`___________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
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`Apple Inc.
`Petitioner
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`v.
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`California Institute of Technology
`Patent Owner
`____________________________________________
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`Case Nos. IPR2017-00210, IPR2017-00211, IPR2017-00219, IPR2017-00297,
`IPR2017-00423, IPR2017-00700, IPR2017-00701, IPR2017-00728
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`
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`DECLARATION OF RICHARD GOLDENBERG IN SUPPORT OF
`UNOPPOSED MOTIONS TO SUBMIT REPLACEMENT EXHIBITS
`PURSUANT TO 37 C.F.R. § 42.104(c)
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`ActiveUS 161096173v.1
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`Apple vs. Caltech
`IPR2017-00728
`Apple 1225
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`1.
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`I, Richard Goldenberg, am employed at WilmerHale and am lead
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`counsel of record for Petitioner Apple Inc. in the above captioned inter partes
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`review proceedings. I am an attorney duly admitted to practice before the United
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`States Patent and Trademark Office. I supervised and assisted in preparation of the
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`captioned inter partes review proceedings.
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`2.
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`This declaration is filed in support of Petitioner’s Unopposed Motions
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`to Correct Clerical Errors in the captioned inter partes review proceedings. I
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`understand that these motions will be filed to correct exhibits filed with the
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`captioned inter partes review proceedings, which are directed to U.S. Patent No.
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`7,116,710 (the “ʼ710 Patent”), U.S. Patent No. 7,916,781 (the “ʼ781 Patent”), and
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`U.S. Patent No. 7,421,032 (the “ʼ032 Patent”) (collectively, the “ʼ710, ʼ781, and
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`ʼ032 IPRs”).
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`3.
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`Petitioner inadvertently filed incorrect versions of the following
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`exhibits in the captioned inter partes review proceedings:
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`• Frey, B. J. and MacKay, D. J. C., “Irregular Turbocodes,” Proc.
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`37th Allerton Conf. on Comm., Control and Computing,
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`Monticello, Illinois, 1999 (the “Frey exhibit”).
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`• D. Divsalar, H. Jin, and R. J. McEliece, “Coding theorems for
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`‘turbo-like’ codes,” Proc. 36th Allerton Conf. on Comm., Control
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`and Computing, Allerton, Illinois, 1998 (the “Divsalar exhibit”).
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`• Declaration of Paul H. Siegel (the “Siegel Declaration exhibit”).
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`4.
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`The exhibit numbers for each of the Frey, Divsalar, and Siegel
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`Declaration exhibits in the ʼ710, ʼ781, and ʼ032 IPRs are listed in the table below.
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`Petitioner did not file the Siegel Declaration exhibit in the ʼ781 Patent IPRs.
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`Exhibit Name
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`IPR Number
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`Patent
`Number
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`Exhibit
`Number
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`Frey
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`Frey
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`Frey
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`Frey
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`Frey
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`Frey
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`Frey
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`Frey
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`Siegel
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`Siegel
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`Siegel
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`Siegel
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`Siegel
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`Siegel
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`IPR2017-00210 7,116,710
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`IPR2017-00211 7,116,710
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`IPR2017-00219 7,116,710
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`IPR2017-00297 7,916,781
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`IPR2017-00423 7,916,781
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`IPR2017-00700 7,421,032
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`IPR2017-00701 7,421,032
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`IPR2017-00728 7,421,032
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`IPR2017-00210 7,116,710
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`IPR2017-00211 7,116,710
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`IPR2017-00219 7,116,710
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`IPR2017-00700 7,421,032
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`IPR2017-00701 7,421,032
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`IPR2017-00728 7,421,032
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`Divsalar
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`IPR2017-00210 7,116,710
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`1002
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`1102
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`1202
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`1010
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`1110
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`1010
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`1110
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`1210
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`1020
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`1120
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`1220
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`1023
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`1123
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`1223
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`1003
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`Divsalar
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`Divsalar
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`Divsalar
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`Divsalar
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`Divsalar
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`Divsalar
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`Divsalar
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`IPR2017-00211 7,116,710
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`IPR2017-00219 7,116,710
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`IPR2017-00297 7,916,781
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`IPR2017-00423 7,916,781
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`IPR2017-00700 7,421,032
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`IPR2017-00701 7,421,032
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`IPR2017-00728 7,421,032
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`1103
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`1203
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`1017
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`1117
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`1017
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`1117
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`1217
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`5.
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`During the process of filing petitions in the ʼ710, ʼ781, and ʼ032 IPRs,
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`an associate at my firm, Jonathan E. Barbee, assisted me in the collection and
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`uploading of the exhibits to each petition. In those IPR filings, Mr. Barbee
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`directed legal staff to upload incorrect versions of the Frey exhibit and the Divsalar
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`exhibit and omitted the “Exhibit 1” attached to the Siegel Declaration exhibit.
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`6.
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`For the Frey exhibit, being aware of the prior result in IPR2015-
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`00067, I intended for a copy of the Frey reference to be filed that included a March
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`20, 2000 date stamp from the Cornell University Library. During prior litigation
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`with a different defendant, my firm obtained and produced to the Patent Owner
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`over a year ago such a copy of the Frey reference, which bears the Bates Stamp
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`HUGES00883604-83627 and bears a date stamp of March 20, 2000 from the
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`Cornell University Library. My firm had several additional copies of the Frey
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`reference in the firm’s document management database, including the
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`inadvertently-filed exhibits. Mr. Barbee selected the wrong document because the
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`inadvertently-filed versions of the exhibit had been circulated for a different
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`purpose. However, the text of the corrected Frey exhibit is identical to the text of
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`the inadvertently-filed exhibits and will not affect the manner in which Frey
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`teaches the claims as explained in the petitions filed in the ʼ710, ʼ781, and ʼ032
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`IPRs.
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`7.
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`For the ʼ710 Patent IPRs (IPR2017-00210, -00211, and -00219) and
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`the ʼ781 Patent IPRs (IPR2017-00297 and -00423), the corrected exhibits contain
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`the following material, which the inadvertently-filed Frey exhibit lacks: a table of
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`contents, a date stamp, and page numbering corresponding to the Table of Contents
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`of the publication in which the Frey reference was published. The Table of
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`Contents from that publication was filed as a separate exhibit with the petitions for
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`the ʼ710 Patent IPRs as Ex. 1015, Ex. 1115, and Ex. 1215 to demonstrate when the
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`Frey reference was available to the public—the Table of Contents in these exhibits
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`bears a date stamp of March 20, 2000 from the Cornell University Library (i.e., the
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`same date stamp present in the corrected Frey exhibit) and indicates that the first
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`page of Frey is page 241. The pagination of the inadvertently-filed Frey exhibit
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`does not match the pagination identified in the Table of Contents in Ex. 1015, Ex.
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`1115, and Ex. 1215 because the inadvertently-filed Frey exhibit begins at page 1.
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`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
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`which the Frey reference was published, as shown in Ex. 1015, Ex. 1115, and Ex.
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`1215.
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`8.
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`For the ʼ032 Patent IPRs (IPR2017-00700, -00701, and -00728), the
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`inadvertently-filed Frey exhibit is identical to the corrected exhibit except that the
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`inadvertently-filed exhibit bears a September 19, 2000 date stamp from the
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`University of Michigan Library, and a September 25, 2000 date stamp from the
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`University of Washington whereas the correct Frey exhibit bears a March 20, 2000
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`date stamp from the Cornell University Library. In addition, the correct exhibit
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`includes sequential page numbers beginning with page 1 to match the citations in
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`the petitions in the ʼ032 Patent IPRs.
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`9.
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`For the Divsalar exhibit, Petitioner cited to the Divsalar exhibit in the
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`petitions for the ʼ710, ʼ781, and ʼ032 IPRs using sequential page numbering that
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`designated the first page of the reference as page 1, whereas the inadvertently-filed
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`exhibit begins with page 201. Mr. Barbee directed legal staff to upload the
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`Divsalar exhibit without adding sequential page numbers beginning with page 1
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`below the original page numbers of the exhibit. The addition of the sequential
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`page numbers was needed for the Divsalar exhibit to match the citations in the
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`petitions for the ʼ710, ʼ781, and ʼ032 IPRs. The corrected Divsalar exhibit is
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`identical to the inadvertently-filed exhibit except for the addition of the sequential
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`page numbers and will not affect the substance of the petitions filed in the ʼ710,
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`ʼ781, and ʼ032 IPRs.
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`10. For the Siegel Declaration exhibit, “Exhibit 1” to the Siegel
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`Declaration was not attached before Mr. Barbee directed legal staff to upload the
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`inadvertently-filed exhibit in the ʼ710 Patent IPRs and ʼ032 Patent IPRs. The
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`Siegel Declaration and “Exhibit 1” to the declaration were sent by Professor Paul
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`H. Siegel to my firm as attachments in separate emails. Mr. Barbee overlooked the
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`separate email attaching “Exhibit 1” while preparing the Siegel Declaration for
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`filing. The corrected Siegel Declaration exhibit is identical to the inadvertently-
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`filed exhibit except for the addition of “Exhibit 1” and will not affect the substance
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`of the petitions filed in the ʼ710 Patent IPRs and ʼ032 Patent IPRs because that
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`Exhibit 1 to the Siegel Declaration is identical to a separately filed exhibit, i.e.,
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`Exs. 1005, 1105, and 1205 in the ’710 IPRs and Exs. 1022, 1122, and 1222 in the
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`’032 IPRs.
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`11. All statements in this declaration are made under penalty of perjury
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`and are true and correct to the best of my knowledge.
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`Dated: February 27, 2017
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`Respectfully Submitted,
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`/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
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`Attorney for Petitioner
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