UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`Apple Inc.
`Petitioner
`
`v.
`
`California Institute of Technology
`Patent Owner
`____________________________________________
`
`Case Nos. IPR2017-00210, IPR2017-00211, IPR2017-00219, IPR2017-00297,
`IPR2017-00423, IPR2017-00700, IPR2017-00701, IPR2017-00728
`
`
`
`DECLARATION OF RICHARD GOLDENBERG IN SUPPORT OF
`UNOPPOSED MOTIONS TO SUBMIT REPLACEMENT EXHIBITS
`PURSUANT TO 37 C.F.R. § 42.104(c)
`
`
`
`
`
`ActiveUS 161096173v.1
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`1
`
`Apple vs. Caltech
`IPR2017-00701
`Apple 1125
`
`
`___________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`Apple Inc.
`Petitioner
`
`v.
`
`California Institute of Technology
`Patent Owner
`____________________________________________
`
`Case Nos. IPR2017-00210, IPR2017-00211, IPR2017-00219, IPR2017-00297,
`IPR2017-00423, IPR2017-00700, IPR2017-00701, IPR2017-00728
`
`
`
`DECLARATION OF RICHARD GOLDENBERG IN SUPPORT OF
`UNOPPOSED MOTIONS TO SUBMIT REPLACEMENT EXHIBITS
`PURSUANT TO 37 C.F.R. § 42.104(c)
`
`
`
`
`
`ActiveUS 161096173v.1
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`1
`
`Apple vs. Caltech
`IPR2017-00701
`Apple 1125
`
`
`
`1.
`
`I, Richard Goldenberg, am employed at WilmerHale and am lead
`
`counsel of record for Petitioner Apple Inc. in the above captioned inter partes
`
`review proceedings. I am an attorney duly admitted to practice before the United
`
`States Patent and Trademark Office. I supervised and assisted in preparation of the
`
`captioned inter partes review proceedings.
`
`2.
`
`This declaration is filed in support of Petitioner’s Unopposed Motions
`
`to Correct Clerical Errors in the captioned inter partes review proceedings. I
`
`understand that these motions will be filed to correct exhibits filed with the
`
`captioned inter partes review proceedings, which are directed to U.S. Patent No.
`
`7,116,710 (the “ʼ710 Patent”), U.S. Patent No. 7,916,781 (the “ʼ781 Patent”), and
`
`U.S. Patent No. 7,421,032 (the “ʼ032 Patent”) (collectively, the “ʼ710, ʼ781, and
`
`ʼ032 IPRs”).
`
`3.
`
`Petitioner inadvertently filed incorrect versions of the following
`
`exhibits in the captioned inter partes review proceedings:
`
`• Frey, B. J. and MacKay, D. J. C., “Irregular Turbocodes,” Proc.
`
`37th Allerton Conf. on Comm., Control and Computing,
`
`Monticello, Illinois, 1999 (the “Frey exhibit”).
`
`• D. Divsalar, H. Jin, and R. J. McEliece, “Coding theorems for
`
`‘turbo-like’ codes,” Proc. 36th Allerton Conf. on Comm., Control
`
`and Computing, Allerton, Illinois, 1998 (the “Divsalar exhibit”).
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`ActiveUS 161096173v.1
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`2
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`
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`• Declaration of Paul H. Siegel (the “Siegel Declaration exhibit”).
`
`4.
`
`The exhibit numbers for each of the Frey, Divsalar, and Siegel
`
`Declaration exhibits in the ʼ710, ʼ781, and ʼ032 IPRs are listed in the table below.
`
`Petitioner did not file the Siegel Declaration exhibit in the ʼ781 Patent IPRs.
`
`Exhibit Name
`
`IPR Number
`
`Patent
`Number
`
`Exhibit
`Number
`
`Frey
`
`Frey
`
`Frey
`
`Frey
`
`Frey
`
`Frey
`
`Frey
`
`Frey
`
`Siegel
`
`Siegel
`
`Siegel
`
`Siegel
`
`Siegel
`
`Siegel
`
`IPR2017-00210 7,116,710
`
`IPR2017-00211 7,116,710
`
`IPR2017-00219 7,116,710
`
`IPR2017-00297 7,916,781
`
`IPR2017-00423 7,916,781
`
`IPR2017-00700 7,421,032
`
`IPR2017-00701 7,421,032
`
`IPR2017-00728 7,421,032
`
`IPR2017-00210 7,116,710
`
`IPR2017-00211 7,116,710
`
`IPR2017-00219 7,116,710
`
`IPR2017-00700 7,421,032
`
`IPR2017-00701 7,421,032
`
`IPR2017-00728 7,421,032
`
`Divsalar
`
`IPR2017-00210 7,116,710
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`ActiveUS 161096173v.1
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`3
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`1002
`
`1102
`
`1202
`
`1010
`
`1110
`
`1010
`
`1110
`
`1210
`
`1020
`
`1120
`
`1220
`
`1023
`
`1123
`
`1223
`
`1003
`
`
`
`Divsalar
`
`Divsalar
`
`Divsalar
`
`Divsalar
`
`Divsalar
`
`Divsalar
`
`Divsalar
`
`IPR2017-00211 7,116,710
`
`IPR2017-00219 7,116,710
`
`IPR2017-00297 7,916,781
`
`IPR2017-00423 7,916,781
`
`IPR2017-00700 7,421,032
`
`IPR2017-00701 7,421,032
`
`IPR2017-00728 7,421,032
`
`1103
`
`1203
`
`1017
`
`1117
`
`1017
`
`1117
`
`1217
`
`
`
`5.
`
`During the process of filing petitions in the ʼ710, ʼ781, and ʼ032 IPRs,
`
`an associate at my firm, Jonathan E. Barbee, assisted me in the collection and
`
`uploading of the exhibits to each petition. In those IPR filings, Mr. Barbee
`
`directed legal staff to upload incorrect versions of the Frey exhibit and the Divsalar
`
`exhibit and omitted the “Exhibit 1” attached to the Siegel Declaration exhibit.
`
`6.
`
`For the Frey exhibit, being aware of the prior result in IPR2015-
`
`00067, I intended for a copy of the Frey reference to be filed that included a March
`
`20, 2000 date stamp from the Cornell University Library. During prior litigation
`
`with a different defendant, my firm obtained and produced to the Patent Owner
`
`over a year ago such a copy of the Frey reference, which bears the Bates Stamp
`
`HUGES00883604-83627 and bears a date stamp of March 20, 2000 from the
`
`Cornell University Library. My firm had several additional copies of the Frey
`
`reference in the firm’s document management database, including the
`
`ActiveUS 161096173v.1
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`
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`inadvertently-filed exhibits. Mr. Barbee selected the wrong document because the
`
`inadvertently-filed versions of the exhibit had been circulated for a different
`
`purpose. However, the text of the corrected Frey exhibit is identical to the text of
`
`the inadvertently-filed exhibits and will not affect the manner in which Frey
`
`teaches the claims as explained in the petitions filed in the ʼ710, ʼ781, and ʼ032
`
`IPRs.
`
`7.
`
`For the ʼ710 Patent IPRs (IPR2017-00210, -00211, and -00219) and
`
`the ʼ781 Patent IPRs (IPR2017-00297 and -00423), the corrected exhibits contain
`
`the following material, which the inadvertently-filed Frey exhibit lacks: a table of
`
`contents, a date stamp, and page numbering corresponding to the Table of Contents
`
`of the publication in which the Frey reference was published. The Table of
`
`Contents from that publication was filed as a separate exhibit with the petitions for
`
`the ʼ710 Patent IPRs as Ex. 1015, Ex. 1115, and Ex. 1215 to demonstrate when the
`
`Frey reference was available to the public—the Table of Contents in these exhibits
`
`bears a date stamp of March 20, 2000 from the Cornell University Library (i.e., the
`
`same date stamp present in the corrected Frey exhibit) and indicates that the first
`
`page of Frey is page 241. The pagination of the inadvertently-filed Frey exhibit
`
`does not match the pagination identified in the Table of Contents in Ex. 1015, Ex.
`
`1115, and Ex. 1215 because the inadvertently-filed Frey exhibit begins at page 1.
`
`In the corrected Frey exhibit, the first page of the exhibit is page 241, which
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`matches the pagination indicated in the Table of Contents of the publication in
`
`which the Frey reference was published, as shown in Ex. 1015, Ex. 1115, and Ex.
`
`1215.
`
`8.
`
`For the ʼ032 Patent IPRs (IPR2017-00700, -00701, and -00728), the
`
`inadvertently-filed Frey exhibit is identical to the corrected exhibit except that the
`
`inadvertently-filed exhibit bears a September 19, 2000 date stamp from the
`
`University of Michigan Library, and a September 25, 2000 date stamp from the
`
`University of Washington whereas the correct Frey exhibit bears a March 20, 2000
`
`date stamp from the Cornell University Library. In addition, the correct exhibit
`
`includes sequential page numbers beginning with page 1 to match the citations in
`
`the petitions in the ʼ032 Patent IPRs.
`
`9.
`
`For the Divsalar exhibit, Petitioner cited to the Divsalar exhibit in the
`
`petitions for the ʼ710, ʼ781, and ʼ032 IPRs using sequential page numbering that
`
`designated the first page of the reference as page 1, whereas the inadvertently-filed
`
`exhibit begins with page 201. Mr. Barbee directed legal staff to upload the
`
`Divsalar exhibit without adding sequential page numbers beginning with page 1
`
`below the original page numbers of the exhibit. The addition of the sequential
`
`page numbers was needed for the Divsalar exhibit to match the citations in the
`
`petitions for the ʼ710, ʼ781, and ʼ032 IPRs. The corrected Divsalar exhibit is
`
`identical to the inadvertently-filed exhibit except for the addition of the sequential
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`ActiveUS 161096173v.1
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`
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`page numbers and will not affect the substance of the petitions filed in the ʼ710,
`
`ʼ781, and ʼ032 IPRs.
`
`10. For the Siegel Declaration exhibit, “Exhibit 1” to the Siegel
`
`Declaration was not attached before Mr. Barbee directed legal staff to upload the
`
`inadvertently-filed exhibit in the ʼ710 Patent IPRs and ʼ032 Patent IPRs. The
`
`Siegel Declaration and “Exhibit 1” to the declaration were sent by Professor Paul
`
`H. Siegel to my firm as attachments in separate emails. Mr. Barbee overlooked the
`
`separate email attaching “Exhibit 1” while preparing the Siegel Declaration for
`
`filing. The corrected Siegel Declaration exhibit is identical to the inadvertently-
`
`filed exhibit except for the addition of “Exhibit 1” and will not affect the substance
`
`of the petitions filed in the ʼ710 Patent IPRs and ʼ032 Patent IPRs because that
`
`Exhibit 1 to the Siegel Declaration is identical to a separately filed exhibit, i.e.,
`
`Exs. 1005, 1105, and 1205 in the ’710 IPRs and Exs. 1022, 1122, and 1222 in the
`
`’032 IPRs.
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`11. All statements in this declaration are made under penalty of perjury
`
`and are true and correct to the best of my knowledge.
`
`Dated: February 27, 2017
`
`
`
`Respectfully Submitted,
`
`/Richard Goldenberg/
`Richard Goldenberg
`Registration No. 38,895
`WILMER CUTLER PICKERING
`HALE AND DORR LLP
`60 State Street
`Boston MA 02109
`Tel: (617) 526-6548
`Fax: (617) 526-5000
`
`Attorney for Petitioner
`
`
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`ActiveUS 161096173v.1
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