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`Paper No. ___
`Filed: April 18, 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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`Case IPR2017-00728
`Patents 7,421,032
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`—————————————————
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`PATENT OWNER’S REPLY IN SUPPORT OF MOTION TO EXCLUDE
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`Case IPR2017-00728
`Patents 7,421,032
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`I.
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`INTRODUCTION
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`The Board should exclude the challenged evidence, including new evidence
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`in support of arguments raised for the first time in Petitioner’s Reply, including
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`new attorney-generated graphs, data, theories of unpatentability, witness testimony
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`and inexcusable failure to address reasonable expectation of success (“REOS”).
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`II. ARGUMENT
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`A. The new arguments were not a part of the petition
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`Evidence in support of arguments never advanced in the petition should be
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`excluded under FRE401-403, including EXS1244-49, 1257-61, 1265, 1268, 1271,
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`1272, 2038, and 2039. Petitioner now claims that the conclusory assertion that the
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`proposed modification was straightforward addresses a REOS. Opp. 5. Besides
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`being fundamentally deficient in content, this argument in the petition (Pet. 43-44)
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`is clearly labeled as one regarding motivation to combine, not REOS, which are
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`distinct aspects of an obviousness inquiry. DePuy Spine, Inc. v. Medtronic Sofamor
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`Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009). Moreover, Petitioner’s new
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`argument begs the question—what modification? As addressed in the POR (e.g.,
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`42-45), the petition never sufficiently identified how one would modify Ping, and
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`there are a near infinite number of ways to do so. A petition, by statute, must
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`identify its challenge “in writing and with particularity…” 35 U.S.C. §312(a)(3);
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`37 C.F.R. §§42.22(a), 42.104(b)(4)-(5); (Cf. EX2004¶110 et. seq.). Whatever little
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`-1-
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`Case IPR2017-00728
`Patents 7,421,032
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`specificity can be found in Petitioner’s vaguely proposed modification—i.e., non-
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`uniform weight per column in Ping’s Hd submatrix—violates the constraints
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`imposed by Ping and eliminates the very structure Ping proposes as providing an
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`improvement. POR 33-35. Despite the new post hoc rationale in the opposition to
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`Caltech’s motion to exclude, the petition never addressed the full content of the
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`cited references, lacked specificity in its suggested modification, and certainly
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`never addressed REOS.1
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`Petitioner does not dispute that EX1249 is improper new evidence, or that its
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`comparison with EX1248 was an improper new argument. Instead, Petitioner
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`claims EX1248 was “clearly disclosed” merely because the petition discusses an
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`example of Ping’s Hd submatrix. Opp. 4-5. But the petition never provides a
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`Tanner graph depiction of Ping’s Hd submatrix; nor does EX1248, which is
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`purportedly a Tanner graph of Ping’s entire code. It is unreasonable to believe a
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`1 Concessions by Petitioner and Dr. Davis that the field of error-correction
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`codes was highly unpredictable contradict any assertion the suggested modification
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`to Ping would have been “straightforward.” Reply 14; EX2033, 256:25-257:1-3;
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`see also EX2004 ¶¶122-125; Honeywell Int’l, Inc. v. Mexichem Amanco Holding
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`S.A., 865 F.3d 1348, 1356 (Fed. Cir. 2017).
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`-2-
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`Case IPR2017-00728
`Patents 7,421,032
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`mere discussion of Hd put Caltech on notice of a Tanner graph depiction of Ping as
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`a whole, let alone “disclosed” it.
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`Petitioner also contends that it “is entitled to respond” Caltech’s arguments
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`that the petition failed to provide evidence of simplicity or to argue REOS. Opp.
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`5-7. But petitioner misses the point—“new evidence that could have been
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`presented” and critical aspects of an obviousness inquiry must be addressed in the
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`petition. Fed. Register Vol. 77 No. 157 at 48767 (identifying improper Reply).
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`Attempting to fill an identified void or presenting an entirely new modification
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`because the original modification critically lacked specificity is not legitimate
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`Reply material. Such content is more prejudicial than probative as Caltech has no
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`meaningful opportunity to respond.
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`B. Cross-examination of witnesses does not cure Caltech’s prejudice
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`Contrary to Federal Circuit guidance, Petitioner argues that prejudice to
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`Caltech regarding EXS1244-49, 1257-61, 1265, 1268, 1271, 1272 could be cured
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`by post-reply cross-examination (and presumably observations on cross). Opp. 7-
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`11. But observations on cross-examination are not “a substitute for the opportunity
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`to present arguments and evidence.” In re Nuvasive, Inc., 841 F.3d 966, 973 (Fed.
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`Cir. 2016). And Caltech will have no opportunity to submit its own evidence to
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`rebut Petitioner’s belated evidence.
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`With particular regard to Dr. Frey and his declaration (EX1265), Petitioner
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`Case IPR2017-00728
`Patents 7,421,032
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`does not dispute that he did not consider Dr. Davis’s cross-examination. Cross-
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`examination of Dr. Frey would not cure his failure to consider the full scope of Dr.
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`Davis’s testimony in the first place.
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`As to the supplemental information, Caltech responded to the petition’s
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`assertion that Frey was published on March 20. Caltech relied on the Board’s
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`guidance that worries about Petitioner pushing an earlier publication date were
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`mere “speculat[ion]” and therefore premature. Paper 38, 3-4. Petitions require
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`more than bare notice pleading, and “on or before March 20” is simply not
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`adequate to apprise Caltech of intent to use an earlier date, let alone what that date
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`might be. Moreover, with regard to antedating, only the last date of a range of
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`dates is considered. See Oka v. Youssefyeh, 849 F.2d 581, 584 (Fed. Cir. 1988).
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`C. Dr. Davis’s unavailability remains suspect
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`Petitioner falsely claims Caltech disputes the authenticity of Dr. Davis’s
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`Fulbright scholarship. Opp. 9-10. Rather, Petitioner’s assertion of Dr. Davis’s
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`unavailability strains credulity considering that (1) Dr. Davis knew of his Fulbright
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`responsibilities by at least February 2017, a year before the Reply materials were
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`due; (2) Dr. Frey asserts that his declaration efforts took “very little time”
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`(EX1265, ¶¶41); (3) Dr. Davis testified that Petitioner’s counsel conducts most of
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`the drafting of witness testimony (EX2066 12:6-7); and (4) Dr. Davis remains
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`available for deposition in the U.S (EX1273 ¶3).
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`-4-
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`Case IPR2017-00728
`Patents 7,421,032
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`D.
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`Petitioner does not dispute EX1274 is substantive argument
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`Rather than dispute that EX1274 violated the Board’s order forbidding
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`substantive argument (Paper 41), Petitioner engages in a fallacious tu quoque
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`argument regarding Caltech’s unobjected EX2037. Opp. 11. Yet Petitioner’s
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`argument is ridiculous on its face—EX2037’s accurate descriptions that certain
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`exhibits were not disclosed prior to the depositions are not substantive arguments.
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`Petitioner’s sanctions opposition states EX1274 “detail[s] [how] Petitioner’s
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`questions were [relevant],” clearly an admission it contains substantive argument.
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`E.
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`Exhibit 1267 should not be considered in a vacuum
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`Petitioner provides no response to Caltech’s showing that, per FRE 106,
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`Exhibit 1267 should only be considered in the context of the relevant district court
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`record. Mot. 9-10. Moreover, Petitioner is wrong that Judge Pfaelzer held that
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`DVB-S2 does not practice the claims of the ’032 patent. Reply 22. Judge Pfaelzer
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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. EX1267, *5.
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`F.
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`Exhibits that Petitioner does not rely on should be excluded
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`Petitioner does not dispute that it has not relied on EXS1206, 1218, 1219,
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`1224, 1229-47 and 1257-61. Petitioner also argues EXS1206, 1244-47, 1257-61
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`should be admitted to “maintain a complete record” (Opp. 13) but does not
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`otherwise argue they are relevant. They should be excluded.
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`-5-
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`Case IPR2017-00728
`Patents 7,421,032
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`Date: April 18, 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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`-6-
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`Case IPR2017-00728
`Patents 7,421,032
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`CERTIFICATE OF SERVICE
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`I certify that the foregoing Patent Owner’s Reply in Support of Motion to
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`Exclude was served on this 18th day of April, 2018, on the Petitioner at the
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`electronic service addresses of the Petitioner as follows:
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`Richard Goldenberg
`Dominic Massa
`Michael H. Smith
`James M. Dowd
`Mark D. Selwyn
`Kelvin Chan
`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
`kelvin.chan@wilmerhale.com
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`Date: April 18, 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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