UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Apple Inc.,
`Petitioner
`
`V.
`
`California Institute of Technology,
`Patent Owner.
`
`Case IPR2017-219
`
`DECLARATION OF BRENDAN FREY, PH.D.
`
`Apple vs. Caltech
`IPR2017-00219
`
`Apple 1 23 5
`
`Apple vs. Caltech
`IPR2017-00219
`Apple 1235
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Apple Inc.,
`Petitioner
`
`V.
`
`California Institute of Technology,
`Patent Owner.
`
`Case IPR2017-219
`
`DECLARATION OF BRENDAN FREY, PH.D.
`
`Apple vs. Caltech
`IPR2017-00219
`
`Apple 1 23 5
`
`Apple vs. Caltech
`IPR2017-00219
`Apple 1235
`
`
`
`Declaration of Brendan Frey, Ph.D
`
`I, Brendan Frey, Ph.D., declare as follows:
`
`1.
`
`2.
`
`My name is Brendan Frey
`
`I received a B.Sc. with Honors in Electrical Engineering from the
`
`University of Calgary in 1990, a M.Sc. in Electrical and Computer Engineering
`
`from the University of Manitoba in 1993, and a Ph.D. in Electrical and Computer
`
`Engineering from the University of Toronto in 1997. Since July 2001 , I have been
`
`at the University of Toronto, where I am a Professor of Electrical and Computer
`
`Engineering and Computer Science. In 2014, I founded Deep Genomics and am
`
`currently its CEO.
`
`3.
`
`During my career I have conducted research in the areas of graphical
`
`models, error—correcting coding, machine learning, genome biology and computer
`
`vision. I have authored more than 200 publications and am named as an inventor
`
`on at least nine patents issued by the US. Patent and Trademark Office.
`
`4.
`
`I have received a number of honors and awards for the research I have
`
`conducted. In 2008, I was named a Fellow of the Institute for Electrical and
`
`Electronic Engineers (IEEE), an honor given to a person with an “extraordinary
`
`record or accomplishments” in the field of electrical engineering. In 2009, I was
`
`named a Fellow of the American Association for the Advancement of Science
`
`(AAAS), an honor that recognizes “efforts on behalf of the advancement of science
`
`or its applications which are scientifically or socially distinguished.” In 2015, I was
`
`
`
`Declaration of Brendan Frey, Ph.D
`
`elected as a Fellow of the Royal Society of Canada, the most distinguished
`
`association of scientists and engineers in Canada.
`
`5.
`
`In 2009, I was awarded a Steacie Fellowship for my work on the
`
`theory and implementation of artificial and natural mechanisms for inferring
`
`patterns from data. The Steacie Fellowship is awarded by the Natural Sciences and
`
`Engineering Research Council of Canada (NSERC) to “outstanding and highly
`
`promising scientists and engineers” who are faculty members of Canadian
`
`universities. In 2011, I received the NSERC’s John C. Polanyi Award, in
`
`recognition of my research on inferring genetic codes embedded in DNA that
`
`direct activities within cells.
`
`6.
`
`Throughout my career, I have received funding from various
`
`governmental agencies to support my research, including the Natural Sciences and
`
`Engineering Research Council of Canada, the Canadian Institutes of Health
`
`Research, and the Canadian Institute for Advanced Research.
`
`7.
`
`I have authored a book entitled “Graphical Models for Machine
`
`Learning and Digital Communication.” In addition, I have authored or co—authored
`
`nearly 181 articles in peer—reviewed journals, conference proceedings, texts,
`
`industry trade publications, and monographs.
`
`8.
`
`I have reviewed the specification and claims of US. Patent No.
`
`7,116,710 (the “’710 patent”; Exhibit 1001 of IPR2017-210 and Exhibit 1201 of
`
`
`
`Declaration of Brendan Frey, Ph.D
`
`IPR2017-00219).
`
`I have been informed that the ’710 patent claims priority to a
`
`provisional application filed on May 18, 2000, and to US. application Ser. No.
`
`09/922,852, filed on Aug. 18, 2000.
`
`9.
`
`I was an active contributor and collaborator in the community that
`
`included some of the inventors of the ’710 patent and the ’032; ’781; and ’833
`
`patents, which descend from the ’710 patent, around the time of the alleged
`
`invention. In particular, I attended talks given by Dr. Robert McEliece and Dr.
`
`McEliece attended talks that I presented around the time of the alleged invention.
`
`These talks included the 1998 and 1999 Allerton Conferences held by the
`
`University of Illinois Urbana—Champaign in Allerton, Illinois, as well as the 2000
`
`Brest 2nd International Symposium on Turbocodes and Related Topics and the
`
`2000 Sorrento ISIT conferences. Dr. McEliece, Dr. MacKay, and I attended and
`
`made presentations at the 1999 Institutive for Mathematics and its Applications
`
`(IMA) 1999 Summer Program: Codes, Systems and Graphical Models, which was
`
`held at the University of Minnesota on August 2—13, 1999.
`
`10.
`
`I am being compensated at my normal consulting rate of $950 per
`
`hour for my work.
`
`11. My compensation is not dependent on and in no way affects the
`
`substance of my statements in this Declaration.
`
`
`
`Declaration of Brendan Frey, Ph.D
`
`12.
`
`I have no financial interest in Petitioners. I similarly have no financial
`
`interest in the ’710 patent.
`
`13.
`
`I have reviewed Exhibit 1002 of IPR2017-210 and Exhibit 1202 of
`
`IPR2017—219. Those exhibits are true, complete and correct copies of a paper I
`
`drafted that I presented at the 1999 Allerton Conference on Communications,
`
`Control and Computing, and Computing in Allerton, Illinois (“1999 Allerton
`
`Conference”) in September 1999, and which was published in the subsequent
`
`conference proceedings.
`
`14.
`
`Beginning in 1998, I collaborated with Dr. David MacKay to show
`
`that turbocodes could benefit from being made irregular codes in a similar way that
`
`Michael Luby, Michael Mitzenmacher, M. Amin Shokrollahi, Daniel A. Spielman,
`
`and others had adapted LDPC codes to be “irregular.” I used software that I had
`
`written to simulate and test various irregular turbocodes.
`
`15.
`
`The result of my collaboration with Dr. MacKay was the presentation
`
`at the 1999 Allerton Conference. The 1999 Allerton Conference was held
`
`September 22—24, 1999. The 1999 Allerton Conference was open to the public for
`
`attendance. Any person who wanted to attend and was willing to pay the
`
`attendance fee could attend the 1999 Allerton Conference. The 1999 Allerton
`
`Conference was considered one of two primary conferences on the topic of
`
`iterative decoding during the time, and many key people from the field attended
`
`
`
`Declaration of Brendan Frey, Ph.D
`
`and many more monitored what was presented there. The 1999 Allerton
`
`conference was publicized and those who were interested in topics of iterative
`
`decoding were aware of the conference. After the conference, each conference
`
`participant was sent a copy of the Conference Proceedings.
`
`16.
`
`I presented a series of slides on my work to show how turbocodes
`
`could be made irregular and the benefits of making the turbocodes irregular. This
`
`presentation was entitled “Irregular Turbocodes” and I believe I presented on the
`
`afternoon of the first day of the conference on September 22, 1999. Exhibit 1013
`
`of IPR2017-00210 and Exhibit 1213 of IPR2017—00219, which I have reviewed,
`
`are copies of this slide presentation.
`
`17. After the 1999 Allerton conference, Dr. MacKay and I submitted a
`
`paper for publication in the Proceeding of the Thirty-Seventh Annual Allerton
`
`Conference on Communications, Control and Computing (“37th Allerton
`
`Proceedings”). These submissions were standard and required for anyone who
`
`presented at the Allerton Conference. Exhibit 1002 of IPR2017-210 and Exhibit
`
`1202 of IPR2017-219 are true, complete and correct copies of the paper we
`
`submitted for publication. Dr. MacKay and I completed the final draft of the paper
`
`by September 29, 1999 and we submitted the paper for publication within a couple
`
`weeks of that. The paper was included in the 37th Allerton Proceedings, which
`
`were sent to each conference participant after the conference. My recollection is
`
`
`
`Declaration of Brendan Frey, Ph.D
`
`that I received my copy of the proceedings shortly after the Christmas break, in
`
`January or February of 2000
`
`18.
`
`The “Irregular Turbocodes” paper as shown in Exhibit 1002 of
`
`IPR2017—210 and Exhibit 1202 of IPR2017—219 was publicly available from Dr.
`
`MacKay’s websites by October 1999 — the month following my presentation. Dr.
`
`MacKay was extremely prompt in posting all papers on his website well in
`
`advance of publication and immediately upon completion or submission for
`
`publication, and that was the case with our “Irregular Turbocodes” paper. Like the
`
`talk, the paper posted to his website was also entitled “Irregular Turbocodes” and
`
`contained the same figures presented at the 1999 Allerton Conference. It was in all
`
`respects identical to the version I submitted for publication in the 37th Allerton
`
`Proceedings. The 37th Allerton Proceedings including my and Dr. MacKay’s
`
`paper entitled “Irregular Turbocodes” (Exhibit 1002 of IPR2017-210 and Exhibit
`
`1202 of IPR2017-219) were also independently published in the Conference
`
`Proceedings by no later than February 2000.
`
`19.
`
`The publication of our “Irregular Turbocodes” paper (Exhibit 1002 of
`
`IPR2017—210 and Exhibit 1202 of IPR2017—219) on Dr. MacKay’s website is
`
`fiirther confirmed by my email correspondence with Dr. Dariush Divsalar at the Jet
`
`Propulsion Laboratory about this paper on December 8, 1999. Appendix A,
`
`attached hereto, is a reproduction of this December 8, 1999 email. In the email, I
`
`
`
`Declaration of Brendan Frey, Ph.D
`
`asked Dr. Divsalar whether had reviewed my Allerton paper (now marked Exhibit
`
`1002 of IPR2017—21 0 and Exhibit 1202 of IPR2017—219). This confirms to me
`
`that “Irregular Turbocodes” was publicly available by at least December 8, 1999,
`
`and that anyone interested could have obtained it — including from Dr. MacKay’s
`
`website.
`
`20.
`
`I declare that all statements made herein of my own knowledge are
`
`true and that all statements made on information and belief are believed to be true;
`
`and further that these statements were made with the fill knowledge that willful
`
`false statements and the like so made are punishable by fine or imprisonment, or
`
`both, under Section 1001 of Title 18 of the United States code.
`
`
`
`Dated:
`
`July 14, 2017
`
`Declaration of Brendan Frey, Ph.D
`
`Brendan Frey, Ph.D.
`Toronto, Ontario, Canada
`
`
`
`APPENDIX A
`APPENDIX A
`
`9
`
`
`
`CALTECH000024021
`
`From:Brendan Frey
`Sent:Wed 12/08/1999
`To:<Dariush.Divsalar@jpl.nasa.gov>
`Cc:<frey@dendrite.uwaterloo.ca>
`Bcc:
`
`Subject:
`
`Hi, Dariush.
`
`I'd like to get back to work on the irregular turbocodes and win some
`world records. Have you had a chance to look through the Allerton
`paper? Do you think JPL would be interested in irregular turbocodes.
`Have you heard back from Fabrizio about the possibility of me doing
`some consulting work at JPL?
`
`Regardless, it would interesting to extend the work that you and Bob
`have done to the case of irregular turbocodes.
`
`On another subject, are you planning to submit a paper to the IEEE
`trans IT special issue, "Codes on Graphs and Iterative Algorithms"?
`
`Brendan.
`
`PS: What's the latest on what went wrong with the Mars lander? I hope
`it isn't being blamed on the communication system...
`
`10
`
`10
`
`
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