`Apple v. California Institute of Technology
`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
`PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. § 42.123(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`
`I.
`
`INTRODUCTION
`On September 18, 2017, the Board issued an order granting Petitioner’s
`
`request to file this motion. Paper 19. Petitioner respectfully moves to submit
`
`Exhibits 1127–1141 as supplemental information under 37 C.F.R. § 42.123(a).
`
`The Board instituted inter partes review of claims 1 and 4–10 of U.S. Patent
`
`No. 7,421,032 (the “’032 patent”) on August 8, 2017 as obvious over Divsalar (Ex.
`
`1117) in combination with other prior art references. Petitioner relied on Frey (Ex.
`
`1110) to demonstrate a motivation to combine the prior art. Patent Owner
`
`challenged the prior art status, including that of Divsalar, in its Preliminary
`
`Response. Petitioner now seeks permission to file supplemental information to
`
`rebut Patent Owner’s challenges and establish the prior art status of Divsalar and
`
`Frey. The supplemental information Petitioner requests authorization to submit
`
`takes the form of fifteen exhibits—consisting of affidavits, declarations, deposition
`
`transcripts, library records, a purchase order, shipping information, and other
`
`publications—that establish (1) the public accessibility of Divsalar no later than
`
`June 3, 1999, and (2) the public accessibility of Frey no later than March 20, 2000.
`
`Petitioner served the supplemental information on Patent Owner on July 14,
`
`2017 in IPR Nos. 2017-00210 and 2017-00219 directed to a related patent, and then
`
`again on August 28, 2017 in the present case and two related cases, IPR2017-00700
`
`and IPR2017-00728. Petitioner asked Patent Owner on August 28, 2017 whether it
`
`- 1 -
`
`
`
`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`intended to oppose a motion to submit the supplemental information. Patent Owner,
`
`however, did not respond regarding its position until September 6, 2017. Petitioner
`
`then promptly submitted requests for authorization to file supplemental information
`
`for all three proceedings on September 7, 2017. Patent Owner will have had over
`
`three months to consider the supplemental information before it must file its Patent
`
`Owner’s response. As a result, Petitioner’s submission of supplemental information
`
`will neither prejudice Patent Owner nor impact the Board’s ability to complete the
`
`inter partes review in a timely manner. Petitioner’s motion should therefore be
`
`granted.
`
`II. ARGUMENT
`A. Legal Standard
`Under 37 C.F.R. § 42.123(a), a party may submit supplemental information if:
`
`(1) its “request for the authorization to file a motion to submit supplemental
`
`information is made within one month of the date the trial is instituted;” and
`
`(2) “[t]he supplemental information [is] relevant to a claim for which the trial has
`
`been instituted.”
`
`The Board has discretion to grant a motion to submit supplemental
`
`information. South-Tek Sys., LLC v. Eng’rd Corrosion Solutions, LLC,
`
`No. IPR2016-01351, 2017 WL 2609329, at *1 (PTAB June 15, 2017). In exercising
`
`its discretion, the Board’s “guiding principle . . . is to ensure efficient administration
`
`- 2 -
`
`
`
`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`of the Office and the ability of the Office to complete IPR proceedings in a timely
`
`manner.” Id. (internal quotation marks and citation omitted); see also 37 C.F.R.
`
`§ 42.1(b) (requiring the Board to construe its rules “to secure the just, speedy, and
`
`inexpensive resolution of every proceeding”).
`
`It is Petitioner’s burden to prove it is entitled to the requested relief. 37 C.F.R.
`
`§ 42.20(c).
`
`B.
`Petitioner Is Entitled To Relief Under 37 C.F.R. § 42.123(a).
`Petitioner should be permitted to submit Exhibits 1127–1141 as supplemental
`
`information pursuant to 37 C.F.R. § 42.123(a). Petitioner requested authorization to
`
`submit its motion on September 7, 2017, less than one month after the Board
`
`instituted inter partes review. See 37 C.F.R. § 42.123(a)(1). In response to that
`
`request, the Board held a conference call on September 14, 2017.
`
`Further, each exhibit supports the prior art status of Divsalar and/or Frey—the
`
`primary piece of prior art upon which the Board instituted inter partes review and
`
`prior art showing a motivation to combine the prior art—and are therefore “relevant
`
`to a claim for which the [inter partes review] has been instituted.” 37 C.F.R.
`
`§ 42.123(a)(2); see South-Tek Sys., 2017 WL 2609329, at *2 (“Based on the above
`
`analysis, we determine that Exhibits 1028 and 1029 are relevant to this proceeding.
`
`They provide a more complete record of the public availability of the EPRI
`
`reference.”); Palo Alto Networks, Inc. v. Juniper Networks, Inc., No.
`
`- 3 -
`
`
`
`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`IPR2013-00369, at 3 (PTAB Feb. 5, 2014) (Paper 37) (“Evidence that allegedly
`
`confirms the public accessibility of references that serve as the basis of the grounds
`
`of unpatentability authorized in this proceeding is relevant to the claims . . . for
`
`which this trial was instituted.”).
`
`Patent Owner challenged the prior art status, including that of Divsalar, in its
`
`Preliminary Response. See Paper 13 at 5, fn. 3. As detailed below, Exhibits
`
`1127–1141 counter Patent Owner’s argument and establish the public accessibility
`
`of Divsalar no later than June 3, 1999 and Frey no later than March 20, 2000:
`
`1.
`
`Library Records and Related Declarations. Exhibits 1127–1131
`
`establish the dates by which Divsalar and Frey were published and/or publicly
`
`available at certain libraries.
`
` Exhibits 1127 and 1128 are library records from the Jet Propulsion Laboratory1
`
`indicating that the 37th Annual Allerton Conference Proceedings—in which
`
`Frey appeared—was published in 1999.
`
` Exhibit 1129 is a library record indicating that the 36th Annual Allerton
`
`Conference Proceedings—in which Divsalar appeared—was published by June
`
`
`1 Jet Propulsion Laboratory is a division of Patent Owner. See JET PROPULSION LAB
`
`| CALTECH, http://www.caltech.edu/content/jet-propulsion-laboratory (last visited
`
`Aug. 4, 2017).
`
`- 4 -
`
`
`
`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`
`3, 1999.
`
` Exhibit 1130 is the July 14, 2017, declaration of library expert Theodore A. Fons,
`
`which explains how to interpret the above library records (i.e., Exhibits
`
`1127–1129) and explains why they indicate that (1) Frey was published in 1999
`
`and (2) Divsalar was published by June 3, 1999. Ex. 1130 at ¶¶ 20, 27.
`
` Exhibit 1131 is the affidavit of Pamela Stansbury, an employee in the Original
`
`Cataloging Unit of the Cornell University Library. Ex. 1131 at ¶ 1.
`
`Ms. Stansbury states that Frey “w[as] publicly available at the Cornell University
`
`Library as of March 20, 2000.” Id. at ¶ 4.
`
`2.
`
`36th and 37th Allerton Conferences. Exhibits 1132–1136 establish the
`
`timelines associated with the 36th and 37th Allerton Conferences—at which
`
`Divsalar and Frey were presented—and the subsequent publication of the
`
`conference proceedings—in which Divsalar and Frey were published.
`
` Exhibits 1132, 1133, and 1134 are affidavits from Dr. Bruce Hajek, Dr. Tamer
`
`Basar, and Dr. Ramavarapu Sreenivas. Dr. Hajek is a six-time co-chair of the
`
`Allerton Conference, including the 36th Allerton Conference (at which Divsalar
`
`was presented) and the 37th Allerton Conference (at which Frey was presented),
`
`Ex. 1132 at ¶ 5; Dr. Basar is a six-time co-chair of the Allerton Conference,
`
`including the 36th Allerton Conference (at which Divsalar was presented),
`
`Ex. 1133 at ¶ 5; Dr. Sreenivas is a two-time co-chair of the Allerton Conference,
`
`- 5 -
`
`
`
`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`including the 37th Allerton Conference (at which Frey was presented), Ex. 1134
`
`at ¶ 5. Each confirms that (1) the Allerton Conference was well known to those
`
`of skill in the art, well attended by those of skill in the art, and open to the public
`
`for a fee, Ex. 1132 at ¶ 7, Ex. 1133 at ¶ 7, Ex. 1134 at ¶ 7; and (2) copies of the
`
`Allerton Conference Proceedings would have been shipped to conference
`
`attendees no later than the February following the conference—i.e., February
`
`1999 for the 36th Allerton Conference Proceedings in which Divsalar appeared
`
`and February 2000 for the 37th Allerton Conference Proceedings in which Frey
`
`appeared, Ex. 1132 at ¶ 9, Ex. 1133 at ¶ 9, Ex. 1134 at ¶ 9. Drs. Hajek, Basar, and
`
`Sreenivas attach to their affidavits a purchase order for the 37th Allerton
`
`Conference Proceedings dated December 8, 1999.2 Each states that the
`
`Proceedings would have shipped approximately ten weeks after the date of the
`
`purchase order—i.e., on or around February 16, 2000. Ex. 1132 at ¶ 12, Ex. 1133
`
`at ¶ 12, Ex. 1134 at ¶ 12. Dr. Basar further states that “it is quite likely that [he]
`
`received [his] copy of the Conference Proceedings for the 36th Annual Allerton
`
`Conference [which includes Divsalar] in February 1999, and [he] received [his]
`
`copy of the Conference Proceedings for the 37th Annual Allerton Conference
`
`[which includes Frey] in February 2000.” Ex. 1133 at ¶ 9.
`
`
`2 The purchase order is also submitted as Exhibit 1137.
`
`- 6 -
`
`
`
`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`
` Exhibit 1135 is the July 14, 2017, declaration Dr. Brendan Frey, co-author of the
`
`Frey reference. Dr. Frey confirms that (1) he presented the work described in
`
`Frey at the 37th Allerton Conference—a public conference—on September 22,
`
`1999, Ex. 1135 at ¶ 16; (2) Frey was publicly available on the website of
`
`Dr. Frey’s co-author, Dr. David MacKay, by October 1999, id. at ¶ 18; and
`
`(3) Frey was published in the 37th Allerton Conference Proceedings, which Dr.
`
`Frey received in January or February 2000, id. at ¶ 17.
`
` Exhibit 1136 is a screen capture of an archived version of the website for the 37th
`
`Annual Allerton Conference—at which Frey was presented—dated September 9,
`
`1999. The website states that copies of “[f]ull camera-ready versions of accepted
`
`papers [e.g., Frey] will be due the last day of the Conference”—i.e., September
`
`24, 1999.
`
`3.
`
`37th Allerton Conference Proceedings. Exhibits 1137–1138 establish
`
`the dates by which the 37th Allerton Conference Proceedings were ordered and
`
`shipped.
`
` Exhibit 1137 is a purchase order for the 37th Allerton Conference Proceedings
`
`dated December 8, 1999.
`
` Exhibit 1138 is a bill of lading for the 37th Annual Allerton Conference
`
`Proceedings with a ship date of February 21, 2000.
`
`4. Witness Testimony. Exhibits 1139–1140 are excerpts from deposition
`
`- 7 -
`
`
`
`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`transcripts of Patent Owner’s experts in the litigation The California Institute of
`
`Technology v. Hughes Communications, Inc., No. 2:13-cv-07245 (C.D. Cal.)
`
`(“Hughes Litigation”), in which the witnesses testified regarding the public
`
`availability of Divsalar and Frey.
`
` Exhibit 1139 is an excerpt from the deposition of Dr. Steven Wicker in the
`
`Hughes Litigation. Dr. Wicker testified that he was “reasonably sure that the
`
`irregular turbo codes paper, Frey ’99, was indeed published as part of the
`
`proceedings of the Allerton conference.” Ex. 1139 at 157:2–5.
`
` Exhibit 1140 is an excerpt from the deposition of Dr. Rüdiger Urbanke in the
`
`Hughes Litigation. Dr. Urbanke suggested that people in the field were looking
`
`at Divsalar in 1999. Ex. 1140 at 168:4–21.
`
`5.
`
`Publication. Exhibit 1141 is a copy of the textbook Forward Error
`
`Correction Based on Algebraic-Geometric Theory by Jafar A. Alzubi, Omar A.
`
`Alzubi, and Thomas M. Chen. The book describes Frey as presented “[i]n 1999,”
`
`Ex. 1141 at 36, and cites Frey as a 1999 publication, id. at 39.
`
`Because Exhibits 1127–1141 establish the public accessibility of Frey no later than
`
`March 20, 2000, and the public accessibility of Divsalar no later than June 3, 1999,
`
`the exhibits support the prior art status of those references. Each exhibit is therefore
`
`“relevant to a claim for which the [inter partes review] has been instituted.” 37
`
`C.F.R. § 42.123(a)(2).
`
`- 8 -
`
`
`
`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`The Board consistently grants motions to submit supplemental information
`
`under 37 C.F.R. § 42.123(a) where, as here, the supplemental information supports
`
`the prior art status of a reference upon which the Board instituted inter partes
`
`review. See, e.g., South-Tek Sys., 2017 WL 2609329; Smart Microwave Sensor
`
`GmbH v. Wavetronix LLC, No. IPR2016-00488, 2016 WL 8969973 (PTAB Aug.
`
`26, 2016); Creston Elecs. Inc. v. Intuitive Building Controls, Inc.,
`
`No. IPR2015-01379 (PTAB Feb. 2, 2016) (Paper 27); Valeo N. Am., Inc. v. Magna
`
`Elecs., Inc., No. IPR2014-01204 (PTAB Apr. 10, 2015) (Paper 26); Palo Alto
`
`Networks, No. IPR2013-00369; see also TCL Corp. v. Telefonaktiebolaget LM
`
`Ericsson, Nos. IPR2015-01584, -01600, 2016 WL 8969226 (PTAB Aug. 11, 2016)
`
`(granting Petitioner’s motion to submit supplemental information to support prior
`
`art status of reference under stricter 37 C.F.R. § 42.123(b) standard); Biomarin
`
`Pharm. Inc. v. Genzyme Therapeutic Prods. Ltd. P’Ship, Nos. IPR2013-00534,
`
`-00537 (PTAB Jan. 7, 2015) (Paper 80) (same).
`
`C.
`
`Petitioner’s submission of Exhibits 1127–1141 will in no way
`prejudice Patent Owner or negatively impact the Board’s ability to
`complete the inter partes review in a timely manner.
`The Board exercises its discretion and grants motions to submit supplemental
`
`
`
`information under 37 C.F.R. § 42.123(a) where such action promotes “‘the just,
`
`speedy, and inexpensive resolution’ [of the] proceeding.” Creston Elecs., No.
`
`IPR2015-01379, at 3 (quoting 37 C.F.R. § 42.1(b)). This is just such an instance.
`
`- 9 -
`
`
`
`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`Petitioner submitted its Petition on January 20, 2017. It included copies of
`
`
`
`Frey and Divsalar as attachments to the Petition. See Exs. 1110, 1117. In view of a
`
`previous Board decision denying the prior art status of Frey,3 Petitioner also
`
`attached a date-stamped copy of the Table of Contents from the Proceedings of the
`
`Thirty-Seventh Annual Allerton Conference on Communication, Control, and
`
`Computing establishing the public accessibility of Frey no later than March 20,
`
`2000. See Ex. 1110. Petitioner had no reason to believe that any information
`
`beyond what was included in the Petition would be necessary to establish the prior
`
`art status of Frey and Divsalar.4 The need for the information Petitioner now seeks
`
`permission to submit did not become apparent until Patent Owner’s Preliminary
`
`Response, in which Patent Owner challenged the prior art status, including that of
`
`Divsalar. See Paper 13 at 5, fn. 3.
`
`
`
`Petitioner acted promptly to address Patent Owner’s arguments. On August
`
`28, 2017—only four business days after the Institution of Inter Partes Review
`
`
`3 Hughes Network Sys., LLC v. California Inst. of Tech., No. IPR2015-00067, at
`
`8–11 (PTAB Apr. 27, 2015).
`
`4 Indeed, the prior art status of Divsalar had already been confirmed in a prior Board
`
`decision. See Hughes Network Sys., LLC v. California Inst. of Tech.,
`
`No. IPR2015-00059, at 13–22 (PTAB Apr. 21, 2016) (Paper 42).
`
`- 10 -
`
`
`
`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`(Paper 14) and Patent Owner’s Notice of Objection to Evidence (Paper
`
`16)—Petitioner served Patent Owner with Exhibits 1127–1141 and asked Patent
`
`Owner to consent to the submission of these exhibits as supplemental information
`
`or, in the alternative, to meet and confer on the issue. Patent Owner did not respond.
`
`Petitioner emailed Patent Owner again on September 1 and September 6, 2017, but
`
`Patent Owner did not reply until September 6. Petitioner promptly requested
`
`authorization to file this motion on September 7, 2017.
`
`
`
`Petitioner’s submission of Exhibits 1127–1141 at this stage of the
`
`proceedings will not prejudice Patent Owner or impact the schedule of this inter
`
`partes review. See South-Tek Sys., 2017 WL 2609329, at *1. Patent Owner
`
`dedicated only a footnote of its twenty-four-page Preliminary Response to the prior
`
`art status of Divsalar. Paper 13 at 5, fn. 3. Moreover, Patent Owner received the
`
`supplemental information as early as July 14, 2017, when Petitioner served it on
`
`Patent Owner in the related IPR Nos. 2017-00210 and 2017-00219. Patent Owner
`
`will have had possession of Exhibits 1127–1141 for months before Patent Owner’s
`
`Response is due and before Patent Owner has taken any discovery in this
`
`proceeding. Patent Owner has had and will have ample opportunity to address the
`
`reasons it believes the claims of the ’032 patent are valid over Divsalar and other
`
`prior art in view of Frey, if any. As such, no change to the schedule is necessary, and
`
`- 11 -
`
`
`
`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`the Board can complete this inter partes review within the statutorily-mandated
`
`eighteen months.
`
`That Petitioner filed an Updated Exhibit List with replacement exhibits in this
`
`proceeding should have no impact on the Board’s analysis of this motion. See Paper
`
`10. As explained in Petitioner’s Unopposed Motion to Submit Replacement
`
`Exhibits, the replacement exhibits correct certain clerical errors. See Paper 11 at
`
`3–7. They were not supplemental information and they did not respond to Patent
`
`Owner’s challenge. Nor could they have. Patent Owner did not challenge the prior
`
`art status of Divsalar and Frey until May 9, 2017, over two months after Petitioner
`
`filed the replacement exhibits. Petitioner’s submission of its Updated Exhibit List
`
`is therefore irrelevant.
`
`III. CONCLUSION
`For the above reasons, Petitioner respectfully requests that the Board grant its
`
`Motion to Submit Supplemental Information Pursuant to 37 C.F.R. 42.123(a).
`
`Respectfully Submitted,
`
` /
`
` Michael Smith/
`Michael H. Smith (No. 71,190)
`
`
`
`
`
`Dated: September 22, 2017
`
`
`
`- 12 -
`
`
`
`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`CERTIFICATE OF SERVICE
`I hereby certify that on September 22, 2017, a true and correct copy of the
`
`foregoing PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
`
`INFORMATION PURSUANT TO 37 C.F.R. § 42.123(a) was served via electronic
`
`mail upon the following attorneys of record:
`
`Michael Rosato (mrosato@wsgr.com)
`Matthew Argenti (margenti@wsgr.com)
`Richard Torczon (rtorczon@wsgr.com)
`
`
`
`
`
`/Michael Smith/
`Michael H. Smith (No. 71,190)
`
`
`
`
`
`
`
`
`