`
`Paper No. ___
`Filed: September 29, 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 IPR2017-00701
`Patent 7,421,032
`
`—————————————————
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`SUBMIT SUPPLEMENTAL INFORMATION
`
`
`
`
`
`
`
`
`
`Case IPR2017-00701
`Patent 7,421,032
`
`
`
`I.
`
`INTRODUCTION
`
`On September 22, 2017, Apple, Inc. (“Petitioner”) filed a Motion to Submit
`
`Supplemental Information under 37 C.F.R. § 42.123(a) (Paper 21) (“Motion”).
`
`Petitioner seeks to introduce 15 exhibits that were previously served on Patent
`
`Owner as Supplemental Evidence. Patent Owner California Institute of
`
`Technology (“Caltech”) opposes Petitioner’s motion.
`
`The requested supplemental evidence relates to purported publication of the
`
`Frey and Divsalar references. Petitioner was already given one chance to modify
`
`the evidence relied upon in the petition on these issues when it was allowed to
`
`enter substitute exhibits prior to institution. See Papers 11, 12. Now, Petitioner
`
`seeks a third opportunity to present evidence that should have been included in the
`
`petition. This is remarkable considering Petitioner recycled previous petitions
`
`where the public availability of the Frey and Divsalar references was at issue.
`
`What’s more, Petitioner makes clear that the new evidence is intended to
`
`shift the case away from the grounds presented in the petition by presenting a
`
`myriad of possible publication dates. To begin with, Frey is not a reference
`
`asserted in any instituted ground. Furthermore, as discussed in more detail below,
`
`the petition made no effort to argue, much less substantiate, any particular date of
`
`-1-
`
`
`
`Case IPR2017-00701
`Patent 7,421,032
`
`
`
`publication for Frey.1 Yet the Motion asserts that the various exhibits in the
`
`requested supplemental information demonstrate publication in February 2000,
`
`January 2000, October 1999, or even the year 1999 generally. As such, these
`
`exhibits are not only internally contradictory so as to create an evidentiary mess,
`
`but irrelevant to the March 20, 2000 date stated in Petitioner’s exhibit list and the
`
`Motion.
`
`Finally, Petitioner has candidly acknowledged that it is attempting to
`
`preempt potential arguments in the Patent Owner Response. Petitioner expressly
`
`stated in the July 26, 2017 conference call with the Board its concern that Caltech
`
`might attempt to antedate the alleged March 20, 2000 publication date asserted
`
`regarding Frey.2 The Board, however, has previously explained that submitting
`
`supplemental information as a vehicle to preempt a possible position the Patent
`
`Owner may take is impermissible. Medtronic, Inc. v. Endotach LLC, IPR2014-
`
`
`
`1 The table of exhibits lists a date of March 20, 2000, but no argument or
`
`explanation is provided.
`
`2 The July 26, 2017 conference call involved Petitioner’s request to submit the
`
`same supplemental information in IPR2017-00210 and IPR2017-00219.
`
`-2-
`
`
`
`Case IPR2017-00701
`Patent 7,421,032
`
`
`
`00100, Paper 18 at 4 (PTAB Apr. 21, 2014) (“[S]ubmitting supplemental
`
`information under 37 C.F.R. § 42.123(a) as a vehicle to respond to a possible
`
`position that another party may take in the future is improper.”). Presenting
`
`publication dates as moving targets with evolving theories of unpatentability is
`
`prejudicial to Caltech, is improper use of supplemental information, and should be
`
`denied.
`
`II. LEGAL STANDARD
`
`Even if the requirements of 37 C.F.R. § 42.123(a) for filing the motion are
`
`satisfied, the Board is not required to grant the motion. Redline Detection, LLC v.
`
`Star Envirotech, Inc., 811 F.3d 435, 445 (Fed. Cir. 2015). Instead, the “guiding
`
`principle” for the Board is to “ensure efficient administration of the Office and the
`
`ability of the Office to complete IPR proceedings in a timely manner.” Id.
`
`The Board has denied supplementation proffered to change the evidence
`
`presented in the petition, or to “bolster” a challenge based on feedback gleaned
`
`from the institution decision. Redline Detection, Paper 24 at 4; see also Mitsubishi
`
`Plastics, Inc. v. Celgard, LLC, IPR2014-00524, Paper 30 at 5-6 (PTAB Nov. 28,
`
`2014) (citing ZTE v. Contentguard Holdings, Inc., IPR2013-00139, Paper 27 at 3
`
`(PTAB July 30, 2013)); Redline Detection, LLC v. Star Envirotech, Inc., IPR2013-
`
`00106, Paper 24 at 4 (PTAB Aug. 5, 2013), aff’d, 811 F.3d 435 (Fed. Cir. 2015)).
`
`The use of supplemental information as a vehicle to reply to arguments
`
`-3-
`
`
`
`Case IPR2017-00701
`Patent 7,421,032
`
`
`
`made in a preliminary response or as an attempt to preempt possible arguments a
`
`Patent Owner might take during trial is not permitted either. VTech Commc’ns, Inc.
`
`v. Spherix Inc., IPR2014-01432, Paper 12 at 3 (PTAB, Jan. 21, 2015); see also
`
`Medtronic, IPR2014-00100, Paper 18 at 4 (PTAB Apr. 21, 2014).
`
`III. PROCEDURAL HISTORY
`
`Petitioner’s motion for supplemental information represents its third attempt
`
`to provide support for its grounds of unpatentability. See Motion at 10; see
`
`generally POPR at 2-6. The petition materials initially relied upon a draft version
`
`of the Frey paper allegedly distributed over the Internet—a theory previously
`
`rejected by the Board. See Ex. 1110 (original); see also Hughes Communications,
`
`Inc. v. California Institute of Technology (IPR2015-00067, “Hughes”), Paper 18 at
`
`8-11. As to Divsalar, the petition relies on the Declaration of Robin Fradenburgh
`
`(Ex. 1119), recycled from the Hughes case, to support the alleged public
`
`accessibility of the reference.
`
`Prior to institution, the Petitioner requested permission to replace certain
`
`exhibits including Frey and Divsalar with new exhibits, and filed a motion to that
`
`effect. Paper 11. The Board granted the motion. The newly-submitted evidence
`
`included a copy of Frey (Ex. 1110, replacement) which the Motion now argues was
`
`published on March 20, 2000 based on a library stamp in the document. See Pet. at
`
`25. The original copy of the Divsalar exhibit (Ex. 1117, original) was also replaced
`
`-4-
`
`
`
`Case IPR2017-00701
`Patent 7,421,032
`
`
`
`(Ex. 1117, replacement).
`
`On July 26, 2017, the Board held a conference call to discuss Petitioner’s
`
`request to submit the same supplemental information in IPR2017-00210 and
`
`IPR2017-00219. During the call, Petitioner admitted that it intended to submit Exs.
`
`1127–1141 as supplemental information at least in part because it anticipated that
`
`Patent Owner would show that the claimed invention was invented prior to the
`
`alleged March 20, 2000 publication date of Frey. Over six weeks later, Petitioner
`
`requested the same supplemental information in this proceeding. Petitioner’s
`
`Motion followed.
`
`IV. ARGUMENT
`
`A. Petitioner Has Failed to Demonstrate That Exhibits 1127–1141
`Are Relevant to an Instituted Claim
`
`The exhibits submitted by Petitioner are confusing, duplicative, and contain
`
`speculation and hearsay. Furthermore, they fail to support the specific allegations
`
`made in the petition regarding the publication date of Divsalar. As to Frey, as an
`
`initial matter, Petitioner made no effort in the petition to demonstrate or even argue
`
`that Frey qualifies as a prior art printed publication. See, e.g., Paper 3 at 18, 42.
`
`The Motion is a belated attempt to fix that flaw. Beyond that, the proposed
`
`supplemental evidence fails to support the March 20, 2000 date now asserted.
`
`Petitioner’s motion promises to turn the present proceeding into an evidentiary
`
`-5-
`
`
`
`Case IPR2017-00701
`Patent 7,421,032
`
`
`
`morass.
`
`Exs. 1127-1130: Exhibits 1127 and 1128 are identified as library records
`
`that allegedly show a 1999 date of publication for the conference proceedings
`
`containing Frey. Motion at 4-5. Petitioner relies on the declaration of Theodore
`
`Fons (Ex. 1130) in support. These documents are irrelevant to the March 20, 2000
`
`date asserted in the Motion, but are an improper attempt to materially alter the
`
`petition theory and preempt an argument Petitioner believes Caltech may make
`
`later.
`
`Exhibits 1127, 1128 and 1130 additionally create confusion rather than any
`
`clarity, and will waste Caltech and Board resources. For example, in his
`
`declaration, Mr. Fons observes that the date “1999” was entered into a field by
`
`WorldCat, and possibly copied by JPL at an unknown later date. Ex. 1130, ¶21.
`
`Mr. Fons offers conjecture as to the thoughts of unknown cataloguers but concedes
`
`a “date was not present in place where imprint information is normally found and
`
`used for cataloging.” Ex. 1130, ¶19. However, this opinion is speculation on the
`
`part of Mr. Fons and hearsay. Indeed, the simplest explanation is that the “1999” in
`
`the date field reflects the conference date, at which Frey gave a presentation but no
`
`paper was distributed (it is uncontested that no Frey paper was distributed at the
`
`conference, as Dr. Frey previously testified). Moreover, an alleged 1999
`
`publication date for Frey contradicts other arguments and evidence relied on by
`
`-6-
`
`
`
`Case IPR2017-00701
`Patent 7,421,032
`
`
`
`Petitioner. See, e.g., Motion at 7 (arguing that Ex. 1138 shows the 1999
`
`Proceedings were not even shipped to the Allerton Conference before late
`
`February, 2000).
`
`Exhibit 1129 is a library record from WorldCat allegedly showing that the
`
`conference proceedings containing Divsalar were published in June of 1999. First,
`
`this is irrelevant to the Fradenburgh declaration’s alleged publication at the
`
`University of Texas, or the asserted April 30, 1999 public accessibility case as
`
`stated in the petition. Second, the petition asserts Divsalar solely as 102(b) prior art
`
`based on the asserted April 30, 1999 date. Pet. at 33-34.3 However, Ex. 1129 serves
`
`as an implicit acknowledgment by Petitioner that the unpatentability case as stated
`
`in the petition was not sufficiently substantiated. That does not permit Petitioner,
`
`however, to use supplemental information to advance an alternate theory.
`
`Ex. 1131: Exhibit 1131, the affidavit of Pamela Stansbury, is the sole piece
`
`of evidence provided by Petitioner that actually discusses the alleged March 20,
`
`2000 publication of Frey. However, Petitioner has failed to sufficiently explain
`
`
`
`3 Petitioner has conceded an effective filing date of May 18, 2000 for the ’032
`
`patent claims. Pet. at 33.
`
`-7-
`
`
`
`Case IPR2017-00701
`Patent 7,421,032
`
`
`
`why this testimony was not provided either with the original petition, or when
`
`changing the exhibits after filing. Petitioner should not be permitted to change the
`
`evidence and have yet another attempt to substantiate unsupported assertions made
`
`in the exhibit list, but omitted from the petition.
`
`Exs. 1132–1135: Exhibits 1132–1134 are declarations by three Allerton
`
`conference chairs and Exhibit 1135 is a declaration by Brendon Frey. The
`
`conference chairs’ declarations speculate, roughly 20 years later, as to expected
`
`“timelines associated with the 36th and 37th Allerton Conferences.” Motion at 5.
`
`Not one of the four witnesses, however, purports to have actual knowledge specific
`
`to the actual alleged publication of the 37th Proceedings. Instead, each repeats the
`
`same speculation about when the Proceedings might have been shipped.
`
`Dr. Frey’s declaration (Ex. 1135) adds significant confusion, and is not
`
`relevant to the Cornell library stamp on Frey or the instituted ground as it discusses
`
`a different alleged publication than the identified March 20, 2000 date. Dr. Frey
`
`reverts to a different theory compared to what is relied on in the petition—the
`
`alleged internet posting of the draft version of Frey. For example, Dr. Frey
`
`discusses the alleged posting of the electronic draft Frey paper on Dr. MacKay’s
`
`website. See Ex. 1135, ¶¶17-18. Moreover, Petitioner disavowed that draft Frey
`
`paper and pled for relief by arguing that filing the draft Frey paper was a clerical
`
`error due to an associate not following instructions. Paper 11 at 4. Petitioner should
`
`-8-
`
`
`
`Case IPR2017-00701
`Patent 7,421,032
`
`
`
`not be allowed to reintroduce the admittedly erroneous document, and advance a
`
`different and previously rejected theory, after trial has been instituted. Moreover,
`
`Petitioner should not be permitted to circumvent the standards for gaining
`
`institution (and avoid 325(d) arguments) through a supplemental information
`
`submission.
`
`Ex. 1136: Exhibit 1136, the Allerton website from 1999, is not relevant to
`
`the date of publication of the Frey paper. The only basis for relevance suggested is
`
`that Ex. 1136 lists a due date (September 24) for papers. However, this does not
`
`indicate a date of publication. Indeed, its relevance is further undermined by the
`
`testimony of Dr. Frey that he finished his paper on September 29 and submitted it
`
`“within a couple of weeks of that.” Ex. 1135, ¶17.
`
`Exs. 1137 and 1138: Both documents address Frey but are irrelevant to the
`
`Motion’s theory. Exhibit 1137 is an email dated December 8, 1999. The email
`
`relates only to the placing of an order for future publication and speculations of the
`
`Allerton conference chairs regarding how long after that date printed copies of the
`
`conference proceedings might have been shipped.
`
`Exhibit 1138 is allegedly “a bill of lading for the 37th Annual Allerton
`
`Conference Proceedings with a ship date of February 21, 2000.” However, no
`
`witness has authenticated this exhibit—only unsubstantiated attorney argument is
`
`provided. There is no indication how a shipment could have been made on a
`
`-9-
`
`
`
`Case IPR2017-00701
`Patent 7,421,032
`
`
`
`federal holiday, no indication of a date when this alleged shipment was received is
`
`present on the form, nor does it indicate how much time would have passed
`
`between any request and subsequent mailing to the public.
`
`Exs. 1139 and 1140: Exhibits 1139 and 1140 each contain testimony from
`
`the Hughes litigation and are irrelevant here. Petitioner relies on Ex. 1139 as
`
`allegedly showing that the deponent in that case, Dr. Wicker, was “reasonably sure
`
`that the irregular turbo codes paper, Frey ’99, was indeed published as part of the
`
`proceedings of the Allerton conference.” Motion at 8 (citing Ex. 1139 at 157:2–5).
`
`However, Dr. Frey concedes that the paper was not published at the conference.
`
`Ex. 1135, ¶ 17. Moreover, the exhibits are irrelevant to the March 20, 2000 date.
`
`Petitioner relies on Ex. 1140 as allegedly demonstrating that “Dr. Urbanke
`
`suggested that people in the field were looking at Divsalar in 1999.” Motion at 8
`
`(citing Ex. 1140 at 168:4–21). First, this extrinsic deposition of a different witness
`
`is irrelevant to the testimony relied on in the petition as allegedly demonstrating
`
`publication and related issues raised in the preliminary response, i.e., whether Ms.
`
`Fradenburgh is a witness available for cross-examination in this proceeding, or
`
`whether her library made the reference publicly available and, if so, when.
`
`Additionally, Petitioner improperly characterizes the cited testimony. It is the
`
`attorney taking the deposition, not Dr. Urbanke, who discusses the Divsalar paper.
`
`Given the significant length of this deposition transcript (383 pages) and
`
`-10-
`
`
`
`Case IPR2017-00701
`Patent 7,421,032
`
`
`
`voluminous content having nothing to with the publication of Divsalar, Petitioner’s
`
`failure to identify content relevant to an instituted ground, and Petitioner’s
`
`mischaracterization of Dr. Urbanke’s testimony, submission as supplemental
`
`information should be denied.
`
`Ex. 1141: Exhibit 1141 is irrelevant to the asserted March 20, 2000 date and
`
`provides no contemporaneous evidence regarding Frey’s publication as it is a copy
`
`of a book published in 2014. Ex. 1141 at 4. Motion at 8. Moreover, as Petitioner
`
`admits, the book describes 1999 as the date of some presentation, not publication
`
`of a paper. Id., Ex. 1141 at 36. And the book adds confusion rather than clarity as
`
`the dates cited in the book are internally inconsistent. Ex. 1141 at 68 (ref. 4).
`
`B. Petitioner Should Not Be Allowed a Third Reformulation
`
`Petitioner chose not to previously submit any of the evidence it now seeks to
`
`introduce. Given the unique history of the present case, including the previous
`
`Hughes cases and the fact that this petitioner was already granted the extraordinary
`
`relief of replacing its petition documents with different ones, the Board should
`
`decline to exercise its discretion in allowing yet another attempt to address issues
`
`that should have been identified and addressed previously. Allowing the petitioner
`
`multiple opportunities to supplement, and even alter, its petition case long after the
`
`petition filing is inefficient, wastes resources, is prejudicial to Caltech, and is
`
`contrary to the “guiding principle” for the Board to “ensure efficient administration
`
`-11-
`
`
`
`Case IPR2017-00701
`Patent 7,421,032
`
`
`
`of the Office and the ability of the Office to complete IPR proceedings in a timely
`
`manner.” Redline Detection, 811 F.3d at 435.
`
`C. The Motion is an Improper Vehicle to Change the Petition’s
`Alleged Dates of Publication
`
`Exs. 1127-1141 are irrelevant to the asserted March 20, 2000 publication
`
`date for Frey. Petitioner has admitted that its purposes in submitting these exhibits
`
`include an attempt to head off a potential argument by Caltech of prior invention.
`
`See Section III, supra (discussing the July 26, 2017 Conference Call). This
`
`represents an improper use of supplemental information to modify the arguments
`
`made in the petition. Medtronic, IPR2014-00100, Paper 18 at 4; see also Intelligent
`
`Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (“[u]nlike
`
`district court litigation — where parties have greater freedom to revise and develop
`
`their arguments over time and in response to newly discovered material — the
`
`expedited nature of IPRs bring[s] with it an obligation for petitioners to make their
`
`case in their petition to institute.”). The Board should deny the use of supplemental
`
`information for such purposes.
`
`V. CONCLUSION
`
`For the reasons described above, the Board should deny Petitioner’s Motion
`
`to Submit Exhibits 1127-1141 as Supplemental Information.
`
`
`
`
`-12-
`
`
`
`Case IPR2017-00701
`Patent 7,421,032
`
`
`
`
`
`
`
`
`
`Date: September 29, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`
`
`-13-
`
`
`
`Case IPR2017-00701
`Patent 7,421,032
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that the foregoing Patent Owner’s Opposition to Petitioner’s Motion
`
`to Submit Supplemental Information was served on this 29th day of September,
`
`2017, on the Petitioner at the correspondence address of the Petitioner as follows:
`
`
`Richard Goldenberg
`Brian M. Seeve
`Dominic Massa
`Michael H. Smith
`WILMER CUTLER PICKERING HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`richard.goldenberg@wilmerhale.com
`brian.seeve@wilmerhale.com
`dominic.massa@wilmerhale.com
`michaelh.smith@wilmerhale.com
`
`
`
`
`Date: September 29, 2017
`
`
`
`
`
`Respectfully submitted,
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`
`
`
`
`
`
`-14-
`
`