`571.272.7822
`
`Paper 42
`Entered: April 21, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HUGHES NETWORK SYSTEMS, LLC and
`HUGHES COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Case IPR2015-00059
`Patent 7,916,781 B2
`_______________
`
`Before KALYAN K. DESHPANDE, GLENN J. PERRY, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`PERRY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`Apple 1111
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`IPR2015-00059
`Patent 7,916,781 B2
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`I. INTRODUCTION
`A. Procedural History
`Hughes Network Systems, LLC and Hughes Communications, Inc.1
`(collectively “Petitioner” or “Hughes”) filed a Petition requesting an inter
`partes review of claims 1–7, 13–16, and 19 of U.S. Patent No. 7,916,781 B2
`(Ex. 1005, “the ’781 Patent”). Paper 4 (“Pet.”).2 California Institute of
`Technology (“Patent Owner” or “CIT”) timely filed a Preliminary Response.
`Paper 13 (“Prelim. Resp.”). We instituted trial as to claims 1 and 2 of the
`’781 Patent as being anticipated by Divsalar3 and did not authorize trial as to
`the other grounds of unpatentability alleged in the Petition. Paper 18
`(“Dec.”). Following institution of trial, Patent Owner filed its formal
`response. Paper 24 (“PO Resp.”). Petitioner replied. Paper 29 (“Pet.
`Reply”). Patent Owner moved to “strike” and to “exclude” various
`Petitioner exhibits. Paper 32 (“Mot.”). Petitioner opposed. Paper 35 (“Mot.
`Opp.”). We heard oral argument on February 10, 2016. Paper 39 (“Tr.”).
`
`B. Related Proceedings
`Petitioner states that the ’781 Patent is involved in a pending lawsuit
`titled California Institute of Technology v. Hughes Communications, Inc.,
`No. 13-CV-07245 (C.D. Cal.). Pet. 1 (citing Ex. 1015). In that lawsuit the
`following patents are asserted: (i) U.S. Patent No. 7,116,710; (ii) U.S.
`Patent No. 7,421,032; (iii) U.S. Patent No. 7,916,781; and (iv) U.S. Patent
`
`
`1 EchoStar Corporation is named in the Petition as the parent of Hughes
`Satellite Systems Corporation, which is the parent of Hughes
`Communications, Inc. Pet. 1.
`2 “Pet.” refers to the corrected Petition filed October 30, 2014 (Paper 4).
`3 Dariush Divsalar, et al., Coding Theorems for “Turbo-Like” Codes,
`THIRTY-SIXTH ANNUAL ALLERTON CONFERENCE ON COMMUNICATION,
`CONTROL, AND COMPUTING 201–209 (1998) (Ex. 1011, “Divsalar”).
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`2
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`IPR2015-00059
`Patent 7,916,781 B2
`No. 8,284,833. Petitioner has filed additional Petitions for inter partes
`review challenging other patents of the patent family. Pet. 1.
`
`C. The ’781 Patent
`1. Background and Context
`Error correcting codes are used to communicate information across a
`noisy communication channel. They enable recovery of a transmitted
`message that may have become distorted by noise on the communication
`channel. To error correction encode a message for transmission, its bits are
`parsed into groups of message bits that are “encoded” into “codewords” that
`include additional redundant information.4 Thus, the encoded codewords
`have more information than the original message had prior to encoding. The
`codewords are transmitted over the communication channel and are received
`at another location, where the codewords are “decoded” into the original
`message. No single coding scheme is optimal for all communication
`channels. There are design tradeoffs between the use of complex codes,
`which permit better error correction, and less complex codes, which are
`easier to decode. This has led to the development of many different
`encoding/decoding schemes. The ’781 Patent describes one such scheme.
`2. Disclosed Invention
`The ’781 Patent describes the serial concatenation of interleaved
`convolutional codes forming turbo-like codes. Ex. 1005, Title. It explains
`some of the prior art with reference to its Figure 1, reproduced below.
`
`
`4 For example, message bits “10011” may be encoded into a codeword
`“100111” by adding a “parity” bit “1” to the original message.
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`3
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`Patent 7,916,781 B2
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`Figure 1 is a schematic diagram of a prior “turbo code” system. Ex. 1005,
`2:20–21. The ’781 Patent specification describes Figure 1 as follows:
`
`
`
`A block of k information bits is input directly to a first coder
`102. A k bit interleaver 106 also receives the k bits and
`interleaves them prior to applying them to a second coder 104.
`The second coder produces an output that has more bits than its
`input, that is, it is a coder with rate that is less than 1. The
`coders 102, 104 are typically recursive convolutional coders.
`Three different items are sent over the channel 150: the
`original k bits, first encoded bits 110, and second encoded bits
`112. At the decoding end, two decoders are used: a first
`constituent decoder 160 and a second constituent decoder 162.
`Each receives both the original k bits, and one of the encoded
`portions 110, 112. Each decoder sends likelihood estimates of
`the decoded bits to the other decoders. The estimates are used
`to decode the uncoded information bits as corrupted by the
`noisy channel.
`Ex. 1005, 1:44–60.
`A coder 200, according to a first embodiment of the invention, is
`described with respect to Figure 2, reproduced below.
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`Patent 7,916,781 B2
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`Figure 2 of the ’781 Patent is a schematic diagram of coder 200.
`
`
`The coder 200 may include an outer coder 202, an interleaver
`204, and inner coder 206. . . . The outer coder 202 receives the
`uncoded data [that] may be partitioned into blocks of fixed size,
`[e.g.] k bits. The outer coder may be an (n,k) binary linear
`block coder, where n>k. The coder accepts as input a block u
`of k data bits and produces an output block v of n data bits.
`The mathematical relationship between u and v is v=T0u, where
`T0 is an nxk matrix, and the rate5 of the coder is k/n.
`
`The rate of the coder may be irregular, that is, the value of T0 is
`not constant, and may differ for sub-blocks of bits in the data
`block. In an embodiment, the outer coder 202 is a repeater that
`repeats the k bits in a block a number of times q to produce a
`block with n bits, where n=qk. Since the repeater has an
`irregular output, different bits in the block may be repeated a
`different number of times. For example, a fraction of the bits in
`the block may be repeated two times, a fraction of bits may be
`repeated three times, and the remainder of bits may be repeated
`four times. These fractions define a degree sequence or degree
`profile, of the code.
`
`The inner coder 206 may be a linear rate-1 coder, which means
`that the n-bit output block x can be written as x=TIw, where TI
`is a nonsingular n x n matrix. The inner coder 210 can have a
`
`5 We understand that the “rate” of an encoder refers to the ratio of the
`number of input bits to the number of resulting encoded output bits related to
`those input bits.
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`5
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`IPR2015-00059
`Patent 7,916,781 B2
`rate that is close to 1, e.g., within 50%, more preferably 10%
`and perhaps even more preferably within 1% of 1.
`
`
`Ex. 1005, 2:40–3:2. Codes characterized by a regular repeat of message bits
`into a resulting codeword are referred to as “regular repeat,” whereas codes
`characterized by irregular repeat of message bits into a resulting codeword
`are referred to as “irregular repeat.” The second (“inner”) encoder 206
`performs an “accumulate” function. Thus, the two step encoding process
`illustrated in Figure 2, including a first encoding (“outer encoding”)
`followed by a second encoding (“inner encoding”), results in either a
`“regular repeat accumulate” (“RRA”) code or an “irregular repeat
`accumulate” (“IRA”) code, depending upon whether the repetition in the
`first encoding is regular or irregular.
`Figure 4 of the ’781 Patent is reproduced below.
`
`Figure 4 shows an alternative embodiment in which the first encoding is
`carried out by a low density generator matrix. Low density generator matrix
`(LDGM)6 codes are a special class of low density parity check codes that
`allow for less encoding and decoding complexity. LDGM codes are
`
`6 We understand that a “generator” matrix (typically referred to by “G”) is
`used to create (generate) codewords. A parity check matrix (typically
`referred to by “H”) is used to decode a received message.
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`6
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`Patent 7,916,781 B2
`systematic linear codes generated by a “sparse” generator matrix. No
`interleaver (as in the Figure 2 embodiment) is required in the Figure 4
`arrangement because the LDGM provides scrambling otherwise provided by
`the interleaver in the Figure 2 embodiment.
`3. Illustrative Claim
`Independent claim 1 is reproduced below.
`1. A method of encoding a signal, comprising:
`
`[a] receiving a block of data in the signal to be encoded, the
`block of data including information bits;
`
`[b] performing a first encoding operation on at least some of the
`information bits, the first encoding operation being a linear
`transform operation that generates L transformed bits; and
`
`[c] performing a second encoding operation using the L
`transformed bits as an input, the second encoding operation
`including an accumulation operation in which the L
`transformed bits generated by the first encoding operation are
`accumulated, said second encoding operation producing at least
`a portion of a codeword, wherein L is two or more.
`
`
`(bracketed alphabetic references are added to the claim limitations).
`
`II. ANALYSIS OF PETITIONER’S CHALLENGES
`A. Real Parties in Interest
`Patent Owner argues that Petitioner failed to name all Real Parties-in-
`Interest (RPI) including EchoStar Corporation (“EchoStar”) and the “DISH”
`entities. Paper 16, PO Resp. 5–18. We held a conference call on Feb. 25,
`2015 to discuss Patent Owner’s allegation of unnamed real parties-in-
`interest. The following figure is reproduced from page 9 of Patent Owner’s
`Preliminary Response.
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`The figure purports to portray relationships among EchoStar, Hughes, and
`Dish entities.
`We authorized additional briefing on the issue of potential unnamed
`real parties-in-interest. Petitioner (Paper 15) and Patent Owner (Paper 16)
`filed briefs directed to this issue. Petitioner also filed, without authorization
`and in support of Paper 15, a Declaration of T. Jezek, in house Intellectual
`Property Counsel of Hughes Network Systems, LLC. Ex. 1070.
`The Petition names Hughes Network Systems, LLC and Hughes
`Communications, Inc. (collectively “Hughes”) as real parties-in-interest.
`The Petition further states that EchoStar Corporation is the parent of Hughes
`Satellite Systems Corporation which is the parent of Hughes
`Communications, Inc. Pet. 1.
`Patent Owner argues that Petitioner failed to name EchoStar
`Corporation (“EchoStar”) and the “DISH” entities as real parties in interest
`in the Petition. We held a conference call on Feb. 25, 2015 to discuss this
`issue. The following diagram sets forth our understanding of relationships
`among various corporate entities.
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`1. EchoStar
`Petitioner acknowledges that Hughes is wholly owned by EchoStar.
`Petitioner identified EchoStar in the Petition under the heading “Real Party-
`in-interest.” Pet. 1. During the conference call held on Feb. 25, 2015,
`Petitioner argued that the identification of EchoStar was in accordance with
`the PTO’s published guidance at 69 Fed. Reg. 49,960, 49,975 (Aug. 12,
`2004). It argued that no “magic words” are required to identify a RPI and
`that its identification set forth in accordance with USPTO published
`guidance is sufficient.
`Patent Owner argues that EchoStar should have been specifically
`named as a real party-in-interest. PO Resp. 5–8.
`The evidence of record indicates that EchoStar is the parent company
`of Hughes. Petitioner identified EchoStar in the “Real Parties in Interest”
`section of the Petition as the parent of Hughes. There is no evidence that
`EchoStar controls this inter partes review.
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`Patent Owner notes that aside from Mr. Jezek’s declaration, Hughes
`has not provided evidentiary support for its contention that it properly named
`the real parties-in-interest beyond a single exhibit containing a portion of a
`motion for summary judgment filed by Hughes and DISH in one of the
`related district court cases.
`We find that Petitioner has identified EchoStar in accordance with the
`Board of Patent Appeals and Interferences guidance of August 12, 2004. As
`such, we are not persuaded that Petitioner has failed to name EchoStar as a
`real party in interest.
`
`2. Dish Entities
`Dish is not identified in the Petition as a real party-in-interest. During
`the conference call of February 25, 2015 Petitioner indicated that Dish is a
`spinout of EchoStar.
`Patent Owner argues that public documents describe EchoStar as
`“calling the shots” for its subsidiaries. Paper 16, 1. Patent Owner recounts
`various activities with respect to the District Court litigation that suggest
`Dish is a real party-in-interest. Paper 16, 2. In particular, Patent Owner
`refers to the voting power of Charles W. Ergen, SEC documents indicating
`“common control,” R. Stanton Dodge being both Dish General Counsel and
`an EchoStar Director, EchoStar V.P. Roger J. Lynch being responsible for
`technology that is important to EchoStar and Dish, and Dish and Hughes
`having common counsel in the District Court proceeding. Id.
`Patent Owner argues that as a result of this “evidence,” the burden has
`shifted to Petitioner to demonstrate that Dish is not a real party-in-interest.
`We disagree.
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`Although Petitioner has the ultimate burden of persuasion in an inter
`partes review, once the Petitioner has represented what it believes to be a
`proper identification of the real parties-in-interest, Patent Owner has the
`burden of production in establishing that a real party-in-interest has not been
`named. Patent Owner has not carried that burden with respect to
`establishing that Dish is an unnamed real party-in-interest.
`Petitioner persuasively argues that Patent Owner failed to show that
`the Petition was filed at the behest of Dish. Paper 15, 1. The key to a real
`party-in-interest inquiry is the relationship between the potential unnamed
`real party-in-interest and the proceeding, not the relationship between
`parties. For example, “[a] common consideration is whether the non-party
`exercised or could have exercised control over a party’s participation in a
`proceeding.” 77 Fed. Reg. at 48,759.
`There is no persuasive evidence of record that Dish controls or even
`had an opportunity to control Hughes’ decision to file or maintain this inter
`partes review.
`
`3. Conclusion
`Patent Owner has not met its burden of production in establishing that
`Petitioner has failed to name a real party-in-interest.
`
`B. Claim Construction
`In an inter partes review, claim terms of an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. See 37 C.F.R. § 42.100(b); Office Patent Trial
`Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under the
`broadest reasonable construction standard, claim terms are given their
`ordinary and customary meaning, as would be understood by one of ordinary
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`skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for
`a claim term must be set forth with reasonable clarity, deliberateness, and
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`In this case, our construction discussed below would be the same
`using the broadest reasonable construction or the claim construction standard
`required by Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`banc).
`
`1. “linear transformation”(claim 1)
`Petitioner argues that Divsalar teaches linear transformation within its
`broadest reasonable construction. However, it does not propose a formal
`construction for the term “linear transformation.” Pet. 11–14.
`Patent Owner argues that when the claims are properly construed,
`Divsalar fails to teach a “first encoding operation being a linear transform
`operation that generates L transformed bits,” and “the second encoding
`operation including an accumulation operation in which the L transformed
`bits generated by the first encoding operation are accumulated.” PO Resp. 2.
`According to Patent Owner, it is clear from the context of the ’781
`Patent that the first encoding operation is not so broad as to encompass any
`linear transformation. Rather, read in view of the specification, the first
`encoding operation must involve irregular repetition and scrambling of bits.
`PO Resp. 31(cid:237)32 (citing Ex. 1005 at 1:63-2:10). Patent Owner provides
`declaration testimony of Dr. Solomon Golomb (Ex. 2024), who explains that
`the specification consistently refers to the invention as comprising two main
`aspects—an “outer coder” and an “inner coder” (Ex. 2024 ¶ 21)—and that a
`person of ordinary skill, upon reading the specification, would understand
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`that the outer coder must include irregular repetition of input bits. Ex. 2024
`¶ 22.
`We construe the term “linear transformation” in order to apply the
`Divsalar reference. The term “linear transformation” is used in the context
`of a transformation between two vector spaces. We adopt a linear algebra
`definition7 that a linear transformation is one that obeys the laws of linear
`algebra including distributive and associative properties, e.g., the transform
`of vectors a+b is equal to the transform of a + the transform of b. The linear
`transform of x (a scalar) times a vector y is equivalent to x times the
`transform of vector y. We decline to read into the claim limitation the
`requirement of an irregular repeat.
`2. Additional Claim Terms
`We find it unnecessary to construe additional claim terms.
`
`C. Divsalar (Ex. 1011) as a Publication
`The Petition relies upon Divsalar (Ex. 1011) being a printed
`publication citable against the ’781 Patent. Divsalar is an article written by
`Dariush Divsalar, Hui Jin, and Robert J. McEliece. Robert J. McEliece is
`listed as a co-inventor of the ’781 Patent at issue. The authorship of
`Divsalar is different from the inventorship of the ’781 Patent because only
`Robert J. McEliece is common to both.
`Patent Owner argues that Petitioner has not established that Divsalar
`is a printed publication within the meaning of 35 U.S.C. § 311(b) that can be
`relied upon to anticipate the claims of the ’781 Patent. PO Resp. 20(cid:237)28.
`
`
`7 This definition is explained by “Wolfram MathWorld” at
`http://mathworld.wolfram.com/lineartransformation.html (Ex. 3000).
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`The ’781 Patent is part of a family of applications and patents as
`illustrated in the following diagram.
`
`
`
`We prepared the above diagram based on related cases data found on the
`cover page of the ’781 Patent. The ’781 Patent derives an earliest effective
`filing date, through a series of continuation applications, from the filing date
`of Provisional Application 60/205,095 which was filed on May 18, 2000.
`Petitioner does not challenge the May 18, 2000 effective filing date for the
`’781 Patent.
`The cover page of Divsalar (Exhibit 1011) is reproduced below.
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`The above image is taken directly from Exhibit 1011. The hallmark
`of whether a document is a printed publication within the meaning of the
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`America Invents Act is whether it has been made available to those of
`ordinary skill in the art in a manner such that those seeking it can find it.
`See e.g., SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed.
`Cir. 2008).The record includes sufficient evidence that Divsalar is a “printed
`publication” within the meaning of 35 U.S.C. § 311(b) and that it predates
`the earliest effective filing date of the ’781 Patent.
`The Petition states that Divsalar was “published at least by April 30,
`1999.” Pet. 2. Petitioner provides a Declaration by Robin Fradenburgh (Ex.
`1064), Librarian at the University of Texas (“UT”). The Fradenburgh
`Declaration includes an “acquisition record” pasted into an email. Ex. 1064,
`4(cid:237)6. Fradenburgh states that the exact date of acquisition of Divsalar by the
`UT library is unknown. Id. at ¶ 5. However, the acquisition record states at
`the bottom “UT Created 1999-04-30.” Id. at 6. We take this to mean that
`the acquisition record was created April 30, 1999. We infer from this date
`that Divsalar was received at the library no later than April 30, 1999. Patent
`Owner correctly notes that there are no details in the declaration or
`acquisition record concerning how Divsalar was treated at the library after
`the acquisition record was created; e.g., there are no details concerning its
`shelving and cataloging.
`Based on the cover page of Divsalar, we find that it is a print-out of a
`paper from a collection of papers in the Proceedings of the Allerton
`Conference that occurred September 23–25, 1998, about 20 months before
`the earliest effective filing date of the ’781 Patent. There is no evidence in
`the record suggesting otherwise.
`Petitioner further presents Declaration testimony of Henry D. Pfister,
`Ph.D. (Ex. 1010) stating that
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`[t]he Allerton Conference is generally regarded as one of the
`main conferences in the field of information theory and
`communications and generally occurs in September. In 1999,
`the conference occurred from September 22-24, 1999 with the
`paper being published on the author’s websites in October of
`1999. The proceedings were published later.
`Ex. 1010 ¶ 29.
`Petitioner further provides the Declaration testimony (Ex. 1060) of
`David J.C. Mackay, Ph.D. generally describing that he was active in the
`community of those engaged in error correction coding and in the period of
`1991 to present published papers, software, abstracts and other information
`on his own website regarding publications that he made available to others
`on his own website. Ex. 1060 ¶¶ 13(cid:237)33. Dr. Mackay states that he attended
`talks given by Dr. Robert McEliece including those given in 1998 and 1999
`at the Allerton Conferences held by the University of Illinois. Ex. 1060
`¶ 11. He describes his process for publishing papers in detail in paragraph
`21 of his Declaration. Dr. Mackay further states that “more commonly final
`articles summarizing all or part of the conference presentation were
`completed immediately after the conference and sent to the organizers for
`publication.” Id. ¶ 21. Dr. Mackay does not provide testimony specifically
`directed to Allerton’s publication of its papers from its 1998 Allerton
`Conference. See id. However, he testifies (verified by Wayback Machine)
`that he placed a copy of his own paper, “Comparison of Constructions of
`Irregular Gallager Codes” on his website as of May 7, 1999. Ex. 1060 ¶ 27.
`See Tr. 13(cid:237)14. His own paper cites Divsalar (see table below). We find,
`based on Dr. Mackay’s testimony, that Divsalar had been distributed to him
`prior to his posting of his own paper on his website in May, 1999.
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`Petitioner asserts that the “at least as early” publication date (i.e.,
`April 30, 1999) is based on the acquisition record of the UT library. Pet. 2
`(citing Ex. 1064). According to Patent Owner, the Fradenburgh Declaration
`fails to establish that Divsalar was published by the alleged publication date.
`PO Resp. 24(cid:237)25. Patent Owner argues that the Fradenburgh Declaration
`does not explain the acquisition record and does not explain the
`circumstances of Divsalar having been cataloged and shelved, such that it
`would have been made available to one of ordinary skill exercising
`reasonable diligence. Id.
`However, paragraph 7 of the Fradenburgh Declaration states: “The
`library’s records reflect that this reference was made available to members
`of the public on ___ 1999-04-30________.” Paragraph 8 of the
`Fradenburgh Declaration states: “[If made-available date not available:]] [a]t
`the time of the acquisition of this reference, the library typically made newly
`acquired items available to the public with ___ days of acquisition.” There
`is no number filled in the blank before “days” and the paragraph begins with
`a double bracketed phase suggesting that it is an optional portion of a form.
`Petitioner argues that Divsalar is not an “obscure paper.” Tr. 45.
`Rather, it was an important paper to the field because it “proved that the IGE
`conjecture was true.” Id. As discussed below, there is evidence in the
`record that a significant portion of this “target” audience was actually aware
`of the Divsalar paper, indicating not only its availability, but its actual
`distribution.
`The Divsalar paper was co-authored by Robert McEliece, Ph.D., who
`is also a co-inventor of the patent at issue. Reply 15 (citing Ex. 1011). Dr.
`McEliece lists Divsalar as a “publication” in his C.V. Ex. 1075 ¶ 228.
`Further, David MacKay published several papers prior to the earliest
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`effective filing date of the ’781 Patent. Those papers cite to Divsalar. See,
`e.g., Ex. 1041, 2, 11 (citing Divsalar); Ex. 1042, 1, 3 (citing Divsalar); Ex.
`1060 ¶¶ 30–33.
`Finally, we note that Divsalar is listed as being of record among the
`“References Cited” in the ’781 Patent itself. It was not of record in the
`prosecution of its grandparent application, which issued as the ’710 Patent.8
`The following table summarizes evidence of record regarding
`Divsalar including citations to the Divsalar paper suggesting to us that
`Divsalar’s peers had actual knowledge of the paper and considered it in
`preparing their own work.
`Evidence
`Date
`April 29, 1999 Fradenburgh Declaration
`
`1999
`
`David MacKay, Gallager
`Codes – Recent Results
`(1999)(Ex. 1041, 2, 11);
`MacKay Decl., Ex. 1060
`¶ 30 (testifying that
`MacKay placed a copy of
`this paper on his website by
`July 16, 1999).
`
`Comment
`States “[t]he UT library’s
`records reflect that
`Divsalar was made
`available to the public on
`1999-04-30.”
`Cites to “Divsalar, D., Jin,
`H., and McEliece, R.J.,
`(1998) Coding theorems
`for 'turbo like' codes, In
`Proceedings of the 36th
`Allerton Conference on
`Communication,
`Control, and Computing,
`Sept. 1998, pp. 201-210,
`Monticello,
`Illinois. Allerton House.”
`Ex. 1041, 2, 11
`
`
`8 The Board understands that citation in an Information Disclosure
`Statement does not constitute an admission that the cited reference qualifies
`as prior art as of a particular date. Its mention here, however, is one more
`piece of circumstantial evidence which, taken with others, suggests public
`accessibility of the document. We weigh it accordingly.
`
`19
`
`
`
`
`
`Cites to “Divsalar, D., Jin,
`H., and McEliece, R. J.,
`(1998) Coding theorems
`for ‘turbo like’ codes.”
`Ex. 1042, 1, 3.
`
`
`
`Dr. Pfister’s paper
`presented at 1999 Allerton
`Conference cites to
`Divsalar presented at the
`previous year’s Allerton
`Conference. Ex. 1057, 1,
`11 (Ref. [4]).
`
`Cites “Divsalar et al.” (Ex.
`1031, 1 (Abstract)) and
`“DIVSALAR (D.), JIN (H.),
`MCELIECE (R.), Coding
`theorems for turbo-like
`codes, Jet Propulsion
`Laboratory, Pasadena,
`CA, (September 1998)”
`(id. at 10 (Reference [5]).
`
`
`
`1999
`
`IPR2015-00059
`Patent 7,916,781 B2
`David MacKay, Gallager
`1999
`Codes – Recent Results,
`Abstract (1999) (Ex. 1042,
`1, 3); MacKay Decl., Ex.
`1060 ¶ 31 (testifying that
`MacKay placed a copy of
`this abstract on websites on
`June 2, 1999 and that paper
`copies of the abstract with a
`link to his website were
`distributed at a conference
`in July 1999) .
`David MacKay Declaration
`(Ex. 1060) explains
`MacKay papers. Par 30–33
`Henry D. Pfister and Paul
`H. Siegel, The Serial
`Concatenation of Rate-1
`Codes Through Uniform
`Random Interleavers,
`Proceedings from the
`Thirty-Seventh Allerton
`Conference on
`Communication, Control,
`and Commuting, Sept. 22–
`24, 1999 (Ex. 1057, 1, 11)
`(cited at Pfister Decl., Ex.
`1010 ¶ 32 n.22).
`Audrey M. Viterbi &
`Andrew J. Viterbi, New
`results on serial
`concatenated and
`accumulated-convolutional
`turbo code performance, 54
`Ann. Telecomms., 173–182
`(1999). Ex. 1031 at 1, 10
`(cited at Pfister Decl., Ex.
`1010 ¶ 32 n.22).
`
`1999
`
`20
`
`
`
`
`
`IPR2015-00059
`Patent 7,916,781 B2
`Copyright
`CODING, COMMUNICATIONS
`20009
`AND BROADCASTING (2000)
`(Ex. 1043, 1 (showing
`copyright date), 9).
`
`
`
`File History of ’781 Patent
`(Ex. 1006) includes an IDS
`dated June 30, 2008 which
`lists reference BD.
`
`Cites to “Divsalar, D., Jin,
`H., and McEliece, R.. J.
`(1998) Coding theorems
`for 'turbo-like' codes. In
`Proceedings of the 36th
`Allerton Conference on
`Communication, Control,
`and Computing, Sept.
`1998, pp. 201-210,
`Monticello, Illinois.
`Allerton House.” Ex.
`1043, 9.
`Citing as “BD”: “Divsalar,
`D., et al., “Coding
`Theorems for ‘Turbo-
`Like’ Codes,”
`Proceedings of the 36th
`Annual Allerton
`Conference on
`Communication,
`Control, and Computing,
`Monticello, Illinois, pp.
`201–210, September
`1998.” Ex. 1006, 4.
`
`
`The various citations, in the table above, by others of skill in the error
`correction coding art demonstrate that they acknowledged the contributions
`of Divsalar and built upon them during the relevant time period.
`Based on the same named authors that appear in bibliographic
`citations in the 1998–1999 time frame, we find that the evidence of record
`supports that a relatively small community of artisans worked in error
`correction coding, several of whom referenced the Divsalar paper. Under
`
`9 The presence of the citation in a book copyrighted in 2000 suggests that the
`author of that portion of the book (here, David Mackay) would have
`received the article prior to the book’s publication.
`
`21
`
`
`
`
`
`IPR2015-00059
`Patent 7,916,781 B2
`these circumstances, we find that the Divsalar paper was published to the
`relevant community of skilled artisans well before the earliest effective
`filing date of the patent at issue.
`We determine, based on the totality of the evidence discussed above,
`that Divsalar is prior art with respect to the ’781 Patent. We conclude that
`the preponderance of evidence establishes that Divsalar is a printed
`publication available as prior art against the ’781 Patent as required by 35
`U.S.C. § 311(b).
`
`
`
`D. Challenge to Claims 1 and 2 based on Divsalar
`1. Claim 1
`a. Limitation [a]
`Petitioner argues that Divsalar describes limitation [a] because
`Divsalar’s Figure 3, reproduced below, describes an encoder for a (qN, N)
`repeat and accumulate code. The numbers above the input-output lines
`indicate the length of the corresponding block, and those below the lines
`indicate the weight of the block. Pet 13 (citing Ex. 1011, 7).
`
`
`Divsalar Fig. 3 shows an encoderfor a (qN, N) repeat and accumulate
`code. The numbers above the input-output lines indicate the length of the
`corresponding block, and those below the lines indicate the weight of the
`block. Ex. 1011, 7. Divsalar encodes information block of length N, which
`is a block of data obtained from a signal to be encoded. See Divsalar Fig. 3
`
`
`
`22
`
`
`
`
`
`IPR2015-00059
`Patent 7,916,781 B2
`and Ex. 1010 ¶ 142. Petitioner argues that the subject of Divsalar is the
`encoding and decoding of error-correcting codes, and it would be clear to a
`person having ordinary skill in the art that all block encoding methods
`necessarily perform this step. Id. ¶ 143.
`Patent Owner argues that Divsalar does not explicitly describe
`“receiving a block of data in the signal to be encoded.” PO Resp. 46. We
`do not find this argument