`
`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-
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
