
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`plurality of sub-blocks, each sub-block including a plurality of data elements.”
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`(Ex. 1201 at 7:16-17.) The petition asserts that repeating “different information
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`bits different numbers of times” will “de facto partition information bits into sub-
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`blocks,” (Pet. p. 46), but presents no argument suggesting that each sub-block will
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`comprise a plurality of data elements. So even assuming that “applying different
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`degrees of repetition to different bits is what defines the different sub-blocks of the
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`partition,” (id. (citing Ex. 1206, ¶ 424)), this does not imply that a block of data is
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`partitioned such that each sub-block comprises a plurality of data elements. As
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`stated above, Dr. Davis’s declaration provides no further analysis. And contrary to
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`the petition’s unsupported assertions, redistributing edges in a Tanner graph of a
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`regular encoding method to generate irregularity does not necessarily partition a
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`“data block into a plurality of sub-blocks, each sub-block including a plurality of
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`data elements.”
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`For instance, consider the following example. A repeater repeats each of six
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`bits once, such that 12 bits result, as illustrated below:
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`-16-
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`

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`
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`Each bit has two edges, one corresponding to the original copy of the bit and the
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`second corresponding to a repeat. Now redistribute the edges of the first four bits
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`so that the last bit has five edges while the penultimate bit has three edges. The
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`redistribution results in three distinct sets of bits: one set repeated four times (five
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`edges), one set repeated twice (three edges), and one set not repeated (one edge).
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`Under Petitioner’s interpretation, these would be considered sub-blocks. The
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`resulting graph is illustrated below:
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`
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`However, each “sub-block” (as interpreted by Petitioner) does not comprise
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`a plurality of data elements: there is exactly one bit in the “sub-block” repeated
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`three times and exactly one bit in the “sub-block” repeated five times. Thus,
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`simply “redistributing a few edges” of a regular code does not necessarily produce
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`“a plurality of sub-blocks, each sub-block including a plurality of data elements.”
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`Accordingly, the petition does not establish a prima facie case of obviousness with
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`respect to claim 1.
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`-17-
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`

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`The Board also recognized the insufficiency of Petitioner’s argument when
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`it rejected substantially the same argument in one of the Hughes IPRs, finding that
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`the petitioner in that case presented insufficient evidence and explanation to
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`conclude that incorporating irregularity from one reference into Divsalar disclosed
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`the “partitioning” limitation. See IPR2015-00068, Paper 18 at 14 (“Petitioner has
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`neither provided sufficient citation to evidence, nor adequately explained how one
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`of ordinary skill in the art applies irregular graphing of the edges between node
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`layers as disclosed in Luby to partition the block of data in Divsalar ‘into a
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`plurality of sub-blocks, each sub-block including a plurality of data elements,’ as
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`recited in claim 1.”). Likewise, Petitioner here provides no supporting explanation
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`or evidence that applying the irregularity of Frey to Divsalar de facto results in the
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`“partitioning” limitation. The Board should reject this argument here as it did in
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`the Hughes IPR.
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`Because Petitioner fails to demonstrate that Divsalar and Luby inherently
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`discloses the “partitioning” step, the combination also fails to disclose or render
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`obvious the follow-on processing steps required by claim 1. For example, the
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`proposed combination also does not teach or suggest “said first encoding including
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`repeating the data elements in different sub-blocks a different number of times” or
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`“interleaving the repeated data elements.”
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`-18-
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`

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`The challenges to claims depending from claim 1 also fail with respect to its
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`dependent claims 2-8. In addition, the arguments in the petition are also deficient
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`for claim 7, which requires that the first coder comprises a low-density generator
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`matrix. The petition and the Davis declaration merely rely on a description of a
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`low-density generator matrix in order to conclude that Divsalar discloses a low-
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`density generator matrix. (Pet. p. 51; Ex. 1206, ¶ 442.) Petitioner points to no
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`disclosure in Divsalar or Luby of the claimed low-density generator matrix, nor
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`does it explain how a low-density generator matrix is necessarily used in either
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`Divsalar or Luby. Accordingly, the combination of Divsalar and Luby do not
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`render obvious claim 1 and its dependent claims.
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`2.
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`The petition does not demonstrate that either Divsalar or
`Luby teaches irregular repetition of information bits as
`required by the challenged claims
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`Claim 1 of the ’710 patent requires that the partitioned sub-blocks discussed
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`above are “first encod[ed]” such that data elements in different sub-blocks are
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`repeated “a different number of times.” (Ex. 1201 at 7:18-21.) Petitioner refers to
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`this as “irregular repetition.” (Pet. p. 45.) Independent claim 11 also requires a
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`“first encoding” process, in which “two or more of said plurality of bits are
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`repeated a different number of times.” (Ex. 1201 at 7:53-56.) In both claim 1 and
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`claim 11, the irregular repetition occurs prior to the interleaving.
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`-19-
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`

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`Petitioner concedes that Divsalar does not teach the claimed “first encoding”
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`step because it does not repeat different bits different numbers of times. (See, e.g.,
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`Pet. p. 45 (“Divsalar does not teach partitioning the data block into a plurality of
`
`s