U.S. Patent No. 7,421,032
`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 IPR2017-00728
`Patent 7,421,032
`_________________________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`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 IPR2017-00728
`Patent 7,421,032
`_________________________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 2
`
`ARGUMENT ................................................................................................... 2
`
`I.
`
`II.
`
`A.
`
`Caltech Fails to Overcome Petitioner’s Showing that the
`
`Challenged Claims are Obvious ............................................................ 2
`
`1.
`
`2.
`
`Ping in view of MacKay, Divsalar, and Luby97 ........................ 2
`
`Caltech Fails To Establish A Nexus Between Its Purported
`
`Objective Evidence Of Non-Obviousness And The
`
`Claimed Invention. .................................................................... 21
`
`B.
`
`Caltech Mischaracterizes the Testimony of Professor Davis. ............ 24
`
`III. CONCLUSION .............................................................................................. 28
`
`
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`I.
`
`INTRODUCTION
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`
`Caltech’s Patent Owner Response (“POR”) repeats arguments that the Board
`
`has already rejected and fails to rebut Petitioner’s showing that the challenged
`
`claims are unpatentable. First, Caltech mischaracterizes the teachings of the
`
`references. Second, Caltech has failed to demonstrate secondary considerations of
`
`non-obviousness. Finally, Caltech mischaracterizes the testimony of Professor
`
`Davis.
`
`II. ARGUMENT
`A. Caltech Fails to Overcome Petitioner’s Showing that the
`Challenged Claims are Obvious
`1.
`
`Ping in view of MacKay, Divsalar, and Luby97
`
`The Petition showed that Ping in view of MacKay, Divsalar, and Luby97
`
`renders claims 18-23 obvious. Caltech’s arguments about the combination are
`
`incorrect for at least the reasons below.
`
`i.
`
`Contrary to Caltech’s Argument, MacKay teaches
`that information bits appear in a variable number of
`subsets
`
`Caltech’s suggestion that it is unclear in MacKay whether a column of the
`
`parity check matrix corresponds to an information bit or a parity bit is incorrect.
`
`(POR, 17.) Caltech ignores MacKay’s actual disclosure. MacKay teaches profiles,
`
`e.g., 93y, that correspond to parity check matrices. (Ex. 1202, 1450.) Those
`
`matrices have uneven column weights. For example, as shown in MacKay’s Figure
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`2, in 93y matrices, most columns have weight three, but some columns have weight
`
`nine. MacKay also teaches that codes with such parity check matrices, i.e., matrices
`
`with uneven column weights, can outperform their regular counterparts. (Ex. 1265,
`
`¶¶20-24.)1
`
`Caltech only contends that the correspondence between information bits and
`
`the columns of a parity check matrix may be unclear in some of MacKay’s parity
`
`check matrices (e.g., profile 93y). Caltech does not (and cannot) dispute that this
`
`correspondence is perfectly clear in other disclosed matrices (e.g., profile 193y). In
`
`particular, in Figures 5 and 6, MacKay states that the first K columns (all columns to
`
`the left of the diagonal) correspond to information bits. (Ex. 1202, 1452 (“Bits t1 …
`
`tK are defined to be source bits.”).) As shown in profile 193y, some of these
`
`information bits correspond to columns with weight nine and others correspond to
`
`columns with weight three, i.e., some information bits appear in nine subsets and
`
`others appear in three subsets. MacKay’s Figures 5 and 6 thus clearly teach that
`
`information bits appear in a variable number of subsets. Using those weightings in
`
`
`
`1 After submitting his declaration, Dr. Davis relocated to Europe pursuant to a
`
`Fulbright Global Scholar Award. (Ex. 1273, ¶2.) As a result, he was unavailable to
`
`work on the Reply. (Id.) Petitioner’s Reply is instead supported by the Declaration
`
`of Dr. Frey.
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`Ping results in information bits appearing in variable numbers of subsets (i.e., either
`
`nine or three) as claimed. (Ex. 1265, ¶¶20-24.)
`
`ii.
`
`Even if MacKay’s Irregular Column Weights Could
`Be Limited As Caltech Contends, Its Argument Would
`Still Fail
`
`Caltech argues that MacKay’s columns with uneven weight could all
`
`correspond to parity bits such that the columns corresponding to information bits all
`
`had the same weight. (POR, 17.) By Caltech’s incorrect logic, that would result in
`
`MacKay – standing alone – failing to teach that information bits appear in a variable
`
`number of subsets. (Id.)
`
`Caltech’s argument is false for the reasons demonstrated in Part A(1)(i) above.
`
`But even if it were true, Caltech’s argument would still fail because it ignores the
`
`combination of MacKay’s column weight teaching with Ping’s unambiguous
`
`teaching that all columns in its Hd matrix represent information bits. (Ex. 1265,
`
`¶25.)
`
`The Petition showed, and the Board agreed, that a POSA would have been
`
`motivated to use MacKay’s uneven column weights in Ping’s Hd matrix (or outer
`
`coder) to improve the performance of Ping’s code. (Petition, 40; DI, 19-21.) Doing
`
`so would have resulted in information bits appearing in a variable number of subsets,
`
`which corresponds exactly to some information bits contributing to more parity bits
`
`than others. This is true even if all of MacKay’s uneven column weights
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`corresponded to parity bits. That is, applying MacKay’s fundamental
`
`teaching—that use of matrices with uneven column weights can outperform codes
`
`with evenly weighted matrices—to Ping’s Hd matrix causes information bits to
`
`appear in a variable number of subsets. Therefore, even if Caltech’s false premise
`
`were correct, and neither Ping nor MacKay alone teaches that information bits
`
`appear in a variable number of subsets, the combination of Ping in view of MacKay
`
`would teach that limitation and therefore render the claims obvious. (Ex. 1265,
`
`¶¶25-27.)
`
`Each column of Ping’s Hd matrix corresponds to an information bit. The
`
`weight of a column of the Hd matrix, i.e., the number of ones appearing in that
`
`column, equals the number of subsets in which the information bit appears (and
`
`correspondingly equals the number of parity bits to which the information bit
`
`contributes). Therefore, using MacKay’s uneven column weights in Ping’s Hd
`
`matrix would have resulted in some information bits appearing in more subsets than
`
`others as claimed. Caltech does not dispute this. Instead, Caltech merely addresses
`
`the disclosure of Ping alone and MacKay alone. (POR, 17-21.) Thus, Petitioner’s
`
`showing stands unrebutted. (Ex. 1265, ¶¶25-27.)
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`iii. Caltech fails to overcome Petitioner’s showing that a
`POSA would have been motivated to combine Ping
`and MacKay
`
`Caltech repeats the argument it made in its Preliminary Response (“POPR”)
`
`that Ping is already irregular and therefore a POSA would not have been motivated
`
`to use MacKay’s irregularity in Ping. (POR, 27-28; POPR, 14-18.) The Board
`
`correctly rejected this argument and should do so again for at least the reasons in the
`
`Petition and DI. (DI, 19-21.) (Ex. 1265, ¶¶27.)
`
`Caltech also argues that Ping is “even more irregular” than MacKay so, again,
`
`a POSA supposedly would not have been motivated to use MacKay’s irregularity in
`
`Ping. (POR, 30.) Caltech presents a contrived example of Ping’s parity check
`
`matrix that is neither discussed in Ping nor the Petition. (POR, 29-30.) Specifically,
`
`whereas Ping discloses a matrix in which t=4,2 Caltech’s example changes this
`
`variable to set t=9. In that case, half the columns in the parity check matrix would
`
`have weight 9. In the other half, all but one would have weight 2 and the one
`
`remaining column would have weight 1. (POR, 30.) The non-zero differences in
`
`column weights for this contrived matrix are either 7 or 8 (i.e., 9 minus 2 or 9 minus
`
`1). Dr. Mitzenmacher’s computation of “variance” is based solely on this contrived
`
`
`
`2 Ping refers to the number of 1s in a column as the “column weight” and uses the
`
`variable “t” to refer to it. (Petition, 32.)
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`matrix with t=9. (Ex. 2038, 330:10-18, 331:14-21; Ex. 1265, ¶32.) Caltech relies
`
`solely this same contrived t=9 matrix to incorrectly argue that Ping is more irregular
`
`than MacKay. (Ex. 1265, ¶¶28-29.)
`
`Ping does not state that t=9. Instead, in Ping’s disclosed matrix t=4. Half of
`
`Ping’s columns have weight 4 and, in the other half, all but one of the columns have
`
`weight 2 and the one remaining column has weight 1. In Ping’s disclosed matrix, the
`
`non-zero differences in column weights are thus either 2 or 3 (i.e., 4 minus 2 or 4
`
`minus 1). In MacKay’s matrices, where the weights are either 9 or 3, the non-zero
`
`difference between column weights is 6 (i.e., 9-3). Thus, the difference in column
`
`weights in MacKay’s matrix (6) is twice as large as any difference in the matrix Ping
`
`actually discloses, and is three times as large as the most common difference. Only
`
`by arbitrarily setting t=9 was Caltech able to contrive an example in which the
`
`difference in column weights in Ping would exceed the difference in column weights
`
`of MacKay. (Ex. 1265, ¶¶28-30.)
`
`Further, Caltech’s comparison of Ping’s H matrix to MacKay’s is improper.
`
`Ping teaches a parity matrix H, which is decomposed into “H = [Hp, Hd].” (Ex. 1203,
`
`38.) The proper comparison is between Ping’s Hd matrix (in which all columns have
`
`the same weight) and MacKay’s matrix. The Board already recognized this. (DI,
`
`19-21.) Even Caltech acknowledges that the other portion of Ping’s matrix, Hp, can
`
`have only a single form. (POR, 29.) Specifically, Hp corresponds to an accumulator,
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`which can be implemented simply and cheaply. A POSA would not have been
`
`motivated to modify Hp because, as Caltech notes, it has only a single form and
`
`because doing so would have complicated a simple encoder. A POSA would not
`
`have considered the use of an accumulator such as Hp to make codes irregular. In
`
`summary, a POSA who wanted to obtain the benefit of MacKay’s irregularity in
`
`Ping would have had only one option—to incorporate MacKay’s irregularity into Hd.
`
`Doing so would have been simple, and a POSA would have been motivated to do so
`
`to obtain the benefit of MacKay’s irregularity in Ping. (Ex. 1265, ¶¶27-30.)
`
`Caltech argues that the Ping, MacKay, and Divsalar references do not contain
`
`any Tanner graphs as claimed. (POR, 22-23.) Caltech is incorrect. As explained in
`
`the Petition, parity check matrices and Tanner graphs are interchangeable ways of
`
`representing the same code. (Petition, 18.) Caltech’s own expert concedes this.
`
`(Ex. 2038, 9:19-12:15.) (Ex. 1265, ¶31.)
`
`Ping and MacKay both describe their codes in terms of parity check matrices.
`
`Even assuming, as Caltech asserts, that none of Ping, MacKay, or Divsalar expressly
`
`shows a Tanner graph, a POSA would have understood that the codes disclosed by
`
`the references have corresponding Tanner graphs. Thus, Caltech’s assertion is
`
`irrelevant. The Petition explained in detail how the art teaches the claimed Tanner
`
`graph. (Petition, 54-64.) The drawings below show Tanner graphs for Ping’s and
`
`MacKay’s codes.
`
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
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`
`
`Ex. 1248
`
`Ex. 1249
`
`When questioned about these drawings, the only objection Dr. Mitzenmacher raised
`
`was that the random permutation is not entirely random and is instead constrained.
`
`(Ex. 2038, 426:11-428:2.) (Ex. 1265, ¶32.)
`
`The similarity of these Tanner graphs illustrates the similarity, and
`
`combinability, of Ping’s and MacKay’s codes. As shown, both Ping’s code and
`
`MacKay’s code connect message nodes (open circles on the left) to check nodes
`
`(grey circles on the right) via a random permutation. Ping’s coder includes the extra
`
`step shown at the right side of the Tanner graph, which corresponds to Ping’s
`
`accumulating Hp matrix, or outer coder. The left sides of the Tanner graphs are
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`similar, i.e., they both include message nodes and a random permutation. However,
`
`whereas Ping’s message nodes all have degree four (i.e., four edges intersect each
`
`node), MacKay’s do not, i.e., some nodes have degree three and others have degree
`
`nine. It would have been obvious for a POSA to use MacKay’s irregular degree
`
`profile in Ping by making the degree of Ping’s d nodes irregular. Making the degree
`
`of the d nodes in Ping’s Tanner graph uneven corresponds exactly to making the
`
`column weights of Hd uneven. (Ex. 1265, ¶33.)
`
`Caltech also argues that Ping’s Hd matrix does not correspond to an outer
`
`code and that Ping’s encoding is not performed in two steps. (POR, 36-37.) Caltech
`
`is incorrect. Ping discloses two stages of encoding. (Petition, 30-35.) Indeed, Ping
`
`explicitly states its H matrix is a combination of two sub-matrices, Hd and Hp, such
`
`that H = [Hp, Hd]. (Ex. 1203, 38.) Ping’s two-step encoding, as modified to use
`
`Divsalar’s repetition and MacKay’s irregularity, can be depicted graphically as
`
`shown below. (Petition, 41-48.)
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`Exhibit 1272
`
`(Ex. 1265, ¶¶33-35.)
`
`As shown, a repeater repeats incoming information bits irregularly and stores
`
`the irregularly repeated bits in a shift-register (e.g., bit i1 is repeated three times and
`
`bit i2 is repeated nine times). Other information bits are also repeated, e.g., such that
`
`each information bit is repeated either three or nine times. Once the information bits
`
`have all been repeated, XOR gates combine them to produce new combined bits,
`
`which are stored in the highlighted registers. In this example, each such bit equals
`
`the sum of two repeated information bits. This matches Ping’s example of a rate 1/3
`
`code, in which each new bit is the sum of exactly two information bits. The ones in
`
`each row of Hd determine which information bits are summed to produce a
`
`particular bit, e.g., with the rows of Hd corresponding to the XOR gates. (Ex. 1265,
`
`¶36.)
`
`Each bit of the shift-register drives only a single gate, which would have been
`
`an obvious choice both due to the ease of implementing repeating with Divsalar’s
`
`repeater and to avoid having any of the shift register outputs driving more inputs
`
`than it was capable of driving. Once the new combined bits have been produced,
`
`they are shifted into the inner coder, which is an accumulator, and which produces
`
`the final output parity bits. The recursive nature of Ping’s equations would have
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`encouraged a POSA to implement Ping as an outer coder followed by an inner coder
`
`as shown in Exhibit 1272.3 (Ex. 1265, ¶37.)
`
`MacKay’s irregularity in Exhibit 1272 is incorporated in Ping by having the
`
`repeater repeat the bits irregularly, e.g., repeating some bits three times and other
`
`bits nine times. This is how a POSA would have understood Ping’s encoder to work
`
`as well as an encoder for the combination of Ping, MacKay, and Divsalar. Ping’s Hd
`
`matrix represents an encoding and a POSA would have been motivated to use
`
`MacKay’s irregularity, or uneven weights, to obtain the benefits of MacKay’s
`
`improved performance in Ping. (Ex. 1265, ¶38.)
`
`Caltech incorrectly argues that Ping’s statements at page 38 regarding
`
`memory use teach away from such an implementation. But Ping’s statement about
`
`memory use relates to memory required to store the parity check matrix. This
`
`implementation does not use any memory to store Hd. Instead, the constraints
`
`imposed by Hd are reflected in the connections between the XOR gates and
`
`
`
`3 Exhibit 1271 depicts another way to incorporate MacKay’s irregularity in Ping.
`
`The implementation shown in Exhibit 1271 can be flexibly programmed, whereas
`
`the Exhibit 1272 implementation is less flexible but simpler. A POSA would have
`
`found either implementation obvious and would have selected the implementation
`
`suitable for the application.
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`shift-register. Also, no memory is used to store Hp because it is implemented as a
`
`simple accumulator. (Ex. 1265, ¶39.)
`
`Caltech also incorrectly argues that Ping teaches away from the combination
`
`with MacKay. (POR, 33-35.) As shown in Equation (3), Ping divides Hd into t
`
`sub-blocks. Ping randomly places ones within those sub-blocks such that each
`
`column of each sub-block contains a single one, which results in each column of Hd
`
`having t ones. In the combination of Ping and MacKay, instead of each column of
`
`Hd having the same number of ones, some columns contain more than others. But
`
`nothing about the combination with MacKay prevents the ones from still being
`
`distributed and randomly placed. For example, in the modification suggested in the
`
`Petition where some columns have weight nine and others have weight three, Hd can
`
`be divided into nine sub-blocks, such that the columns with weight nine have a one
`
`in every column of every sub-block and the columns with weight three have a one in
`
`only three of the sub-blocks. In both the original Ping and in the proposed
`
`combination, the structure of Hp is fixed. In the combination, Hd has uneven column
`
`weights. That is the point of the combination, and a POSA would have been
`
`motivated to make that change to obtain the benefit of MacKay. (Ex. 1265, ¶40.)
`
`Caltech also incorrectly complains that the Petition does not sufficiently
`
`describe how a POSA would have modified Ping in view of MacKay or that a POSA
`
`would have had a reasonable expectation of success in doing so. (POR, 42-51.) In
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`fact, the Petition explains that a straightforward modification of Ping’s Hd matrix
`
`would set “some columns to weight 9 and others to weight 3, as taught by MacKay.”
`
`(Petition, 44.) A POSA would have needed no more specificity to attempt to use
`
`MacKay’s irregularity in Ping. As conceded in Caltech’s POR, rigorous
`
`mathematical analysis of codes is difficult, and, as a result, POSAs routinely develop
`
`codes by experimentation. (POR, 4-5.) For a POSA, running experimental tests on
`
`a version of Ping that incorporated MacKay’s irregularity would have been routine.
`
`Indeed, for a POSA who had implemented Ping’s code, the modifications suggested
`
`by MacKay would have been straightforward and would have taken very little time
`
`to implement. Also, MacKay’s teaching that the best Gallager codes are irregular
`
`would have encouraged a POSA to perform such tests. (Ex. 1265, ¶41.)
`
`The diagram below shows the results of tests comparing Ping’s original code
`
`against two versions where Ping’s Hd matrix was modified to use MacKay’s
`
`irregularity as discussed above. The vertical axis shows bit error rate (BER), while
`
`the horizontal axis shows signal to noise ratio (Eb/No (dB)).
`
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`U.S. Patent No. 7,421,032
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`Results Showing Improved BER for Irregular Codes of Ping + MacKay as
`compared with Regular Code of Ping Alone
`
`
`(Ex. 1268; 1265, ¶¶42-56.)
`
`The right-most trace on this graph plots the results from Ping’s original code.
`
`The two plots on the left show the results from modifying Ping’s Hd matrix to
`
`incorporate MacKay’s irregularity. Both versions of Ping that incorporate
`
`MacKay’s irregularity substantially outperform Ping’s original code. Such results
`
`confirm that a POSA would have been motivated to use MacKay’s uneven column
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`U.S. Patent No. 7,421,032
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`weights in Ping’s Hd matrix, and that a POSA would have had a reasonable
`
`expectation of success when doing so. (Ex. 1268; 1265, ¶¶42-56.)
`
`Exhibit 1268 shows the source code used to generate these results is short and
`
`simple, and would not have been difficult for a POSA to generate. Exhibit 1268 also
`
`shows the performance of Ping’s original code using the same source code. Exhibit
`
`1268 matches the performance shown in Ping’s Figure 1, demonstrating that the
`
`simulation is accurate. (Ex. 1265, ¶¶42-56.)
`
`Caltech also argues that adding irregularity will not always improve a code,
`
`and argues that one of Professor Davis’ examples would not have led to a
`
`performance improvement. (POR, 46-47.) That is irrelevant. Irregularity need not
`
`always result in improvement for a POSA to be encouraged to use it. MacKay’s
`
`teaching that the best known Gallager codes are irregular was sufficient to motivate
`
`a POSA to attempt to use irregularity in Ping’s code. (Ex. 1265, ¶57.)
`
`Caltech also disputes Petitioner’s showing that it would have been obvious for
`
`a POSA to use the Divsalar’s repeater in Ping’s code. (POR, 51.) Caltech is
`
`incorrect. (Petition, 46-48.)4 Additionally, as shown above with Exhibit 1272, using
`
`
`
`4 The Petition notes that repeaters were common in the prior art, identifying Frey (Ex.
`
`1210) as one such example. The POR improperly tries to incorporate its attempt to
`
`antedate Frey from IPR2017-00210. (POR, 53.) To the extent the Board considers
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`U.S. Patent No. 7,421,032
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`Divsalar’s repetition in Ping would have been obvious and simply involved
`
`repeating input bits at the outer coder as shown in Fig. 3 of Divsalar. Thus, contrary
`
`to Caltech’s suggestion, Ping is easily modified to repeat information bits as shown
`
`in Divsalar. (Ex. 1265, ¶38.)
`
`iv. Caltech has failed to overcome Petitioner’s showing
`that Ping in view of MacKay and Divsalar discloses a
`“message passing decoder”
`
`Caltech challenges Petitioner’s showing that a POSA would have
`
`incorporated a “messaging passing decoder,” and argues that it would not be obvious
`
`to combine the message passing decoders of Divsalar, MacKay, or Luby with Ping.
`
`Caltech is mistaken.
`
`While Ping refers to the decoding process, it does not show a particular
`
`decoder. A POSA would have understood that a decoder would be used to perform
`
`Ping’s decoding process and it would have been obvious to use one of the
`
`well-known, commonly used decoders. As shown by Divsalar, MacKay, and
`
`Luby97, message passing decoders were well known and would have been an
`
`
`
`this attempt to antedate Frey, Petitioner notes it fails for the reasons set forth in its
`
`Reply in the same proceeding. (See also Exs.
`
`.) Regardless,
`
`Caltech does not dispute that repeaters were common in the prior art, only whether
`
`Petitioner’s illustrative examples qualify as prior art. (POR, 53.)
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`U.S. Patent No. 7,421,032
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`obvious choice. (Petition, 51-53.) Thus, a POSA would have been motivated to use
`
`a message passing decoder at least by the disclosures of Divsalar, MacKay, and
`
`Luby97. Caltech’s own expert acknowledges that Gallagher provided message
`
`passing decoding in 1962 and that a POSA would have known how to use a message
`
`passing decoder. (Ex. 2039, 175:5-178:7.) Dr. Jin also concedes that designing a
`
`decoder is “common knowledge for anyone in the field.” (Ex. 1263, 172:18-173:6.)
`
`(Ex. 1265, ¶58-59.)
`
`Caltech notes differences between the encoders used in the references. (POR,
`
`24-25.) However, it fails to show why those differences in the encoder would
`
`prevent a message passing decoder from working for the combination of Ping,
`
`MacKay, Divsalar and Luby97. Dr. Frey confirms that these differences would not
`
`prevent a message passing decoder from working in the proposed combination and
`
`that the decoders from MacKay, Divsalar and Luby97 would each have been
`
`suitable to implement Ping’s decoding process. Also, as shown by Dr. Frey’s
`
`simulations, message passing decoders work for Ping and were easy to prepare for
`
`use with Ping. (Ex. 1265, ¶59.)
`
`Caltech also argues that the parallel operation of message passing decoders
`
`would not have been obvious, but a POSA would have understood that parallel
`
`decoding is a conventional feature that provides speed gains and thus, would have
`
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`been obvious in view of any message-passing decoder, including those taught by
`
`Divsalar, MacKay, and Luby97. (Petition, 54.) (Ex. 1265, ¶60.)
`
`v.
`
`Caltech fails to overcome Petitioner’s showing that
`MacKay discloses nonuniform row weights
`
`Patent Owner argues that MacKay fails to teach the nonuniform row weights
`
`limitation of claim 20. (POR, 25-26.) That certain exemplary profiles in MacKay’s
`
`drawings have uniform row weights does not detract from MacKay’s express
`
`teaching of nonuniform row weights. (Ex. 1202, 1449 (disclosing “nonuniform
`
`weight per row”) (emphasis added).) Moreover, MacKay’s instructions for creating
`
`an irregular code clearly require the selection of “the desired number of rows of each
`
`weight.” (Ex. 1202, 1449-1450.) Caltech does not address this teaching. MacKay’s
`
`focus on experimentation with nonuniform column weights does not negate
`
`MacKay’s disclosure of nonuniform row weights. Regarding row weights, only two
`
`options exist: uniform row weights and nonuniform row weights. That coupled
`
`with MacKay’s explicit reference to nonuniform row weights renders them obvious.
`
`(Ex. 1265, ¶61.)
`
`Caltech also repeats its argument that Petitioner has not shown a motivation to
`
`combine. A POSA would have been motivated to use nonuniform row weights
`
`given the superior performance of irregular codes disclosed by MacKay.
`
`Furthermore, as Caltech concedes, POSAs routinely develop codes through
`
`experimentation. (POR, 4-5.) MacKay itself is directed to experimenting with
`- 19 -
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`irregularity and methods of constructing irregular codes with high performance.
`
`(Ex. 1202, 1449 (“[t]he excellent performance of irregular Gallager codes is the
`
`motivation for this paper”).) MacKay’s teaching that the best Gallager codes are
`
`irregular would have encouraged a POSA to use nonuniform row weights. Thus,
`
`Caltech’s claim is unfounded. (Ex. 1265, ¶62.)
`
`Furthermore, as Dr. Frey demonstrated, a POSA would have been able to
`
`easily perform tests that combined MacKay’s irregularity with Ping using both
`
`uniform and nonuniform row weights, both of which outperform the original Ping
`
`code. Dr. Frey simulated versions of Ping, modified to use MacKay’s irregularity,
`
`with uniform row weight (RW=5) and non-uniform row weight (RW= 4, 5, and 8).
`
`Both outperformed Ping’s original regular code with uniform row and column
`
`weight. (Ex. 1265, ¶¶42-56.)
`
`vi. Caltech fails to overcome Petitioner’s showing that it
`would have been obvious to modify Ping to be a
`non-systematic code
`
`Caltech does not dispute, nor could it, that both systematic and
`
`non-systematic codes were known decades before the ’032 patent. Nor does Caltech
`
`dispute that Divsalar teaches a non-systematic code. Caltech’s only argument is that
`
`it would not have been obvious to modify Ping to become non-systematic. (POR,
`
`26-27.) Caltech is mistaken. Systematic and non-systematic codes were both
`
`well-known long before the ’032 patent, and implementing the combination of Ping,
`
`- 20 -
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`MacKay, Divsalar, and Luby97 as either systematic or non-systematic would have
`
`been obvious. Making the code non-systematic is simply a matter of not
`
`transmitting the information bits. Moreover, codes are either systematic
`
`(information bits are transmitted) or non-systematic (information bits are not
`
`transmitted). Both options were well-known design choices and both were obvious
`
`ways to implement the combination of Ping, MacKay, Divsalar, and Luby97. (Ex.
`
`1265, ¶63.)
`
`Caltech argues that if Ping were non-systematic, the parity check matrix
`
`would be different. (POR, 27.) That is true but irrelevant. Petitioner’s argument is
`
`not that Ping alone is non-systematic, but rather that it would have been obvious and
`
`simple to make the combination of Ping, MacKay, Divsalar, and Luby97
`
`non-systematic. (Ex. 1265, ¶63.)
`
`2.
`
`Caltech Fails To Establish A Nexus Between Its Purported
`Objective Evidence Of Non-Obviousness And The Claimed
`Invention.
`
`The Federal Circuit has explained that “[f]or objective evidence of secondary
`
`considerations to be accorded substantial weight, its proponents must establish a
`
`nexus between the evidence and the merits of the claimed invention.” Merck & Cie
`
`v. Gnosis S.P.A., 808 F.3d 829, 837 (Fed. Cir. 2015) (citation omitted). Here,
`
`Caltech fails to establish such a nexus.
`
`- 21 -
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`Caltech’s nexus argument rests entirely on its contention that the DVB-S2
`
`standard practices the claimed invention. (POR, 56-59.) It does not. Judge Pfaelzer
`
`of the Central District of California addressed this issue in her summary judgment
`
`opinion. (Ex. 1267.) She expressly rejected the very argument Caltech presents
`
`here through its expert, Dr. Mitzenmacher—i.e., that the DVB-S2 standard practices
`
`claim 18 of the ’032 patent. She explained that “Caltech has not shown that DVB-S2
`
`technology repeats information bits…as the asserted claims require” because the
`
`DVB-S2 standard calls for “the reuse of a single information bit in the creation of
`
`multiple parity bits.” (Ex. 1267, *4.) Judge Pfaelzer further explains that, contrary
`
`to what the claims require, the DVB-S2 documentation “seems to assign specific
`
`information bits to contribute to specific parity bits” rather than randomly choosing
`
`the information bits that contribute to parity bits. Id. (Ex. 1265, ¶61-65.)
`
`Caltech presents no evidence beyond what was available to Judge Pfaelzer.
`
`Its expert, Dr. Mitzenmacher, relies solely on evidence regarding the DVB-S2
`
`standard itself (Ex. 2004, ¶¶170-179); he admits that he did not review any actual
`
`implementation of the DVB-S2 standard. (Ex. 2038, 443:17-445:10.) (Ex. 1265,
`
`¶61-65.)
`
`Without the requisite nexus to the challenged claims, Caltech’s objective
`
`evidence is entitled to no weight. See Merck, 808 F.3d, 837.
`
`- 22 -
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`Long-Felt Need and Failure of Others
`
`i.
`
`Caltech’s suggestion that IRA codes represent the endpoint of the
`
`development of certain error correction codes is false.
`
`Information theorists have long sought new codes that performed closer to the
`
`Shannon Limit. That search drove the development of LDPC codes, turbocodes, RA
`
`codes, and IRA codes. At no time was there a “long-felt need” for IRA codes.
`
`Rather, there is always a present need for the next improvement to code performance.
`
`Similarly, the codes before IRA codes were not “failures.” Rather, they were
`
`improvements on what came before. IRA codes were at most a predictable and
`
`incremental step in this process. (Ex. 1265, ¶66.)
`
`Caltech’s argument also fails because it focuses on the alleged success of IRA
`
`codes in general, not the claimed
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