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`Paper No. ___
`Filed: April 11, 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.
`_____________________________
`
`Case IPR2017-00728
`Patent No. 7,421,032
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`_____________________________
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`PATENT OWNER’S SURREPLY
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`TABLE OF CONTENTS
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`Petitioner’s new argument that MacKay discloses nonuniform
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`I.INTRODUCTION ................................................................................................ 1
`II.ARGUMENT ...................................................................................................... 1
`A.
`column weights for information bits should be rejected ...................... 1
`B.
`No motivation to combine Ping and MacKay...................................... 2
`C.
`Petitioner fails to show a “message passing decoder” ......................... 4
`D.
`Petitioner failed to show nonuniform row weights .............................. 5
`E.
`No explanation for how to modify Ping to be non-systematic ............. 5
`F.
`Reasonable expectation of success was never addressed ..................... 5
`G.
`corresponding experimental data should be rejected ........................... 6
`H. New attorney-generated Tanner graphs and block diagram ................. 8
`III.CONCLUSION .................................................................................................. 8
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`The newly proposed Hd submatrix modifications and
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`-i-
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`I.
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`INTRODUCTION
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`In view of new argument and evidence submitted in Petitioner’s Reply
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`briefing, the Board (Paper 43) authorized a short sur-reply but prohibited
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`submission of rebuttal evidence. As illustrated in further detail below, the Reply
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`materials are replete with untimely and improper new argument and evidence—
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`including submission of newly generated experimental data, attorney-generated
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`Tanner graphs and block diagrams, and a declaration from a new witness. The
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`Reply provides no justification for replacing Dr. Davis with a new witness, as Dr.
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`Davis testified he remains available for deposition in the U.S. EX1273, ¶3.
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`Accordingly, the Reply materials should be disregarded and given no weight.
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`II. ARGUMENT
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`A.
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`Petitioner’s new argument that MacKay discloses nonuniform
`column weights for information bits should be rejected
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`As the POR explained, the petition failed to provide any evidence that
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`MacKay discloses non-uniform column weights for information bits. POR 17-21.
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`Realizing the flaws in its petition, Petitioner now relies on MacKay’s Figures 5 and
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`6 to pivot to a new theory that MacKay discloses information bits appearing in a
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`variable number of subsets. Reply 2-4. This is improper and should be rejected, not
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`least because Caltech will not have an opportunity to rebut the argument with
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`expert evidence. Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir.
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`2016). Even then, Petitioner’s new argument does not explain why Figures 5 and 6
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`would motivate a POSA to modify Ping’s Hd submatrix (they would not). MacKay
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`presents Figures 5 and 6 as a way to achieve “fast encoding” by applying a “lower
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`triangular structure” already found in Ping. EX1202 1453; EX1203 38.
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`B. No motivation to combine Ping and MacKay
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`There is no motivation to modify Ping at least because its parity-check
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`matrix is already irregular and MacKay does not teach selective application of
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`uneven column weights to a submatrix. POR 28-32. The Reply’s (6) response is
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`that this argument should be rejected “for at least the reasons in the Petition and
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`DI.” But while the petition does not addres the fact that Ping’s parity-check matrix
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`is already irregular (see POR 29-31), the Reply (7) admits that Ping’s parity-check
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`matrix already has nonuniform column weights of, e.g., 4, 2, and 1.
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`The Reply does not dispute that setting Ping’s “t” value to 9 shows a parity-
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`check matrix that is more irregular than MacKay’s. Rather, the Reply (6) asserts
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`that this example is “contrived,” but Caltech’s example of Hd having column
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`weights 9 was based on Petitioner’s proposal to use column weights of 3 and 9 for
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`Ping’s Hd. Pet. 44; see also EX2033 229:4-9. PO’s example simply adopts one of
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`the weights proposed by Petitioner while maintaining Hd’s uniform column weight.
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`The Reply (7-8) absurdly asserts that it is improper to compare Ping’s H
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`matrix with MacKay’s parity-check matrices. As Ping’s H matrix is its parity-
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`check matrix, it is the only thing properly compared with MacKay’s parity-check
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`-2-
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`matrices. Hd and Hp are indisputably not parity-check matrices. EX2033, 218:3-5.
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`The Reply (8) incorrectly asserts that the only way to obtain MacKay’s
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`benefits gained from nonuniform column weights is to modify Hd. The easiest way
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`to obtain MacKay’s nonuniform column weights is to do nothing to Ping, because
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`Ping’s parity-check matrix already has nonuniform column weights.
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`The Reply (8) argues its combination has met claim 18, which requires
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`encoding a data stream “in accordance with the following Tanner graph,” because
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`“parity check matrices and Tanner graphs are interchangeable.” But that is not an
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`argument made in the petition, nor does the petition make any attempt to compare
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`a modified version of Ping with Claim 18’s Tanner graph. The Reply (9) attempts
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`to cure this defect by presenting for the first time purported Tanner graphs of Ping
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`and MacKay (EX1248, 1249), but again fails to explain how its proposed
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`modifications encode a data stream in accordance with Claim 18’s Tanner graph.
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`These purported Tanner graph depictions of Ping and MacKay should also
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`be rejected as untimely, discussed below in Section II.H. In addition, Petitioner’s
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`description of the exhibits is misleading. The Reply (9) claims the “open circles on
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`the left” are “message nodes,” and incorrectly claims that “Ping’s message nodes
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`all have degree four.” But EX1248’s right nodes are message nodes (because they
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`correspond to parity bits in the codeword), and have degrees less than four.
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`Moreover, both graphs depict a misleadingly identical “Random
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`-3-
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`Permutation,” but as Dr. Mitzenmacher noted, these permutations are constrained
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`in very different ways. EX2038, 426:11-428:2. Ping distributes its edges evenly to
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`“best increase the recurrence distance” (EX1203, 38), whereas MacKay’s 93y does
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`the opposite of “distribut[ing] high weight columns per row [with] greater variance”
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`(EX1202, 1451), which involves more clumping of edges. POR 50-51.
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`The Reply (13-14) also admits that its modification breaks Ping’s constraints,
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`but claims the combination does not “prevent[] the ones from still being distributed
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`and randomly placed.” To the contrary, Ping’s teachings prevent this combination
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`in requiring “exactly one element 1 per column” to “best increase the recurrence
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`distance” and “reduce[] the correlation during … decoding.” EX1203, 38. The
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`Reply does not address how its combination would maintain these benefits.
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`C.
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`Petitioner fails to show a “message passing decoder”
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`POR (23-25) showed the petition provided no rationale to modify Ping with
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`Divsalar, MacKay or Luby’s decoder. The Reply (17-18) still does not explain
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`why a POSA would incorporate Divsalar, MacKay or Luby’s specific decoders.
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`The petition also provided no analysis for why Divsalar, MacKay or Luby’s
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`decoders would work with Ping’s code. The Reply (18) improperly attempts to
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`shift the burden to Caltech. Dr. Frey’s testimony (EX1265 ¶59) regarding Ping’s
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`decoding process is also untimely and improper, as is the Reply’s reliance on it.
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`Finally, the POR (25) pointed out that the petition ignored Claim 18’s
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`-4-
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`limitation that its decoder operate in parallel. The Reply now states that parallel
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`decoding was “conventional” and “obvious,” but provides no evidence of such.
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`D.
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`Petitioner failed to show nonuniform row weights
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`The Reply (19-20) does not dispute POR’s argument that MacKay
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`discouraged nonuniform row weight, required by claim 20. POR 25-26. Instead,
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`the Reply believes mere disclosure of nonuniform row weight is enough, but that is
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`not a suitable argument for an obviousness inquiry. Instead, there must be some
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`rationale for incorporating the nonuniform row weight that MacKay discouraged
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`and did not use. EX1202, 1449 (“weight per row as uniform as possible.”); 1451
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`(“[A]ll rows have weight 7.”). Petitioner presents no such such rationale.
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`E. No explanation for how to modify Ping to be non-systematic
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`POR (26-27) pointed out that the petition provided no rationale for
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`modifying Ping’s code to be non-systematic. The Reply does not address this
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`deficiency. Instead, the Reply (20-21) now claims making Ping’s code non-
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`systematic would have been simple, citing to Dr. Frey’s declaration (EX1265) at
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`¶29. Yet Dr. Frey’s description is not a simple one, and he provides no
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`explanation for why a POSA would make such changes. Moreover, the Reply does
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`not address the POR’s argument that making Ping non-systematic would destroy
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`Ping’s code by removing the Hd submatric from the parity-check matrix. POR 27.
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`F.
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`Reasonable expectation of success was never addressed
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`-5-
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`The POR (16-17, 46-51) points out that the petition wholly lacks discussion
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`of reasonable expectation of success or the (now conceded) unpredictability in the
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`field. As such, any discussion of reasonable expectation of success presented in the
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`Reply (e.g., 13-17) is improperly new and should be ignored. 77 Fed. Reg. 48767.
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`G. The newly proposed Hd submatrix modifications and
`corresponding experimental data should be rejected
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`Petitioner relies on newly proposed modifications to Ping’s submatrix Hd
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`and related experimental data generated by substitute expert Dr. Frey. Reply 14-17,
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`citing EX1268. The data should be disregarded for a number of reasons, not least
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`of which is that the modifications are found nowhere in the petition and the
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`experimental data has not been shown to have any relevance to Petitioner’s case.
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`First, Dr. Frey modifies Ping’s code in a way never proposed in the petition.
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`In fact, an entire section of the POR (42-45) is dedicated to discussing a critical
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`lack of specificity in the proposed modification. Whereas the petition only makes
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`a general assertion to modify Ping’s Hd submatrix to have column weights of 9 and
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`3, the experiment cited in Petitioner’s reply instead applies specific weight
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`distributions that require graphical depictions, one of which does not even have
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`column weights of 9 and 3. EX1265 ¶¶48, 52. Dr. Frey provides no explanation
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`how he arrived at these distributions and they are not taught in MacKay or Ping.
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`Notably, these weight distributions break Ping’s constraints of sub-blocks
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`-6-
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`containing “one element 1 per column” and uniform row weights (the latter of
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`which is also a constraint in MacKay), and do not at all maximize the recurrence
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`distance. EX1203, 38. Petitioner now attempts to belatedly cure a fundamental
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`defect in the petition, which should be rejected at this stage of the proceeding.
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`In addition, the experimental data materials are not contemporaneous with
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`the “relevant time” and the understanding of a POSA. It is irrelevant what Dr. Frey
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`claims he could do in the year 2018 when armed with Caltech’s disclosures, Dr.
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`Jin’s original coding work, contemporary resources (e.g., Matlab), and some 18
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`years of post-filing date knowledge. Further demonstrating use of improper
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`hindsight, Dr. Frey admits that his decoder is “like the one described in the ’032
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`patent.” EX1265, ¶46. His testimony presents zero reflection of the environment in
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`1999-2000, and provides no information as to why a POSA would make the
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`proposed modification 18 years ago or reasonably expected success at that time.
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`If surreply evidence was permitted, Caltech’s witnesses would have been
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`able to provide rebuttal testimony explaining its unreliability—including numerous
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`technical flaws, apparent cherry-picking of parameters, and selection of a weight
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`distribution that in no way flows from any prior art reference at issue in this case.
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`For example, while Dr. Frey claims that his nonuniform column weight simulation
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`files “operate[] identically” to the version corresponding to the unaltered Ping code
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`(EX1265 ¶¶49,53), examining the code files tells a different story. Dr. Frey altered
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`-7-
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`a number of parameters beyond the Hd matrix, including the Gaussian noise levels
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`applied to each simulation, the number of blocks per noise level, and even the
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`number of decoding iterations. EX1268 1, 3, 6 (“Parameters”). These differences
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`alone are sufficient to preclude meaningful comparison between the purported
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`simulations, yet are unexplained, casting doubt on the entire methodology. The
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`new data is untimely, unreliable and fails to comply with 37 C.F.R. §42.65.
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`H. New attorney-generated Tanner graphs and block diagram
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`Petitioner relies on new exhibits 1271, 1272, 1248, and 1249, purported to
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`be graphical representations of Ping and MacKay codes or implementations thereof.
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`Reply 9, 10-12. Yet these figures are not in the petition and therefore untimely.
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`Moreover, Petitioner’s argument regarding motivation to combine (Reply 8-12) is
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`illogical. Simply because Petitioner’s lawyers generated similarly-styled graphs for
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`the Reply no way demonstrates that the a POSA would have motivation to
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`combine the codes 18 years ago, or expected success in improving error-correction.
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`Furthermore, the new exhibits are erroneous and tainted with impermissible
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`hindsight. Prior to Caltech’s IRA patents, Tanner graphs were conventionally
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`presented as bipartite graphs depicting the relationship between a codeword and
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`parity-check equations. See, e.g., EX2004 ¶40; EX1204 ¶¶54-55; EX1209 p. 258.
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`III. CONCLUSION
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`Accordingly, the Reply materials should be given no weight.
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`-8-
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`Date: April 11, 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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`-9-
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`CERTIFICATE OF SERVICE
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`I certify that the foregoing Patent Owner’s Surreply was served on this 11th
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`day of April, 2018, on the Petitioner at the electronic service addresses of the
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`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: April 11, 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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