Paper No. ___
`Filed: April 7, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_____________________________
`
`Case IPR2017-00423
`Patent No. 7,916,781
`
`_____________________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`Filed: April 7, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_____________________________
`
`Case IPR2017-00423
`Patent No. 7,916,781
`
`_____________________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`TABLE OF CONTENTS
`
`I.INTRODUCTION ................................................................................................ 1
`II.THE PRESENT PETITION RECYCLES PREVIOUS CHALLENGES
`REJECTED BY THE OFFICE ..................................................................... 2
`III.GROUND 1 FAILS ........................................................................................... 8
`
`A.
`
`There is no rationale for combining Ping and MacKay ....................... 9
`
`1. Ping already includes the “irregularity” of MacKay....................... 10
`2. The proffered motivation to combine fails ..................................... 12
`
`B. Multiple aspects of the claimed subject matter are missing from
`the asserted references ...................................................................... 16
`
`1. Ping in view of MacKay fails to disclose “wherein the information
`bits appear in a variable number of subsets” as recited in claims 13 and 22.... 16
`2. Ping in view of MacKay fails to teach “wherein each of the subsets
`of the information bits includes a constant number of the information bits” as
`recited in claim 17 .......................................................................................... 20
`3. Ping in view of MacKay fails to disclose the receiving data
`limitation in claims 13, 19-21 and their dependent claims .............................. 22
`4. Ping in view of MacKay has not been shown to disclose “wherein at
`least two of the information bits appear in three subsets of the information
`bits” as recited in claim 19 ............................................................................. 25
`
`IV.GROUND 2 FAILS ......................................................................................... 26
`V.CONCLUSION ................................................................................................. 27
`
`-i-
`
`
`
`I.
`
`INTRODUCTION
`
`The Board should not institute inter partes review (IPR) on claims 13-22 of
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`U.S. Patent No. 7,916,781 (“the ’781 patent”) because petitioner Apple Inc.
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`(“Petitioner” or “Apple”) has not met its burden of showing that it has a reasonable
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`likelihood of prevailing on any of its proposed grounds of unpatentability.
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`As a threshold issue, neither the Petitioner nor its expert sufficiently explain
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`why a person of ordinary skill would have combined the references as proposed.
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`As explained in detail below, Petitioner fundamentally misapprehends the
`
`teachings of the cited references in proposing modifying the admittedly “regular”
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`code of Ping to include the so-called “irregularity” of MacKay. Petitioner has
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`misconstrued those prior art disclosures and fails to acknowledge that the
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`“irregularity” of MacKay is already found in Ping. As such, there can be no
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`rationale to combine the cited references.
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`Additionally, the proposed grounds of challenge fail to demonstrate that
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`each element of claims 13-22 of the ’781 patent is found in the cited art. Indeed,
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`multiple elements of the claimed subject matter are missing from the asserted
`
`references.
`
`Finally, review should be denied on the basis that the present petition
`
`rehashes substantially the same art and arguments that have already been presented
`
`-1-
`
`
`
`
`
`to the Office and rejected by the Board in a previous IPR challenge. Petitioner
`
`acknowledges that the ’781 patent was already “challenged in one petition for inter
`
`partes review.” Pet. at 1. The Board rejected the grounds of that petition that relied
`
`on Ping alone or in view of other references, including a patent to Luby et al. (“the
`
`Luby ’909 Patent”). In this instance, Petitioner presents the same Ping reference
`
`and substitutes the MacKay paper for the Luby ’909 Patent to present substantially
`
`the same disclosures and arguments that the Board rejected in a prior petition.
`
`Accordingly, institution of inter partes review should be denied.
`
`II. THE PRESENT PETITION RECYCLES PREVIOUS
`CHALLENGES REJECTED BY THE OFFICE
`
`The instant petition presents one in a series of challenges to the ’781 patent,
`
`but rehashes substantially the same art and arguments already presented to the
`
`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,
`
`chapter 30, or chapter 31, the Director may take into account whether, and reject
`
`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
`
`from what has already been presented to—and rejected by—the Board. Petitioner
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`-2-
`
`
`
`
`
`acknowledges that the ’781 patent was already “challenged in one petition for inter
`
`partes review.” Pet. at 1. In the prior petition, the Board rejected grounds
`
`substantially identical to the grounds Petitioner presents in this instance. See
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`Hughes Network Sys., LLC v. Cal. Inst. of Tech., Case No. IPR2015-00059, Paper
`
`18 at 14-16 (PTAB Apr. 27, 2015). Petitioner has also filed another pending
`
`petition challenging claims of the ’781 patent. See Apple Inc. v. Cal. Inst. of Tech.,
`
`Case No. IPR2017-00297, Paper 5 (PTAB Dec. 12, 2016).
`
`Specifically, the earlier Hughes IPR similarly presented grounds based on
`
`Ping, either alone or in view of the Luby ’909 Patent (U.S. Patent No. 6,081,909),
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`which is similar in scope to the MacKay paper on which Petitioner relies in this
`
`instance. Compare Hughes Network Sys., Case No. IPR2015-00059, Paper 4 at 16-
`
`31, 33-47 (challenging , inter alia, claim 19 as anticipated by Ping, claims 13-15 as
`
`obvious over Ping in view of the Luby ’909 Patent, and claim 16 as obvious over
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`Ping in view of the Luby ’909 Patent and U.S. Patent No. 4,623,999) with Pet. at
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`37-41 (challenging claims 13-15 as obvious over Ping and MacKay ), 43-47
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`(challenging claims 19-21 with a de facto anticipation ground over Ping), 48-50
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`(challenging claim 16 as obvious over Ping in view of MacKay and further in view
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`of Coombes). Concurrent with the present petition, Petitioner filed another IPR
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`petition (IPR2017-00297) using Ping as the primary reference for each ground,
`
`-3-
`
`
`
`
`
`including a challenge to claims 19-21 as anticipated by Ping. Compare Pet. at 43-
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`47 (challenging claims 19-21 as obvious over Ping and MacKay, but not mapping
`
`MacKay to any claim element) with Apple Inc. v. Cal. Inst. of Tech., Case No.
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`IPR2017-00297, Paper 5 at 57-60 (PTAB Dec. 12, 2016) (challenging claims 19-
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`21 as anticipated by Ping).
`
`As explained above, the present petition differs in part from the Hughes IPR
`
`petition in that the Luby ’909 Patent (Hughes Ex. 1016) has been replaced with the
`
`MacKay reference (Ex. 1102), and the Ping anticipation ground of claim 19 has
`
`been changed to obviousness over Ping and MacKay.
`
`As to the first point, the substitution of Luby ’909 with MacKay in this case
`
`does not meaningfully distinguish from what the Board already considered and
`
`rejected in the Hughes case because MacKay is cited here for the same
`
`“irregularity” teaching as was Luby ’909 previously. See Pet. at 30 (“As MacKay
`
`concluded, ‘[t]he excellent performance of irregular Gallager codes…’”). The
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`petition fails to explain whether there is any meaningful difference between the
`
`“irregularity” disclosed in MacKay compared to Luby ’909. Indeed, overlap is
`
`explicit in MacKay as, with regard to “irregularity,” that reference specifically
`
`cites the corresponding Luby article describing the same subject matter as the Luby
`
`’909 patent. See Ex. 1102 at 1449 (“The excellent performance of irregular
`
`-4-
`
`
`
`
`
`Gallager codes is the motivation for this paper… The irregular codes of Luby,
`
`Mitzenmacher, Shokrollahi and Spielman [5]…”). As such, Petitioner fails to
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`adequately explain why it is not just presenting the same or substantially the same
`
`art and argument, despite swapping Luby ’909 with MacKay for the very same
`
`technical disclosure.
`
`As to the second point, the petition takes Hughes’s ground alleging
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`anticipation of claim 19 by Ping and recycles it here, disguised as an obviousness
`
`challenge based on Ping and MacKay. As can be seen in current Ground 1, the
`
`petition (Pet. at 43-47) relies entirely on Ping (as did Hughes) for claims 19-21—
`
`Petitioner states that MacKay is not required for any claim element (Pet. at 43).1
`
`Petitioner, however, does not explain how its challenge is meaningfully different
`
`compared to the challenge advanced by Hughes and rejected by the Board.
`
`
`
`1 Additionally, the general references to MacKay and non-specific statements
`
`that the reference teaches “irregularity,” without any citation, as presented in
`
`ground, also at least fail to comply with the requirements of Bd.R. 42.104(b)(2)
`
`(“The petition must specify where each element of the claim is found in the prior
`
`art patents or printed publications relied upon.”).
`
`-5-
`
`
`
`
`
`While the petition acknowledges the previous Hughes IPR, the petition lacks
`
`any explanation regarding the similarity of its challenges compared to those
`
`previously advanced in the Hughes cases. Petitioner has not explained why either
`
`the present petition or the -00059 petition substantially differ either from each
`
`other, or from the -00297 petition against the ’781 patent, such that the additional
`
`burden on Caltech and Board resources is reasonable. The Board has previously
`
`rejected IPR challenges where facially redundant challenges were advanced with
`
`no explanation why additional Board review is warranted. Cf. Maxell Co., Ltd.,
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`Case No. IPR2015-01511, Paper 10 at 15-16 (factoring in failure to explain the
`
`need for redundant proceedings). Accordingly, the Board should deny the instant
`
`petition under a plain and ordinary reading of § 325(d) because it presents “the
`
`same or substantially the same prior art or arguments previously [] presented to the
`
`Office.”
`
`Although the instant petition challenges some claims that were not
`
`challenged in the prior petitions, the Board has indicated this is not a determinative
`
`factor and has denied institution under 35 U.S.C. § 325(d) in similar scenarios. See,
`
`e.g., Ford Motor Co. v. Paice LLC, Case No. IPR2015-00767, Paper 14 at 7
`
`(PTAB Aug. 18, 2015) (“We also have considered Petitioner’s arguments that
`
`because it presents a new set of claims, e.g., consisting of previously challenged
`
`-6-
`
`
`
`
`
`claims, but also including newly challenged claims, we must consider the
`
`Petition. . . . We are not persuaded by this argument because the express language
`
`of 35 U.S.C. § 325(d) does not mention claims as being a factor in deciding
`
`whether to institute trial.”). Although the Hughes IPR granted institution of claims
`
`1 and 2 of the ’781 patent on grounds not raised in this Petition, this is also not a
`
`determinative factor. See Blue Coat Sys. LLC v. Finjan, Inc., Case No. IPR2016-
`
`01443, Paper 13 at 10 (PTAB July 15, 2016) (serial petition directed to dependent
`
`claims denied institution under § 325(d) despite prior institution on independent
`
`claims).
`
`Given the significant overlap between the asserted art and corresponding
`
`argument in the present petition compared to the previous Hughes petition, it is
`
`immaterial that the earlier petition was filed by a different party.2 See, e.g., Apple,
`
`Inc. v. Limestone Memory Sys. LLC, Case No. IPR2016-01567, Paper 11 at 9-12
`
`(PTAB Jan 18, 2017). In that proceeding, Apple similarly filed an IPR petition
`
`following denial of a petition against the same patent that had been filed by an
`
`unrelated party. The Board rejected Apple’s challenge to a claim based on
`
`
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`2 Counsel for Petitioner Apple also represented Hughes in the previous Hughes
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`district court litigation.
`
`-7-
`
`
`
`
`
`§ 325(d), noting Apple’s failure to “identify new arguments based on additional
`
`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
`
`the same prior art or arguments previously presented to the Office and because
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`Petitioner appears to have used a previously rejected petition as a roadmap to
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`bolster its petition, with the effect of harassing Caltech, the Board should exercise
`
`its authority under § 325(d) to deny the petition.
`
`III. GROUND 1 FAILS
`
`The petition fails to demonstrate that claims 13-15 and 17-22 would have
`
`been obvious over the combination of Ping in view of MacKay as asserted in
`
`Ground 1 because not every limitation of the challenged claims is found in the
`
`prior art. In addition, the petition fails to demonstrate that a person of ordinary skill
`
`in the art would have been motivated to combine the references in the references
`
`such that the combination of elements would have been obvious.
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`-8-
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`
`
`
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`A. There is no rationale for combining Ping and MacKay
`
`The petition proposes modifying the admittedly “regular” code of Ping to
`
`include the so-called “irregularity” of MacKay. Pet. at 33. The petition, however,
`
`misconstrues the prior art disclosures and fails to acknowledge that the
`
`“irregularity” of MacKay is already found in Ping. As such, there is no rationale to
`
`combine the cited references.
`
`Petitioner argues that MacKay teaches “irregularity” because its parity check
`
`matrix includes nonuniform weight per column. Pet. at 35, 40. Petitioner then
`
`argues that nonuniform weight per column can be added to Ping’s parity check
`
`matrix (identified in Ping as H). Id. at 33. But Petitoner’s analysis is flawed in that
`
`it incorrectly addresses only a portion of Ping’s parity check matrix Hd, rather than
`
`the parity check matrix H. As such, the petition overlooks the fact that Ping’s
`
`parity check matrix H already includes nonuniform weight per column—i.e., the
`
`“irregularity” of MacKay. Nothing in MacKay, however, teaches or suggests
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`selectively modifying only a portion of a parity check matrix (such as only portion
`
`Hd of Ping) in the specific manner proposed. Ping’s parity check matrix already
`
`includes nonuniform weight per column so no modification is required for Ping to
`
`include the “irregularity” of MacKay. In contrast, the selective modification
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`suggested in the petition materials is wholly unsupported by the prior art, and
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`-9-
`
`
`
`
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`amounts to nothing beyond conjecture generated using the ’781 patent disclosure
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`as a roadmap—i.e., impermissible hindsight.
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`As Petitioner’s proffered rationale to combine Ping and MacKay is fatally
`
`flawed, Ground 1 can be rejected on this basis alone.
`
`1. Ping already includes the “irregularity” of MacKay
`
`As demonstrated below, Ping’s parity check matrix H already includes
`
`nonuniform weight per column—i.e., the “irregularity” of MacKay.
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`Ping’s parity check matrix H is composed of two submatrices, Hp and Hd. H
`
`has the following form:
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`(cid:1)=(cid:3)(cid:1)(cid:4) (cid:1)(cid:5)(cid:6).
`
`Ex. 1103 at 38; see also Pet. at 26.
`
`Ping further specifies that Hp and Hd have a particular structure: Hd is a
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`randomly generated matrix of ones and zeros in which each column has exactly t
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`ones and each row has exactly kt/(n-k) ones, where k is the number of information
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`bits and n-k is the number of parity bits.3 Ex. 1103 at 38. Because Hd has t ones per
`
`
`
`composed of a set of parity bits p and information bits d according to the equation
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`3 H satisfies the parity check equation (cid:1)(cid:8)=0, where x is a codeword
`(cid:8)=(cid:10)(cid:11)(cid:12)(cid:13). (Ex. 1103 at 38; see also Pet. at 12-13). The codeword x contains n
`
`-10-
`
`
`
`
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`column, it is said to have a “column weight of t.” Id. The only value of t disclosed
`
`by Ping is 4 (see id. at 39); accordingly, Ping discloses that Hd has a uniform
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`column weight of 4. Ping further discloses that Hp has a specific, deterministic
`
`structure with 1s on the diagonal and immediately below the diagonal, as follows:
`
`0
`
`
`(cid:1)(cid:4)=(cid:14)1
`
`
`1 1
`1 1(cid:18).
` ⋱ ⋱
`0
`
`
`Id. at 38. Counting the number of ‘1s’ in each column of Hp gives two ‘1s’ for
`
`each column (n-k-1 in total) except the last, which has one ‘1’ (each column has
`
`one ‘1’ on the diagonal and one ‘1’ below the diagonal; the last column does not
`
`have an entry below the diagonal, so it has just one ‘1’). This is illustrated below:
`
`
`
`
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`codeword bits, with k information bits and (n-k) parity bits. Accordingly, H must
`
`be an (n-k)×n matrix composed of an (n-k)×(n-k) matrix Hp and an (n-k)×k matrix
`
`Hd. (Id.)
`
`-11-
`
`
`
`
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`Putting Hp together with Hd gives a parity check matrix H that has k
`
`columns with weight 4, one column with weight 1, and (n-k-1) columns with
`
`weight 2, as shown below:
`
`
`
`In other words, Ping discloses a parity check matrix with different numbers of ones
`
`per column—i.e., different column weights.
`
`Accordingly, as illustrated above, Ping’s parity check matrix H has different
`
`column weights (weight 2, weight 1, and weight t = 4). Thus, Ping’s parity check
`
`matrix is already irregular as defined by Petitioner and MacKay. Petitioner’s
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`failure to recognize that Ping already incorporates the irregularity of MacKay
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`fatally undercuts the proposed rationale to combine.
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`2. The proffered motivation to combine fails
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`The proposed combination of Ping and MacKay fails because the petition
`
`fails to reasonably describe how these two references would be combined and why
`
`one of ordinary skill in the art would have been motivated to do so. As explained
`
`below, the petition fails to provide the requisite “articulated reasoning with some
`
`-12-
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`
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`
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`rational underpinning” to support the asserted conclusion of obviousness. KSR Int’l
`
`v. Teleflex, Inc., 550 U.S. 398, 419 (2007) (citing In re Kahn, 441 F.3d 977, 988
`
`(Fed. Cir. 2006)). The stated justifications for combining the references, which are
`
`repeated in both the petition and Dr. Davis’s declaration, do not withstand scrutiny
`
`for several reasons.4
`
`
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`4 While Petitioner submitted the expert declaration of Dr. James A. Davis. (Ex.
`
`1104), Dr. Davis’s declaration should be given little to no weight, as it merely
`
`repeats the Petition’s arguments while adding essentially no independent facts,
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`data, or analysis. Dr. Davis’s testimony is frequently a near-verbatim recitation of
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`the conclusory arguments included within the Petition. E.g., compare Pet. at 36,
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`with Ex. 1104, ¶¶ 94-95; compare Pet. at 37 n.7, with Ex. 1104 at 40 n.6; compare
`
`Pet. at 38, with Ex. 1104, ¶¶ 100-01; compare Pet. at 43, with Ex. 1104 ¶ 115); see
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`Kinetic Techs., Inc. v. Skyworks Solutions, Inc., Case No. IPR2014-00529, Paper 8
`
`at 15 (P.T.A.B. Sept. 23, 2014) (“Merely repeating an argument from the Petition
`
`in the declaration of a proposed expert does not give that argument enhanced
`
`probative value.”); Corning Inc. v. DSM IP Assets B.V., Case No. IPR2013-00048,
`
`Paper 94 at 33 (P.T.A.B. May 9, 2014) (finding that an expert’s verbatim repeating
`
`-13-
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`
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`First, Petitioner’s proffered rationale is premised on incorrect assumptions.
`
`See e.g., Pet. at 34-35 (discussing “irregularity”). Petitioner’s combination is
`
`based on a proffered desire to import the “irregularity” of MacKay into Ping. As
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`explained above, however, the petition misconstrues the art regarding teachings of
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`“irregularity”: Ping already includes the type of “irregularity” for which Petitioner
`
`cited MacKay. As such, there can be no motivation to modify Ping when it already
`
`includes the aspects identified in MacKay.
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`Second, to the extent the petition proposes modifications to only a portion of
`
`Ping’s parity check matrix, such modifications are insufficiently explained and
`
`wholly unsupported in the cited references. The petition proposes modifying
`
`Ping’s code by varying the column weights in Ping’s parity check matrix, but
`
`points only to Ping’s Hd matrix. Pet. at 36-37. As explained above, Ping’s Hd
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`matrix is not a parity check matrix; it is only a portion of the parity check matrix
`
`H. See Pet. at 36 (“Ping’s Hd matrix is also part of Ping’s “parity check” matrix
`
`H”). Ping’s parity check matrix H already includes nonuniform weight per column,
`
`i.e., the “irregularity” of MacKay.
`
`
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`of attorney argument warrants “little weight in the absence of objective evidentiary
`
`support”).
`
`-14-
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`
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`Moreover, other than the ’781 patent itself, the cited references, including
`
`MacKay, are devoid of any teaching of modifying only a specific portion of a
`
`parity check matrix, including why or how it would be attempted. Petitioner does
`
`not explain why varying the column weights of only a portion of Ping’s parity
`
`check matrix, rather than the entire parity check matrix as described in MacKay,
`
`would have resulted in a functional encoder, let alone one which would have
`
`predictably produced improved code performance. The Petition asserts that it
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`“would have been straightforward” to change the column weights and it “would
`
`have been an easy way for one of ordinary skill to incorporate the irregularity
`
`disclosed by MacKay into Ping” (Pet. at 36), but these conclusory statements do
`
`not provide a reason why Ping would be particularly modified in a way no cited
`
`reference suggests, or otherwise provide a rationale to combine.
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`The remaining arguments essentially amount to assertions that the cited
`
`references are analogous art. For example, the petition argues a person of ordinary
`
`skill would have been motivated to combine Ping and MacKay because the
`
`references are “directed to the same field of endeavor.” Pet. at 33. However,
`
`whether prior art references are in the same field of endeavor is an inquiry best-
`
`suited for determining analogous art; it is insufficient to show a rationale for
`
`combining one reference with another. See Microsoft Corp., Case No. IPR2014-
`
`-15-
`
`
`
`
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`00745, Paper 12 at 14 (“Petitioner’s contention that the references solve the same
`
`need is better characterized as a contention that the references are analogous art
`
`than as a rational underpinning for the proposed combination.”); TRW Auto. US
`
`LLC v. Magna Elecs. Inc., Case No. IPR2014-00263, Paper 15 at 14 (P.T.A.B.
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`June 26, 2014) (“The mere fact that the two references are ‘in the same field of
`
`endeavor’ is not persuasive.”).
`
`For the foregoing reasons, Petitioner’s rationale to combine is insufficient,
`
`based on numerous false assumptions and improper hindsight, and does not
`
`support Petitioner’s Ground 1. Thus, Ground 1 is not supportable and should be
`
`rejected.
`
`B. Multiple aspects of the claimed subject matter are missing
`from the asserted references
`
`1. Ping in view of MacKay fails to disclose “wherein the
`information bits appear in a variable number of subsets”
`as recited in claims 13 and 22
`
`Independent claim 13 and dependent claim 22 each recite “wherein the
`
`information bits appear in a variable number of subsets.” Dependent claims 14-15
`
`and 17-18 also include this element by virtue of their dependency from claim 13.
`
`However, neither Ping nor MacKay, alone or in any combination, provide the
`
`requisite disclosure.
`
`-16-
`
`
`
`
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`The Petition relies on MacKay for the recited limitation. See Pet. at 39-40
`
`(“Ping’s code as modified to incorporate the irregularity of MacKay”); see also id.
`
`at 48. In particular, the petition argues the following:
`
`MacKay also notes that “[t]he best known binary Gallager codes are
`
`irregular codes whose parity check matrices have nonuniform weight
`
`per column.” (Id. p. 1449, emphasis in original.) Given these
`
`teachings of MacKay, it would have been obvious to one of ordinary
`
`skill to incorporate the non-uniform column weight of MacKay into
`
`the LDPC-accumulate codes of Ping…”
`
`Pet. at 40; see also id. at 35.
`
`Thus, the petition identifies the “irregularity” of MacKay as the nonuniform
`
`weight per column in the parity check matrix. The petition then equates the
`
`“irregularity” claimed (“wherein the information bits appear in a variable number
`
`of subsets”) with the “irregularity” of MacKay (“codes whose parity check
`
`matrices have nonuniform weight per column”). Id. The petition, however, has
`
`misconstrued the art and drawn a false equivalence.
`
`Petitioner proposes “incorporat[ing] MacKay’s irregularity into Ping” (Pet.
`
`32), but as demonstrated above Ping’s parity check matrix includes the
`
`“irregularity” provided in MacKay and relied upon by Petitioner (i.e., a parity
`
`check matrix with nonuniform weight per column). Petitioner and its expert admit
`
`that Ping’s equation is “regular” in the context of the ’781 patent and does not
`
`-17-
`
`
`
`
`
`satisfy claims 13 and 22. See, e.g., Pet. at 32 (“Ping’s outer coder is regular.”), 36
`
`(“Ping’s outer LDPC code is regular because each column in Ping’s generator
`
`matrix Hd contains the same number of 1s—exactly ‘t’ 1s.”). The failure of Ping
`
`to disclose “wherein the information bits appear in a variable number of subsets”
`
`as recited in claims 13 and 22 illustrates that MacKay also fails to teach this
`
`limitation, as this limitation is not the same as a parity check matrix having
`
`nonuniform weight per column. As demonstrated below, Ping already discloses an
`
`“irregular” code as MacKay uses the term, yet Petitioner concedes this does not
`
`satisfy the “irregularity” recited in the claims.
`
`As discussed above in Section III.A.1, Ping’s parity check matrix H is
`
`composed of two submatrices, Hp and Hd. And Ping’s parity check matrix H
`
`already has nonuniform weight per column—or the “irregularity” of MacKay.
`
`As illustrated, putting Hp together with Hd gives a parity check matrix H
`
`that has k columns with weight 4, one column with weight 1, and (n-k-1) columns
`
`with weight 2:
`
`
`
`-18-
`
`
`
`
`
`In other words, Ping discloses a parity check matrix with different numbers of ones
`
`per column—i.e., different column weights. The variable column weights,
`
`however, indicates that there is variability between parity bits and information bits,
`
`not that there is variability between the information bits themselves.
`
`Accordingly, as illustrated above, Ping’s parity check matrix H has different
`
`column weights (weight 2, weight 1, and weight t = 4). Thus, Ping’s parity check
`
`matrix is already irregular as defined by Petitioner and MacKay—so MacKay’s
`
`discussion of “irregular codes” with “nonuniform … column weight” describes a
`
`property that Ping’s parity check matrix already has, and which Petitioner admits
`
`does not satisfy claims 13 and 22.
`
`Thus, to the extent the petition is proposing that MacKay’s definition of
`
`irregularity would be applied to Ping, such proposal is nonsensical and redundant
`
`because Ping already satisfies the definition. To the extent Petitioner proposes
`
`modifying Ping’s submatrix Hd in view of MacKay (see Pet. at 64), nothing in the
`
`reference teaches such a modification. MacKay says nothing about modifying a
`
`specific portion of a parity check matrix to provide that subset of columns with
`
`nonuniform column weights, let alone doing so for a portion specifically
`
`corresponding to information bits. As such, MacKay provides no disclosure that
`
`would be applicable to submatrix Hd as opposed to parity check matrix H.
`
`-19-
`
`
`
`
`
`Moreover, Petitioner provides no explanation as to how MacKay’s teachings
`
`would result in a modification directed to Ping’s submatrix Hd, particularly when
`
`Ping already satisfies the definition of irregularity provided by MacKay.
`
`MacKay’s teachings relate only to the overall parity check matrix, not a subset of
`
`the parity check matrix, and therefore do not teach or suggest the modification to
`
`Ping’s submatrix Hd that Petitioner alleges.
`
`Neither Ping nor MacKay teach an encoder in which “information bits
`
`appear in a variable number of subsets” as claims 13 and 22 require, and
`
`Petitioner’s attempt to reach this claim language through MacKay’s reference to
`
`“irregularity” is unsupported by the prior art and a product of hindsight.
`
`Accordingly, Petitioner has failed to show that Ping in view of MacKay discloses
`
`“wherein the information bits appear in a variable number of subsets,” as recited in
`
`claims 13 and 22, and as included in dependent claims 14-15 and 17-18.
`
`2. Ping in view of MacKay fails to teach “wherein each of
`the subsets of the information bits includes a constant
`number of the information bits” as recited in claim 17
`
`Petitioner asserts that Ping teaches this limitation because Ping teaches a
`
`matrix Hd with a constant number of ones per row. Pet. at 42-43. However, claim
`
`17 depends from claim 13 and necessarily incorporates all elements of claim 13.
`
`-20-
`
`
`
`
`
`Petitioner’s discussion for claim 17 and claim 13 are inconsistent, as explained
`
`further below.
`
`According to Petitioner’s discussion for claim 13, Ping’s matrix Hd must be
`
`modified to incorporate non-uniform column weights in order to disclose claim 13.
`
`See Pet. at. 39-40 (“The number of subsets in which an information bit appears is
`
`given by the number of 1s in the column of Hd corresponding to that information
`
`bit. … [I]t would have been obvious to one of ordinary skill to incorporate the non-
`
`uniform column weight of MacKay into the LDPC-accumulate codes of Ping …”).
`
`For claim 17, however, Petitioner relies on an unmodified matrix Hd of
`
`Ping. Petitioner argues that the unmodified matrix of Ping teaches uniform row
`
`weights, thereby teaching the element “wherein each of the subsets of the
`
`information bits includes a constant number of the information bits” in claim 17.
`
`Pivoting back to the unmodified matrix Hd of Ping undermines Petitioner’s theory
`
`as to independent claim 13, from which claim 17 depends. In other words, the
`
`matrix cannot be both modified and unmodified. If Hd is unmodified, Petitioner’s
`
`challenge to claim 13 fails, and the challenge to dependent claim 17 fails along
`
`with it. If Hd is modified, then Petitioner’s argument with respect to claim 17 fails
`
`as it rests on false assumptions. As such, Petitioner’s theories of unpatentability of
`
`independent claims 13 and 17 are different and incompatible.
`
`-21-
`
`
`
`
`
`Illustrating the inconsistent and incompatible theories, arbitrarily changing
`
`column weights changes row weights as well. For example, one way to change a
`
`column’s weight is to add a ‘1’ to a column. However, such an addition also adds a
`
`‘1’ to a row, so both weights change. For example, the 3×3 identity matrix below
`
`has row and column weights of 1. Adding a ‘1’ to the upper right entry changes the
`
`last column’s weight to 2, but also changes the first row’s weight to 2, while the
`
`remaining rows have weights of 1.
`
`(cid:19)1 0 0
`0 0 1(cid:20)(cid:21)(cid:5)(cid:5) (cid:22)(cid:23)(cid:24)(cid:24)(cid:25)(cid:19)1 0 1
`0 0 1(cid:20)
`0 1 0
`0 1 0
`
`Accordingly, Petitioner has failed to show how to modify the Hd matrix (as
`
`required to meet the limitations of claim 13) in a way that would also meet the
`
`limitations of claim 17. Thus, Petitioner fails to demonstrate that Ping in view of
`
`MacKay teaches “wherein each of the subsets of the information bits includes a
`
`constant number of the information bits” as recited in claim 17.
`
`3. Ping in view of MacKay fails to disclose the receiving
`data limitation in claims 13, 19-21 and their dep
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