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`Paper No. ___
`Filed: March 28, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`—————————————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`—————————————————
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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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`—————————————————
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`Cases IPR2017-00728
`Patent 7,421,032
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`—————————————————
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`PATENT OWNER’S MOTION TO EXCLUDE
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`I.
`II.
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`TABLE OF CONTENTS
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`Page
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`Exhibits 1244-1249, 1257-1261, 1265, 1268, 1271, and 1272
`should be excluded for being new evidence used to support new
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`INTRODUCTION ....................................................................................... 1
`ARGUMENT............................................................................................... 1
`A.
`arguments .......................................................................................... 1
`B.
`replacement attempt of Dr. Davis ....................................................... 4
`C.
`as out-of-scope testimony .................................................................. 8
`Exhibit 1274 should be excluded for violating the Board’s order ....... 8
`D.
`E.
`Exhibit 1267 should be excluded under FRE 106 ............................... 9
`F.
`should be excluded for lack of relevance as they are uncited............ 10
`III. CONCLUSION ......................................................................................... 11
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`Exhibit 1265 should further be excluded as an improper
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`Certain portions of Exhibits 2038 and 2039 should be excluded
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`Exhibits 1206, 1218, 1219, 1224, 1229-1247, and 1257-1261
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`-i-
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`Cases IPR2017-00728
`Patent 7,421,032
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`I.
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`INTRODUCTION
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`Pursuant to 37 C.F.R. §§ 42.62 and 42.64(c) and the Federal Rules of
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`Evidence, Caltech respectfully moves to exclude Exhibits 1206, 1218, 1219, 1224,
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`1229-1249, 1257-1261, 1265, 1267, 1268, 1271, 1272 and portions of Exhibits
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`2038 and 2039. The Federal Rules of Evidence apply to inter partes proceedings.
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`37 C.F.R. § 42.62; LKQ Corp. v. Clearlamp, LLC, IPR2013-00020, Paper 17, at 3
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`(Mar. 5, 2013).
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`Having recognized that the petition’s arguments and evidence cannot sustain
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`a finding of unpatentability, Petitioner has engaged in an improper rehabilitation
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`campaign with new arguments, new evidence, and testimony elicited from out-of-
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`scope questions. The new exhibits must be excluded because they largely lack
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`relevance to any instituted ground, and they are unduly prejudicial to Caltech
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`because Caltech lacks any meaningful opportunity respond to the new evidence.
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`FRE 401; 402; 403.
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`II. ARGUMENT
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`A. Exhibits 1244-1249, 1257-1261, 1265, 1268, 1271, and 1272 should
`be excluded for being new evidence used to support new arguments
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`Exhibits 1244-1249, 1257-1261, 1265, 1268, 1271, and 1272 were not
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`submitted until after Caltech had filed its Patent Owner Response. To the extent
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`those exhibits were cited in Petitioner’s reply, they were cited in support of
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`arguments that were not made in the petition and were therefore improper to raise
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`Cases IPR2017-00728
`Patent 7,421,032
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`for the first time in Petitioner’s reply. 37 CFR §42.23(b); Intelligent Bio-Systems,
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`Inc. v. Illumina Cambridge, 821 F. 3d 1359, 1370 (Fed. Cir. 2016). As such, they
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`are not relevant to the instituted grounds of review. FRE 401; FRE 402.
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`Exhibits 1244-1249, 1257-1260, 1271, and 1272 are various diagrams,
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`including Tanner graphs, that were admittedly created by Petitioner’s lawyers (see,
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`e.g., Ex. 2038, 415:14-18) and purport to depict the prior art. Many of these
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`exhibits were first introduced in the depositions of Dr. Mitzenmacher (Exs. 1244-
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`1249) and Dr. Divsalar (Exs. 1257-1260). The questions relating to these exhibits
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`were largely attempts to authenticate the exhibits so that Petitioner could rely on
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`them in its reply to support new arguments. For example, Petitioner cites to
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`Exhibit 1248 in its reply, claiming that Caltech’s expert only had one objection to
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`it.1 Reply 9. However, Dr. Mitzenmacher made it clear that “I think that’s one
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`problem I have, there may be others. I may require some time to examine and map
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`1 That one objection, of course, is a meaningful one that underscores a defective
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`obviousness inquiry that ignored fundamental aspects of how Ping’s codes are
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`constructed, illustrates that the proposed modification breaks the constraints of
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`Ping’s code, and renders the attorney-created graph technically inaccurate and
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`inapposite. See e.g., POR 7-9, 33-35.
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`this out in order to see if it was consistent with what Ping had said.” Ex. 2038,
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`427:3-7. Petitioner cannot argue that these exhibits are necessary to respond to
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`Caltech’s arguments that the petition was materially flawed.
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`Exhibit 1268 is purportedly a “[s]imulation of Regular and Irregular
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`Divsalar Codes” conducted by Dr. Frey. Petitioner relies on this exhibit to show
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`that a newly proposed modification to Ping “would not have been difficult for
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`POSA to generate” and “would have had a reasonable expectation of success.”
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`Reply 14-16. But the petition never discusses reasonable expectation of success,
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`and so the evidence lacks relevance to any of the instituted grounds. There is
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`simply no reason why such evidence or arguments could not have been included in
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`the petition. In addition, the simulation purports to test a Ping code whose Hd sub-
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`matrix has been modified in two different, specific, and complicated, ways. See
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`Ex. 1265 ¶¶48, 52 (depicting the distribution of weights in Petitioner’s two new
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`modifications to Ping). The petition never presented these proposed
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`modifications—instead, Petitioner only gave the vague proposal of modifying
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`Ping’s Hd sub-matrix to have “some columns to weight 9 and others to weight 3.”
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`Pet. 44. Such a vague proposal did not put Caltech on notice of Petitioner’s new
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`complicated modifications, and one of them even admits to have “column weights
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`four, five, or nine.” Ex. 1265 ¶52. Thus, the new simulation data must be
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`excluded as it is a completely new and untimely theory not relevant to any
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`instituted grounds.
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`Exhibit 1265 is Dr. Frey’s declaration in support of Petitioner’s reply. A
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`number of portions relate to new arguments and new evidence, including the
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`portions discussing experimental data and attorney-created figures, as explained
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`above. Since the Board “will not attempt to sort proper from improper portions of
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`the reply,” the declaration should be excluded in its entirety. Office Patent Trial
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`Practice Guide, 77 Fed.Reg. 48,756, 48,767 (Aug. 14, 2012); see also Intelligent
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`Bio-Systems v. Illumina Cambridge, 821 F. 3d 1359, 1370 (Fed. Cir. 2016)
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`(holding that the Board did not abuse its discretion in excluding Petitioner’s reply
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`and accompanying declaration because it presented new issues).
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`These exhibits should also be excluded for being unduly prejudicial to
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`Caltech. FRE 403. Because the exhibits were introduced in Petitioner’s reply,
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`Caltech will have no meaningful opportunity to rebut them. Although the Board
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`has granted Caltech a short surreply, Caltech will not be able to introduce any new
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`evidence to adequately rebut Petitioner’s new evidence, such as expert testimony
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`addressing inaccuracies in the new exhibits. See Paper 43.
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`B.
`Exhibit 1265 should further be excluded as an improper
`replacement attempt of Dr. Davis
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`As mentioned above, Exhibit 1265 is a declaration of Dr. Frey. In addition
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`to the reasons above, to the extent Petitioner is attempting to execute a last-minute
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`replacement of experts, Exhibit 1265 should also be excluded because Caltech
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`would be unduly prejudiced. Petitioner’s original expert was Dr. Davis who now
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`claims to have been unavailable to provide a declaration for Petitioner’s reply.
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`Instead, Petitioner submitted a declaration from Dr. Frey.
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`As an initial matter, Dr. Frey does not state that he considered Dr. Davis’s
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`cross-examination transcript or include it in the list of materials he reviewed. Id.,
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`¶11. Despite Petitioner’s attempt to rehabilitate its petition expert by presenting a
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`second witness to “agree” with the direct testimony, Dr. Frey cannot adopt or
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`credibly address Dr. Davis’s declaration without at least addressing—or at
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`minimum at least considering—Dr. Davis’s cross-examination.
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`In any event, the problems with Dr. Davis’s testimony and the petition case
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`remain regardless of whether Dr. Frey incorporates it or not. As explained in
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`Caltech’s Patent Owner response, Dr. Davis’s testimony parrots attorney argument
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`from the petition, but fails to address critical aspects of the cited references,
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`ignores the unpredictability in the art, and contains various basic errors. For
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`example, Dr. Davis ignores the puncturing and error floors described in the Frey
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`reference, does not understand MacKay’s teachings regarding a “super-Poisson”
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`distribution, and fails to address reasonable expectation of success. PO Response
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`(Paper 32) pp. 10-11, 46-51. Nothing about Dr. Frey’s eleventh hour declaration
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`or his conclusory assertion that he agrees with Dr. Davis’s declaration remedies
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`any of these issues.
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`In addition, Caltech has been prejudiced by this late substitution of experts.
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`For example, because Dr. Frey has not addressed or considered Dr. Davis’s cross-
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`examination testimony, Caltech is effectively denied meaningful opportunity to
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`now cross-examine Dr. Frey. While Petitioner may wish to insulate Dr. Frey from
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`impeachment with this material (or simply wish Dr. Davis’s cross-examination
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`testimony to disappear), Petitioner cannot have it both ways—i.e., cherry picking
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`direct testimony prior to the scrutiny of cross-examination.
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`Moreover, Petitioner’s stated reasons for replacing Dr. Davis strain
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`credulity. Despite ample opportunity, Petitioner never informed Caltech in
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`advance that they intended to replace Dr. Davis as a witness. Rather, Petitioner
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`first stated in its reply that as a result of “relocat[ing] to Europe pursuant to a
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`Fulbright Scholar Award …, he was unavailable to work on the Reply. Reply 3
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`n.1. But Petitioner fails to mention that Dr. Davis received the Fulbright award in
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`February 2017, and his European obligations to the award began in September
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`2017.2 Indeed, by early September 2017, Dr. Davis appears to have already began
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`2 See, e.g., https://news.richmond.edu/releases/article/-/14096/ur-math-
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`professor-jim-davis-selected-for-fulbright-global-award-
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`.html?sma=sm.000008x8mclgv5czryfee9s17g82n (article dated February 2017
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`(continued...)
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`lecturing in Germany,3 yet Petitioner still was able to make him available for a 3-
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`day deposition in September. Given that Dr. Davis was aware of his obligations
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`months before his deposition, there was no reason that Petitioner had to surprise
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`Caltech by replacing its expert with its reply brief.
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`In addition, neither Petitioner nor Dr. Davis provide any explanation as to
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`why Dr. Davis could not have assisted in the Reply while in Europe. Dr. Davis’s
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`responsibilities appear to be “meet[ing] with other local experts and giv[ing]
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`seminar talks and public lectures.”4 There is no indication such activities would
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`prevent Dr. Davis from assisting in the reply, especially in light of the requirement
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`(...continued from previous page)
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`describing Dr. Davis’s Fulbright responsibilities in Germany, France and Canada);
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`https://www.cies.org/grantee/james-davis (showing a start date of September
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`2017).
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`3 See, e.g., http://cage.ugent.be/~ml/irsee5/abstract_book.pdf at 4.
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`4 https://news.richmond.edu/releases/article/-/14096/ur-math-professor-jim-
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`davis-selected-for-fulbright-global-award-
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`.html?sma=sm.000008x8mclgv5czryfee9s17g82n
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`that the reply is to “only respond to arguments raised in the corresponding
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`opposition or patent owner response” (37 CFR §42.23(b)) and Dr. Davis’s
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`testimony that “the typing [for the petition declarations] was done at the law firm’s
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`end.” Ex. 2033; 12:6-7. In addition, Dr. Davis is fully available for deposition in
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`the United States. Ex. 1273, ¶3. Thus, there appears to be no legitimate reason for
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`Petitioner to have needed to prejudice Caltech by replacing its expert so late in the
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`game. For these reasons, Exhibit 1265 in its entirety should be excluded.
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`C. Certain portions of Exhibits 2038 and 2039 should be excluded as
`out-of-scope testimony
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`Exhibits 2038 and 2039 are the deposition transcripts of Caltech witnesses
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`Dr. Mitzenmacher and Dr. Divsalar, respectively. As a result of the Board’s
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`schedule regarding Caltech’s motion for sanctions, Caltech was required to submit
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`copies of those transcripts before they would have been submitted with Petitioner’s
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`reply to the Patent Owner response. See Paper 41. For the reasons identified in
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`Caltech’s motion for sanctions (Paper 42), the portions of the deposition transcripts
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`that are outside the scope of the witnesses’ direct testimony shouldbe excluded.
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`FRE 401-403, 611(b).
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`D. Exhibit 1274 should be excluded for violating the Board’s order
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`In authorizing Petitioner to file Exhibit 1274, the Board stated that it “should
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`not be used for substantive arguments.” Paper 41, 2. Yet Exhibit 1274 contains
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`extensive substantive argument about why each identified portion of the
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`Mitzenmacher and Divsalar deposition transcripts are supposedly within the scope
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`of their direct testimony. Indeed, Petitioner’s opposition admits that Exhibit 1274
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`is a “detailed” explanation. Paper 47, 2. Exhibit 1274 is also prejudicial because it
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`essentially gave Petitioner additional pages of briefing. Thus, Exhibit 1274 should
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`be excluded for lack of relevance and for prejudice. FRE 401, 402, 403.
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`E.
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`Exhibit 1267 should be excluded under FRE 106
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`Exhibit 1267 is a decision from Judge Pfaelzer in the case California
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`Institute of Technology v. Hughes Communications Inc., No. 2:13-cv-07245-MRP-
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`JEM, 2015 WL 11089495 (C.D. Cal. May 5, 2015). Petitioner cites to it for the
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`proposition that DVB-S2 does not practice the claimed invention. Reply 22.
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`However, it should be noted Petitioner’s argument misstates the significance of the
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`exhibit, an order denying Caltech’s motion for summary judgment of infringement.
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`Consideration of Caltech’s motion required the court to “view facts and draw
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`reasonable inferences in favor of the nonmoving party.” Ex. 1267, *2. Judge
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`Pfaelzer did not rule that there was no infringement as a matter of law, but rather
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`only held that Hughes’s infringement of the ’032 patent involved a genuine dispute
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`of material fact to be resolved by the jury. Id, *5.
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`Also, per FRE 106, the Board should in fairness consider other writings, or
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`otherwise exclude the exhibit, because the decision relies on a narrow claim
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`construction that would be improper for the Board to adopt under the “broadest
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`reasonable interpretation” standard. In particular, the Board should consider that
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`Judge Pfaelzer’s decision was in reliance on a narrow construction of “repeat.”
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`While the court adopted the “plain meaning” of repeat, it explained that this plain
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`meaning requires “creation of new bits corresponding to or reflecting the value of
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`the original bits” and precludes “the re-use of a bit.” California Institute of
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`Technology v. Hughes Communications Inc., No. 2:13-cv-07245-MRP-JEM, Dkt.
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`105, p. 10-11 (C.D. Cal. Aug. 6, 2014).
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`The Board should also consider that in the more recent district court
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`litigation against Petitioner, the same court expressly rejected the argument that the
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`plain meaning of “repeat” would exclude reuse. California Institute of Technology
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`v. Broadcom Limited, et al., No. 2:16-cv-03714-GW-AGRx, Dkt. 213, p. 1 (C.D.
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`Cal. Jul. 12, 2017) (“[T]he term ‘repeat’ may encompass duplication and reuse.”).
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`That is, the more recent claim construction order reaches a different conclusion
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`than the one relied on by Petitioner, and directly undermines Petitioner’s argument
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`regarding Caltech’s nexus showing. The Board should also consider that it is to
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`give claims their “broadest reasonable interpretation.” See Cuozzo Speed Techs.,
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`LLC v. Lee, 136 S.Ct. 2131 (2016).
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`F.
`Exhibits 1206, 1218, 1219, 1224, 1229-1247, and 1257-1261 should
`be excluded for lack of relevance as they are uncited
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`Petitioner moves to exclude Exhibits 1206, 1218, 1219, 1224, 1244-1247,
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`and 1257-1261. These exhibits are not cited in the petition or Petitioner’s reply
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`and are therefore not relevant to any instituted grounds of review. FRE 401; FRE
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`402. Admission of these exhibits would be unduly prejudicial to Caltech, as
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`Caltech lacks notice as to if and how Petitioner intends to rely on these exhibits in
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`this proceeding or any future appeal. FRE 403. For the same reasons, these
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`exhibits should be expunged from the record, since Caltech would have no
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`meaningful opportunity to respond if Petitioner were to rely on these exhibits in
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`this or a later proceeding.
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`III. CONCLUSION
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`For these reasons, Exhibits 1206, 1218, 1219, 1224, 1229-1249, 1257-1261,
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`1265, 1267, 1268, 1271, 1272 and portions of Exhibits 2038 and 2039 should be
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`excluded.
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`Date: March 28, 2018
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`Respectfully submitted,
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`CERTIFICATE OF SERVICE
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`I certify that the foregoing Patent Owner’s Motion to Exclude was served on
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`this 28th day of March, 2018, on the Petitioner at the electronic service addresses of
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`the Petitioner as follows:
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`Richard Goldenberg
`Dominic Massa
`Michael H. Smith
`James M. Dowd
`Mark D. Selwyn
`Arthur Shum
`WILMER CUTLER PICKERING HALE AND DORR LLP
`richard.goldenberg@wilmerhale.com
`dominic.massa@wilmerhale.com
`michaelh.smith@wilmerhale.com
`james.dowd@wilmerhale.com
`mark.selwyn@wilmerhale.com
`arthur.shum@wilmerhale.com
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`Date: March 28, 2018
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`Respectfully submitted,
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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