Declaration of Brendan Frey, Ph.D
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Apple Inc.,
`Petitioner
`
`v.
`
`California Institute of Technology,
`Patent Owner.
`
`DECLARATION OF BRENDAN FREY, PH.D.
`
`I, Brendan Frey, Ph.D., declare as follows:
`1.(cid:1) My name is Brendan Frey
`
`2.(cid:1)
`
`I received a B.Sc. with Honors in Electrical Engineering from the
`
`University of Calgary in 1990, a M.Sc. in Electrical and Computer Engineering
`
`from the University of Manitoba in 1993, and a Ph.D. in Electrical and Computer
`
`Engineering from the University of Toronto in 1997. Since July 2001, I have been
`
`at the University of Toronto, where I am a Professor of Electrical and Computer
`
`Engineering and Computer Science. In 2014, I founded Deep Genomics and am
`
`currently its CEO.
`
`3.(cid:1)
`
`During my career I have conducted research in the areas of graphical
`
`models, error-correcting coding, machine learning, genome biology and computer
`
`1
`
`(cid:36)(cid:83)(cid:83)(cid:79)(cid:72)(cid:3)(cid:89)(cid:86)(cid:17)(cid:3)(cid:38)(cid:68)(cid:79)(cid:87)(cid:72)(cid:70)(cid:75)(cid:3)
`(cid:44)(cid:51)(cid:53)(cid:21)(cid:19)(cid:20)(cid:26)(cid:16)(cid:19)(cid:19)(cid:26)(cid:19)(cid:20)(cid:3)
`(cid:36)(cid:83)(cid:83)(cid:79)(cid:72)(cid:3)(cid:20)(cid:20)(cid:22)(cid:24)
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Apple Inc.,
`Petitioner
`
`v.
`
`California Institute of Technology,
`Patent Owner.
`
`DECLARATION OF BRENDAN FREY, PH.D.
`
`I, Brendan Frey, Ph.D., declare as follows:
`1.(cid:1) My name is Brendan Frey
`
`2.(cid:1)
`
`I received a B.Sc. with Honors in Electrical Engineering from the
`
`University of Calgary in 1990, a M.Sc. in Electrical and Computer Engineering
`
`from the University of Manitoba in 1993, and a Ph.D. in Electrical and Computer
`
`Engineering from the University of Toronto in 1997. Since July 2001, I have been
`
`at the University of Toronto, where I am a Professor of Electrical and Computer
`
`Engineering and Computer Science. In 2014, I founded Deep Genomics and am
`
`currently its CEO.
`
`3.(cid:1)
`
`During my career I have conducted research in the areas of graphical
`
`models, error-correcting coding, machine learning, genome biology and computer
`
`1
`
`(cid:36)(cid:83)(cid:83)(cid:79)(cid:72)(cid:3)(cid:89)(cid:86)(cid:17)(cid:3)(cid:38)(cid:68)(cid:79)(cid:87)(cid:72)(cid:70)(cid:75)(cid:3)
`(cid:44)(cid:51)(cid:53)(cid:21)(cid:19)(cid:20)(cid:26)(cid:16)(cid:19)(cid:19)(cid:26)(cid:19)(cid:20)(cid:3)
`(cid:36)(cid:83)(cid:83)(cid:79)(cid:72)(cid:3)(cid:20)(cid:20)(cid:22)(cid:24)
`
`
`
`Declaration of Brendan Frey, Ph.D
`
`vision. I have authored more than 200 publications and am named as an inventor
`
`on at least nine patents issued by the U.S. Patent and Trademark Office.
`
`4.(cid:1)
`
`I have received a number of honors and awards for the research I have
`
`conducted. In 2008, I was named a Fellow of the Institute for Electrical and
`
`Electronic Engineers (IEEE), an honor given to a person with an “extraordinary
`
`record or accomplishments” in the field of electrical engineering. In 2009, I was
`
`named a Fellow of the American Association for the Advancement of Science
`
`(AAAS), an honor that recognizes “efforts on behalf of the advancement of science
`
`or its applications which are scientifically or socially distinguished.” In 2015, I was
`
`elected as a Fellow of the Royal Society of Canada, the most distinguished
`
`association of scientists and engineers in Canada.
`
`5.(cid:1)
`
`In 2009, I was awarded a Steacie Fellowship for my work on the
`
`theory and implementation of artificial and natural mechanisms for inferring
`
`patterns from data. The Steacie Fellowship is awarded by the Natural Sciences and
`
`Engineering Research Council of Canada (NSERC) to “outstanding and highly
`
`promising scientists and engineers” who are faculty members of Canadian
`
`universities. In 2011, I received the NSERC’s John C. Polanyi Award, in
`
`recognition of my research on inferring genetic codes embedded in DNA that
`
`direct activities within cells.
`
`2
`
`
`
`Declaration of Brendan Frey, Ph.D
`
`6.(cid:1)
`
`Throughout my career, I have received funding from various
`
`governmental agencies to support my research, including the Natural Sciences and
`
`Engineering Research Council of Canada, the Canadian Institutes of Health
`
`Research, and the Canadian Institute for Advanced Research.
`
`7.(cid:1)
`
`I have authored a book entitled “Graphical Models for Machine
`
`Learning and Digital Communication.” In addition, I have authored or co-authored
`
`nearly 181 articles in peer-reviewed journals, conference proceedings, texts,
`
`industry trade publications, and monographs.
`
`8.(cid:1)
`
`I have reviewed the specification and claims of U.S. Patent No.
`
`7,421,032 (the “’032 patent”) and U.S. Patent No. 7,916,781 (the “’781 patent”). I
`
`have been informed that these patents claim priority to a provisional application
`
`filed on May 18, 2000, and to U.S. application Ser. No. 09/922,852, filed on Aug.
`
`18, 2000.
`
`9.(cid:1)
`
`I was an active contributor and collaborator in the community that
`
`included some of the inventors of the ’710 patent and the ’032; ’781; and ’833
`
`patents, which descend from the ’710 patent, around the time of the alleged
`
`invention. In particular, I attended talks given by Dr. Robert McEliece and Dr.
`
`McEliece attended talks that I presented around the time of the alleged invention.
`
`These talks included the 1998 and 1999 Allerton Conferences held by the
`
`University of Illinois Urbana-Champaign in Allerton, Illinois, as well as the 2000
`
`3
`
`
`
`Declaration of Brendan Frey, Ph.D
`
`Brest 2nd International Symposium on Turbocodes and Related Topics and the
`
`2000 Sorrento ISIT conferences. Dr. McEliece, Dr. MacKay, and I attended and
`
`made presentations at the 1999 Institutive for Mathematics and its Applications
`
`(IMA) 1999 Summer Program: Codes, Systems and Graphical Models, which was
`
`held at the University of Minnesota on August 2-13, 1999.
`
`10.(cid:1)
`
`I am being compensated at my normal consulting rate of $950 per
`
`hour for my work.
`
`11.(cid:1) My compensation is not dependent on and in no way affects the
`
`substance of my statements in this Declaration.
`
`12.(cid:1)
`
`I have no financial interest in Petitioners. I similarly have no financial
`
`interest in the ’710 patent.
`
`13.(cid:1)
`
`I have reviewed Exhibit 1002 of IPR2017-210 and Exhibit 1202 of
`
`IPR2017-219. Those exhibits are true, complete and correct copies of a paper I
`
`drafted that I presented at the 1999 Allerton Conference on Communications,
`
`Control and Computing, and Computing in Allerton, Illinois (“1999 Allerton
`
`Conference”) in September 1999, and which was published in the subsequent
`
`conference proceedings.
`
`14.(cid:1) Beginning in 1998, I collaborated with Dr. David MacKay to show
`
`that turbocodes could benefit from being made irregular codes in a similar way that
`
`Michael Luby, Michael Mitzenmacher, M. Amin Shokrollahi, Daniel A. Spielman,
`
`4
`
`
`
`Declaration of Brendan Frey, Ph.D
`
`and others had adapted LDPC codes to be “irregular.” I used software that I had
`
`written to simulate and test various irregular turbocodes.
`
`15.(cid:1) The result of my collaboration with Dr. MacKay was the presentation
`
`at the 1999 Allerton Conference. The 1999 Allerton Conference was held
`
`September 22-24, 1999. The 1999 Allerton Conference was open to the public for
`
`attendance. Any person who wanted to attend and was willing to pay the
`
`attendance fee could attend the 1999 Allerton Conference. The 1999 Allerton
`
`Conference was considered one of two primary conferences on the topic of
`
`iterative decoding during the time, and many key people from the field attended
`
`and many more monitored what was presented there. The 1999 Allerton
`
`conference was publicized and those who were interested in topics of iterative
`
`decoding were aware of the conference. After the conference, each conference
`
`participant was sent a copy of the Conference Proceedings.
`
`16.(cid:1)
`
`I presented a series of slides on my work to show how turbocodes
`
`could be made irregular and the benefits of making the turbocodes irregular. This
`
`presentation was entitled “Irregular Turbocodes” and I believe I presented on the
`
`afternoon of the first day of the conference on September 22, 1999.
`
`17.(cid:1) After the 1999 Allerton conference, Dr. MacKay and I submitted a
`
`paper for publication in the Proceeding of the Thirty-Seventh Annual Allerton
`
`Conference on Communications, Control and Computing (“37th Allerton
`
`5
`
`
`
`Declaration of Brendan Frey, Ph.D
`
`Proceedings”). These submissions were standard and required for anyone who
`
`presented at the Allerton Conference. Exhibit 1010 of IPR2017-700, Exhibit 1110
`
`of IPR2017-701, Exhibit 1210 of IPR2017-728, Exhibit 1010 of IPR2017-297, and
`
`Exhibit 1110 of IPR2017-423 are true, complete and correct copies of the paper we
`
`submitted for publication. Dr. MacKay and I completed the final draft of the paper
`
`by September 29, 1999 and we submitted the paper for publication within a couple
`
`of weeks of that. The paper was included in the 37th Allerton Proceedings, which
`
`were sent to each conference participant after the conference. My recollection is
`
`that I received my copy of the proceedings shortly after the Christmas break, in
`
`January or February of 2000.
`
`18.(cid:1) The “Irregular Turbocodes” paper as shown in Exhibit 1002 of
`
`IPR2017-210 and Exhibit 1202 of IPR2017-219 was publicly available from Dr.
`
`MacKay’s websites by October 1999 – the month following my presentation. Dr.
`
`MacKay was extremely prompt in posting all papers on his website well in
`
`advance of publication and immediately upon completion or submission for
`
`publication, and that was the case with our “Irregular Turbocodes” paper. Like the
`
`talk, the paper posted to his website was also entitled “Irregular Turbocodes” and
`
`contained the same figures presented at the 1999 Allerton Conference. It was in all
`
`respects identical to the version I submitted for publication in the 37th Allerton
`
`Proceedings. The 37th Allerton Proceedings including my and Dr. MacKay’s
`
`6
`
`
`
`Declaration of Brendan Frey, Ph.D
`
`paper entitled “Irregular Turbocodes” (Exhibit 1010 of IPR2017-700, Exhibit 1110
`
`of IPR2017-701, Exhibit 1210 of IPR2017-728, Exhibit 1010 of IPR2017-297, and
`
`Exhibit 1110 of IPR2017-423) were also independently published in the
`
`Conference Proceedings by no later than February 2000.
`
`19.(cid:1) The publication of our “Irregular Turbocodes” paper (Exhibit 1010 of
`
`IPR2017-700, Exhibit 1110 of IPR2017-701, Exhibit 1210 of IPR2017-728,
`
`Exhibit 1010 of IPR2017-297, and Exhibit 1110 of IPR2017-423) on Dr.
`
`MacKay’s website is further confirmed by my email correspondence with Dr.
`
`Dariush Divsalar at the Jet Propulsion Laboratory about this paper on December 8,
`
`1999. Appendix A, attached hereto, is a reproduction of this December 8, 1999
`
`email. In the email, I asked Dr. Divsalar whether he had reviewed my Allerton
`
`paper (now marked Exhibit 1010 of IPR2017-700, Exhibit 1110 of IPR2017-701,
`
`Exhibit 1210 of IPR2017-728, Exhibit 1010 of IPR2017-297, and Exhibit 1110 of
`
`IPR2017-423). This confirms to me that “Irregular Turbocodes” was publicly
`
`available by at least December 8, 1999, and that anyone interested could have
`
`obtained it – including from Dr. MacKay’s website.
`
`20.(cid:1)
`
`I declare that all statements made herein of my own knowledge are
`
`true and that all statements made on information and belief are believed to be true;
`
`and further that these statements were made with the full knowledge that willful
`
`7
`
`
`
`Declaration of Brendan Frey, Ph.D
`
`false statements and the like so made are punishable by fine or imprisonment, or
`
`both, under Section 1001 of Title 18 of the United States code.
`
`
`
`8
`
`
`
`Dated:
`
`August 25, 2017
`
`
`
`Declaration of Brendan Frey, Ph.D
`
`___________________________
`Brendan Frey, Ph.D.
`Toronto, Ontario, Canada
`
`9
`
`
`
`APPENDIX A
`
`APPENDIX A
`
`(cid:1)
`
`10
`
`
`
`CALTECHfifl3624621
`
`From:Brendan Frey
`Sent:Wed 12ia8f1999
`To:cDariush.Diysalar@jpl.nasa.goy:
`Cc:sfrey@dendrite.uwaterloo.ca}
`Bcc:
`
`Subject:
`
`Hi, Dariush.
`
`I'd like to get back to work on the irregular turbocodes and win some
`world records. Have you had a chance to look through the Allerton
`paper? Do you think JPL would be interested in irregular turbocodes.
`Have you heard back from Fabrizio about
`the possibility of me doing
`some consulting work at JPL?
`
`Regardless, it would interesting to extend the work that you and Bob
`have done to the case of irregular turbocodes.
`
`on another subject. are you planning to submit a paper to the IEEE
`trans IT special issue, ”Codes on Graphs and Iteratiye Algorithms”?
`
`Brendan.
`
`PS: What's the latest on what went wrong with the Mars lander? I hope
`it isn't being blamed on the communication system...
`
`11
`11
`
`
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
