`
`Paper No. ___
`Filed: May 23, 2017
`
`
`
`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 No. 7,421,032
`
`_____________________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`TABLE OF CONTENTS
`
`I.Introduction .......................................................................................................... 1
`
`II.Claim Construction ............................................................................................. 4
`
`III.Ground 1 Fails ................................................................................................... 6
`
`A.
`
`
`
`B.
`
`
`
`C.
`
`
`Ping in view of MacKay, Divsalar, and Luby97 fails to disclose
`the irregular repetition of information bits recited in the Tanner
`graph of claim 18 ................................................................................ 7
`1. Ping already includes the “irregularity” of MacKay........................ 9
`2. MacKay fails to teach the modification proposed by Petitioner .....11
`There is no rationale for combining Ping with MacKay and
`Divsalar ............................................................................................ 12
`1. The combination of Ping with MacKay would have no effect
`because Ping is already “irregular” ................................................14
`2. Petitioner’s remaining arguments provide no motivation to combine
` ......................................................................................................16
`Ping in view of MacKay, Divsalar, and Luby97 fails to disclose
`the additional limitations of dependent claim 20 ............................... 18
`
`IV.Conclusion ....................................................................................................... 21
`
`V.Appendix .......................................................................................................... 23
`
`
`
`-i-
`
`
`
`
`I.
`
`INTRODUCTION
`
`The Board should not institute inter partes review (IPR) on claims 18-23 of
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`U.S. Patent No. 7,421,032 (“the ’032 patent”) because petitioner Apple Inc.
`
`(“Petitioner” or “Apple”) has not met its burden of showing that it has a reasonable
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`likelihood of prevailing on its sole proposed ground of unpatentability.
`
`The petition fails to establish that the cited references teach or suggest a
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`decoder configured to decode a data stream encoded with irregular repetition and
`
`permutation of message bits, as specifically recited in the claims. The cited
`
`references do not do so. The petition admits that the primary reference of Ping
`
`fails to disclose irregular repetition of message bits as claimed.1 Petitioner
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`attempts to cure this deficiency with MacKay, alleging one “would have been
`
`motivated to incorporate the irregularity disclosed in MacKay into Ping’s code.”
`
`Pet. at 41.
`
`But Petitioner incorrectly equates the “irregularity” described by MacKay
`
`and the irregular repetition in the challenged claims. As acknowledged in the
`
`petition, MacKay defines “irregular codes” as codes “whose parity check matrices
`
`have nonuniform weight per column.” Ex. 1202 at 1449; Pet. at 41. By
`
`
`1 See, e.g., Pet. at 43 (“Ping’s outer LDPC code is regular.”); see also, Pet. at 40
`
`(“Divsalar teaches regular repeat-accumulate (RA) codes rather than irregular
`
`repeat-accumulate codes as described and claimed in the ’032 patent.”).
`
`-1-
`
`
`
`
`erroneously focusing on the buzzword “irregular” without adequately addressing
`
`substance of the disclosure, the petition fails to recognize that the “irregularity”
`
`disclosed in MacKay is not the same as the claimed irregularity, i.e., irregular
`
`repetition of message bits in which at least two different subsets of message bits
`
`are repeated a different number of times. MacKay’s “parity check matrices [that]
`
`have nonuniform weight per column” are completely different than the irregular
`
`repetition of message bits, as claimed in the ’032 patent.
`
`Petitioner further fails to recognize that the “irregularity” described in
`
`MacKay is already present in Ping, and thus there would be no motivation for a
`
`person of ordinary skill to combine MacKay with Ping and such a combination
`
`would not lead to the invention claimed in the ’032 patent. Ping discloses a code
`
`with a parity check matrix H that is composed of two submatrices, Hp and Hd. But
`
`in arguing that Ping would benefit from the “irregularity” of MacKay, the petition
`
`improperly focuses only on submatrix Hd, ignoring Ping’s submatrix Hp and the
`
`parity check matrix H as a whole. Ping’s parity check matrix H, however, already
`
`illustrates nonuniform weight per column. As such, Ping’s parity check matrix
`
`already includes the “irregularity” of MacKay, thereby undermining the proffered
`
`rationale for combining the references in the first place.
`
`Submitted herewith is a declaration from Dr. R. Michael Tanner, an expert
`
`in graphical analysis of codes and the inventor of the “Tanner graph.” (Ex. 2001,
`
`-2-
`
`
`
`
`¶¶ 1-6); see also Ex. 2002.2 Dr. Tanner confirms that the “irregularity” of MacKay
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`fails to provide the irregular repetition of information bits required by the
`
`challenged claims, and further explains how the code of Ping identified by
`
`Petitioner as a regular code already exhibits the irregularity defined by MacKay,
`
`whether represented as a parity check matrix or a Tanner graph.
`
`As such, the sole proposed ground of challenge fails to demonstrate that
`
`each feature of claims 18-23 of the ’032 patent is found in the cited art. Moreover,
`
`the rationale for combining the references is unsupported and is tainted by
`
`Petitioner’s misapprehension of the reference disclosures.
`
`Accordingly, institution of inter partes review should be denied.3
`
`2 Independent claim 18 recites a Tanner graph. Dr. Tanner’s testimony is
`
`submitted to explain a deficiency in the petition materials. See e.g., Arris Group,
`
`Inc., et al. v. Mobile Telecomms. Techs., LLC, No. IPR2016-00765, Paper 12
`
`(PTAB September 21, 2016) (crediting testimony explaining the failure of the
`
`petitioner to address or recognize a deficiency in the disclosure of a cited
`
`reference).
`
`3 Petitioner acknowledges that the’032 patent was already “challenged in one
`
`petition for inter partes review.” Pet. at 3. The Board rejected this petition. See
`
`Hughes Network Systems, LLC v. California Institute of Tech., Case No. IPR2015-
`
`00060, Paper 18 (Apr. 27, 2015). The earlier Hughes IPR similarly presented
`
`-3-
`
`
`
`
`II. CLAIM CONSTRUCTION
`
`Claim 18 describes a device including a decoder configured to decode a
`
`received data stream that has been encoded in accordance with the following
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`Tanner graph:
`
`
`grounds based on Ping, Divsalar, and the Luby ’909 Patent (U.S. Patent No.
`
`6,081,909), the latter of which is similar in scope to the MacKay paper on which
`
`Petitioner relies in this instance. Compare Hughes Network Sys., Case No.
`
`IPR2015-00060, Paper 4 at 42-56 (challenging claims 1, 8, 10, 18, 19, and 22 as
`
`obvious over combinations including Divsalar and Luby ’909, some of which
`
`include Ping) with Pet. at 41-73 (challenging claims 18-23 as obvious over Ping,
`
`Divsalar, and MacKay ). Concurrent with the present petition, Petitioner filed two
`
`additional IPR petitions (IPR2017-00700 and IPR2017-00701) relying on Ping,
`
`Divsalar, MacKay, and Luby97. Petitioner’s three petitions divide the ’032 patent
`
`claim set but advance substantially identical theories of unpatentability.
`
`-4-
`
`
`
`
`
`Ex. 1201 at 9:57-10:40; see also id. at Certificate of Correction (replacing the
`
`bottom V1, U1, and X1 with Vr, Uk, and Xr, respectively). Although Petitioner
`
`provides a construction for the Tanner graph of claim 18 including three elements,
`
`in the present case no construction is necessary beyond observing that in the above
`
`Tanner graph, different subsets of message bits are repeated a different number of
`
`times. See Pet. at 55 (stating in element (i) that “at least two different subsets of
`
`message bits are repeated a different number of times”); see also id. at 28-29. This
`
`is the referenced “irregularity” of claim 18, which stands in contrast to the so-
`
`called “irregularity” of MacKay. As discussed further below, the petition defines
`
`-5-
`
`
`
`
`the “irregularity” of MacKay as nonuniform weight per column in a parity check
`
`matrix. Pet. at 44. Petitioner suggests adding the irregularity of MacKay to Ping,
`
`but fails to address that (1) Ping’s parity check matrix already includes nonuniform
`
`weight per column; and (2) the “irregularity” of MacKay is distinct from the
`
`irregular repetition of claim 18. The latter aspect can only be provided by
`
`conjecture and improper hindsight.
`
`III. GROUND 1 FAILS
`
`The petition fails to demonstrate that claims 18-23 would have been obvious
`
`over the combination of Ping (Ex. 1203) in view of MacKay (Ex. 1202), Divsalar
`
`(Ex. 1217), and Luby97 (Ex. 1208) as asserted in Ground 1 because not every
`
`limitation of the challenged claims is found in the prior art.4 In addition, the
`
`petition fails to demonstrate that a person of ordinary skill in the art would have
`
`been motivated to combine the references such that the combination of elements
`
`would have been obvious.
`
`
`4 Caltech does not concede any of the cited references qualify as prior art for
`
`this proceeding, and specifically notes that the prior art status of the cited Divsalar
`
`reference has not been established. At this stage of the proceeding, the present
`
`response focuses on other deficiencies in the petition materials.
`
`-6-
`
`
`
`
`A.
`
` Ping in view of MacKay, Divsalar, and Luby97 fails to disclose the
`irregular repetition of information bits recited in the Tanner
`graph of claim 18
`
`Petitioner asserts that Ping in view of MacKay teaches the irregular
`
`repetition of the Tanner graph in claim 18 (i.e., “at least two different subsets of
`
`message bits are repeated a different number of times”). Pet. at 55; see also id. at
`
`58. However, neither Ping nor MacKay, alone or in any combination, provide the
`
`requisite disclosure.5
`
`The Petition admits that Ping does not teach irregular repetition, and relies
`
`on MacKay for its disclosure of “irregular” coding—i.e., nonuniform weight per
`
`column. See Pet. at 58 (“Ping’s outer LDPC coder is regular. … [O]ne of ordinary
`
`skill would have been motivated to use MacKay’s irregularity in Ping, thus making
`
`Ping’s outer LDPC encoder irregular.”); see also id. at 44-45 (discussing the
`
`proposed modification).
`
`But the petition errs in equating the “irregularity” claimed (“at least two
`
`different subsets of message bits are repeated a different number of times”) with
`
`the “irregularity” of MacKay (“codes whose parity check matrices have
`
`nonuniform weight per column”). Id. at 44; see also id. at 36-37 (“Specifically,
`
`
`5 The petition does not rely on either Divsalar or Luby 97 for irregular
`
`repetition of information bits as claimed, and neither reference cures the
`
`deficiencies of Ping and MacKay.
`
`-7-
`
`
`
`
`MacKay describes irregular codes with parity check matrices having nonuniform
`
`weight per column.”). Those are two distinct concepts. As discussed in further
`
`detail below, there are many examples of codes whose parity check matrices have
`
`nonuniform weight per column yet, nonetheless, fail to provide irregular repetition
`
`of message bits. Indeed, the codes of Ping and Divsalar provide just such
`
`examples.
`
`As for MacKay, Petitioner has identified nothing in MacKay teaching
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`irregular repeats of message bits. While Petitioner cites generally to MacKay as
`
`teaching “nonuniform weight per column,” the petition identifies no instance of
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`nonuniform weight per column among information bits. See, e.g., Pet. at 36-37.
`
`The petition further cites to an example of a parity check matrix (presumably the
`
`example in Table I of MacKay) having columns of weight 9 and others of weight
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`3. Pet. at 44. But Petitioner identifies nothing in MacKay, and is unable to do so,
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`describing any disclosure or example having nonuniform weight per column
`
`among information bits in a parity check matrix such that information bits are
`
`repeated a different number of times in a coding operation.
`
`The cited references fail to disclose at least this aspect of claim 18.
`
`-8-
`
`
`
`
`1. Ping already includes the “irregularity” of MacKay
`
`As indicated above, Ping provides an example of a code whose parity check
`
`matrix has nonuniform weight per column yet, nonetheless, fails to provide
`
`irregular repetition of message bits. See also Ex. 2001 ¶¶27-32.
`
`Petitioner argues that MacKay’s “irregularity”—the nonuniform weight per
`
`column—could be added to Ping’s parity check matrix (identified in Ping as H).
`
`Pet. at 36-37, 43-44. The parity check matrix of Ping, however, already includes
`
`nonuniform weight per column, which would have been apparent had the petition
`
`not focused on only a subset of Ping’s matrix.
`
`In particular, the petition incorrectly addresses only a portion of Ping’s
`
`parity check matrix Hd, rather than the parity check matrix H. As such, the petition
`
`overlooks the fact that Ping’s parity check matrix H already includes nonuniform
`
`weight per column—i.e., the “irregularity” of MacKay.
`
`Ping’s parity check matrix H is composed of two submatrices, Hp and Hd. H
`
`has the following form:
`
`Ex. 1203 at 38; see also Pet. at 32.
`
`(cid:1)=(cid:3)(cid:1)(cid:4) (cid:1)(cid:5)(cid:6).
`
`Hd is a randomly generated matrix of ones and zeros in which each column
`
`has exactly t ones and each row has exactly kt/(n-k) ones, where k is the number of
`
`information bits and n-k is the number of parity bits. Ex. 1203 at 38. Because Hd
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`-9-
`
`
`
`
`has t ones per column, it is said to have a “column weight of t.” Ex. 1203 at 38.
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`The only value of t disclosed by Ping is 4 (see id. at 39); accordingly, Ping
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`discloses that Hd has a uniform column weight of 4. See also Ex. 2001 ¶28.
`
`Ping further discloses that Hp has a specific, deterministic structure with 1s
`
`on the diagonal and immediately below the diagonal, as follows:
`
`0
`
`
`(cid:1)(cid:4)=(cid:8)1
`
`
`1 1
`1 1(cid:13).
` ⋱ ⋱
`0
`
`
`Ex. 1203 at 38. Counting the number of ‘1s’ in each column of Hp gives two ‘1s’
`
`for each column (n-k-1 in total) except the last, which has one ‘1’ (each column
`
`has one ‘1’ on the diagonal and one ‘1’ below the diagonal; the last column does
`
`not have an entry below the diagonal, so it has just one ‘1’). This is illustrated
`
`below:
`
`See also Ex. 2001 ¶29.
`
`
`
`Putting Hp together with Hd gives a parity check matrix H that has k
`
`columns with weight 4, one column with weight 1, and (n-k-1) columns with
`
`weight 2, as shown below:
`
`-10-
`
`
`
`
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`In other words, Ping discloses a parity check matrix with different numbers of ones
`
`per column—i.e., different column weights. These variable column weights,
`
`however, indicate that there is variability between parity bits and message bits, not
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`that there is irregular repetition of the message bits themselves. See Ex. 2001 ¶30;
`
`see also id. ¶31 (explaining that a Tanner graph representation of Ping would be an
`
`“irregular” graph as defined by MacKay, despite lacking irregular repetition of
`
`information bits).
`
`Accordingly, MacKay’s disclosure of “nonuniform … column weight”
`
`describes a property that Ping’s parity check matrix already has, and which
`
`Petitioner admits does not satisfy claim 18.
`
`2. MacKay fails to teach the modification proposed by
`Petitioner
`
`To the extent Petitioner proposes modifying only Ping’s submatrix Hd in
`
`view of MacKay (see Pet. at 44), nothing in the reference teaches such a specific
`
`modification. MacKay says nothing about modifying a specific portion of a parity
`
`check matrix to provide a subset of columns with nonuniform column weights, let
`
`alone doing so for a portion specifically corresponding to information bits. As
`
`-11-
`
`
`
`
`such, MacKay provides no disclosure that would be applicable to submatrix Hd as
`
`opposed to parity check matrix H (which already includes nonuniform weight per
`
`column). Moreover, Petitioner provides no explanation as to how MacKay’s
`
`teachings would result in a modification directed only to Ping’s submatrix Hd,
`
`particularly when Ping already satisfies the definition of irregularity provided by
`
`MacKay. At best, MacKay’s teachings relate only to the overall parity check
`
`matrix, not a subset of the parity check matrix selectively modified, and therefore
`
`do not teach or suggest the modification to Ping’s submatrix Hd that Petitioner
`
`alleges.
`
`Divsalar does not remedy this deficiency, as Petitioner admits Divsalar
`
`teaches only regular repetition, and at any rate is not relied on for this claim
`
`element. See Pet. at 58. Luby97 is also not relied on in relation to this claim
`
`element, and in any event does not remedy the deficiencies of Ping, MacKay, and
`
`Divsalar. Accordingly, Petitioner has failed to show that Ping in view of MacKay
`
`and Divsalar discloses “at least two different subsets of message bits are repeated a
`
`different number of times,” as required by claim 18, and as included in dependent
`
`claims 19-23.
`
` There is no rationale for combining Ping with MacKay and
`B.
`Divsalar
`
`The proposed combination of Ping and MacKay fails because the petition
`
`fails to reasonably describe how these two references would be combined and why
`
`-12-
`
`
`
`
`one of ordinary skill in the art would have been motivated to do so. As explained
`
`below, the petition fails to provide the requisite “articulated reasoning with some
`
`rational underpinning” to support the asserted conclusion of obviousness. KSR Int’l
`
`v. Teleflex, Inc., 550 U.S. 398, 419 (2007) (citing In re Kahn, 441 F.3d 977, 988
`
`(Fed. Cir. 2006)). The stated justifications for combining the references, which are
`
`repeated in both the petition and Dr. Davis’s declaration, do not withstand scrutiny
`
`for several reasons. 6
`
`6 While Petitioner submitted the expert declaration of Dr. James A. Davis. (Ex.
`
`1204), Dr. Davis’s declaration should be given little to no weight, as it merely
`
`repeats the Petition’s arguments while adding essentially no independent facts,
`
`data, or analysis. Dr. Davis’s testimony is frequently a near-verbatim recitation of
`
`the conclusory arguments included within the Petition. E.g., compare Pet. at 43-44,
`
`with Ex. 1204, ¶¶ 114-15; compare Pet. at 30-31, with Ex. 1004, ¶ 71; compare
`
`Pet. at 45-46, with Ex. 1204, ¶¶ 117-19); see Kinetic Techs., Inc. v. Skyworks
`
`Solutions, Inc., Case No. IPR2014-00529, Paper 8 at 15 (P.T.A.B. Sept. 23, 2014)
`
`(“Merely repeating an argument from the Petition in the declaration of a proposed
`
`expert does not give that argument enhanced probative value.”); Corning Inc. v.
`
`DSM IP Assets B.V., Case No. IPR2013-00048, Paper 94 at 33 (P.T.A.B. May 9,
`
`2014) (finding that an expert’s verbatim repeating of attorney argument warrants
`
`“little weight in the absence of objective evidentiary support”).
`
`-13-
`
`
`
`
`1. The combination of Ping with MacKay would have no effect
`because Ping is already “irregular”
`
`Petitioner’s motivation to combine is premised on the idea that a “person of
`
`ordinary skill would have been motivated to incorporate the irregularity disclosed
`
`in MacKay into Ping’s code.” Pet. at 41. But as demonstrated above (see Section
`
`III.A.1), Ping’s parity check matrix already includes the “irregularity” provided in
`
`MacKay and relied upon by Petitioner (i.e., a parity check matrix with nonuniform
`
`weight per column). No modification of Ping is necessary to achieve the stated
`
`objective. As such, there is no rationale to combine the cited references.
`
`Petitioner admits that Ping’s equation is “regular” in the context of the ’032
`
`patent and does not satisfy claim 18. See, e.g., Pet. at 58 (“Ping’s outer LDPC
`
`coder is regular.”), 43 (“Ping’s outer LDPC code is regular because each column in
`
`Ping’s generator matrix Hd contains the same number of 1s—exactly ‘t’ 1s.”).
`
`Thus, Ping already discloses an “irregular” code as MacKay uses the term, yet
`
`Petitioner concedes this does not satisfy the “irregularity” recited in the claims.
`
`As described in Section III.A.1, Ping’s parity check matrix (reproduced
`
`below) is an “irregular” parity check matrix as MacKay uses the term:
`
`
`
`-14-
`
`
`
`
`In other words, Ping discloses a parity check matrix with different numbers of ones
`
`per column—i.e., different column weights.
`
`Because Ping’s parity check matrix H has different column weights (weight
`
`2, weight 1, and weight t = 4), Ping’s parity check matrix is already irregular as
`
`defined by Petitioner and MacKay. Petitioner’s failure to recognize that Ping
`
`already incorporates the irregularity of MacKay fatally undercuts the proposed
`
`rationale to combine: if there is no irregularity to add, there can be no reason to
`
`combine MacKay with Ping.
`
`To the extent the petition proposes modifications to only a portion of Ping’s
`
`parity check matrix, such partial modifications are entirely unexplained and wholly
`
`unsupported in the cited references. The petition proposes modifying Ping’s code
`
`by varying the column weights in Ping’s parity check matrix, but addresses only a
`
`portion of the parity check matrix H. Pet. at 44-45. As explained above, Ping’s Hd
`
`matrix is not a parity check matrix; it is only a portion of the parity check matrix
`
`H. See id. at 45 (“Ping’s Hd matrix is also part of Ping’s ‘parity check’ matrix H”).
`
`Ping’s parity check matrix H already includes nonuniform weight per column, i.e.,
`
`the “irregularity” of MacKay.
`
`Moreover, other than the ’032 patent itself, the cited references, including
`
`MacKay, are devoid of any teaching of modifying only a specific portion of a
`
`parity check matrix, including why or how it would be attempted. Petitioner does
`
`-15-
`
`
`
`
`not explain why varying the column weights of only a portion of Ping’s parity
`
`check matrix, rather than the entire parity check matrix as described in MacKay,
`
`would have resulted in a functional encoder, let alone one which would have
`
`predictably produced improved code performance. The Petition asserts that it
`
`“would have been straightforward” to change the column weights and it “would
`
`have been an easy way for one of ordinary skill to incorporate the irregularity
`
`disclosed by MacKay into Ping” (Pet. at 44), but these conclusory statements do
`
`not provide a reason why Ping would be particularly modified in a way no cited
`
`reference suggests, or otherwise provide a rationale to combine.
`
`2. Petitioner’s remaining arguments provide no motivation to
`combine
`
`Petitioner further argues that one of ordinary skill would have been
`
`motivated to combine Ping and MacKay because the two references use similar
`
`terminology. Pet. at 45-46. The petition cites no legal authority supporting the
`
`notion that the mere usage of similar terms in two references permits a
`
`reformulation of technical aspects in a manner suggested nowhere in the prior art.
`
`Moreover, the key similarity between MacKay and Ping’s discussion of matrices is
`
`the one thing Petitioner ignores: each reference already discloses a parity check
`
`matrix with nonuniform weight per column, neither of which teaches the irregular
`
`repetition of message bits in the manner recited in claim 18.
`
`-16-
`
`
`
`
`The remaining arguments essentially amount to assertions that the cited
`
`references are analogous art. For example, the petition argues a person of ordinary
`
`skill would have been motivated to combine Ping and MacKay because the
`
`references are “directed to the same field of endeavor.” Pet. at 41-42. However,
`
`whether prior art references are in the same field of endeavor is an inquiry best
`
`suited for determining analogous art; it is insufficient to show a rationale for
`
`combining one reference with another. See Microsoft Corp., Case No. IPR2014-
`
`00745, Paper 12 at 14 (“Petitioner’s contention that the references solve the same
`
`need is better characterized as a contention that the references are analogous art
`
`than as a rational underpinning for the proposed combination.”); TRW Auto. US
`
`LLC v. Magna Elecs. Inc., Case No. IPR2014-00263, Paper 15 at 14 (P.T.A.B.
`
`June 26, 2014) (“The mere fact that the two references are ‘in the same field of
`
`endeavor’ is not persuasive.”).
`
`The further combination of Divsalar with Ping and MacKay does not remedy
`
`the deficiencies in Ping and MacKay, either with regard to the references’
`
`teachings or with regard to the proffered motivation to combine. Divsalar discloses
`
`a code that Petitioner admits to have only regular repetition. See Pet. at 40
`
`(“Divsalar teaches regular repeat-accumulate (RA) codes rather than irregular
`
`repeat-accumulate codes as described and claimed in the ’032 patent.”). With
`
`respect to the Tanner graph of claim 18, Divsalar is relied on only to teach the
`
`-17-
`
`
`
`
`repeating of bits (Pet. at 46-48), not to supply irregularity. Accordingly, Divsalar
`
`does not remedy the deficiencies of Ping and MacKay.
`
`With regard to claim 18, Luby97 is relied on only to teach a “stream of bits”
`
`(Pet. at 48-50, 53) and decoding via “belief propagation techniques” (id. at 52), and
`
`thus is irrelevant to the “irregular repetition” element. Accordingly, Luby97 does
`
`not remedy the deficiencies of Ping and MacKay.
`
`For the foregoing reasons, Petitioner’s rationale to combine is insufficient,
`
`based on numerous false assumptions and improper hindsight, and does not
`
`support Petitioner’s Ground 1. Thus, Ground 1 is not supportable and should be
`
`rejected.
`
`C.
`
` Ping in view of MacKay, Divsalar, and Luby97 fails to disclose the
`additional limitations of dependent claim 20
`
`Claim 20 recites “wherein the message passing decoder is configured to
`
`decode the received data stream as if a number of inputs into nodes vi was not
`
`constant.” Petitioner asserts that “MacKay teaches claim 20’s additional ‘not
`
`constant’ limitation” (Pet. at 66); however, MacKay fails to teach this limitation,
`
`because MacKay’s “nonuniform row weights” describe the row weights of the
`
`whole parity check matrix, whereas Petitioner attempts to apply the concept to only
`
`the Hd portion of the parity check matrix.
`
`The petition asserts that this claim element is equivalent to requiring
`
`nonuniform row weight in the Hd matrix of Ping, and admits that Ping does not
`
`-18-
`
`
`
`
`teach this limitation. The petition admits that Ping only teaches a parity check
`
`matrix H for which the submatrix Hd has uniform weight per row. Pet. at 64
`
`(quoting Ping as teaching a fixed number (kt/(n-k)) of 1s per row); see also id. at
`
`68 (suggesting a modification of Ping to arrive at nonuniform row weight). The
`
`petition further states that “varying the row weight of Ping’s Hd matrix would
`
`make the number of inputs into the check nodes variable, as required by claim 20.”
`
`Id. at 68-69. Accordingly, the Petition turns to MacKay for this limitation.
`
`Because Petitioner again misinterprets the teachings of MacKay, Petitioner
`
`mistakenly concludes that the “nonuniform row weight” for a parity check matrix
`
`mentioned by MacKay corresponds to a “nonuniform row weight” of Hd, which is
`
`only a portion of a parity check matrix. Because MacKay only discusses a parity
`
`check matrix as a whole, it provides no teaching or suggestion of modifying the Hd
`
`portion of Ping’s parity check matrix.
`
`As with the nonuniform column weight discussed above in regard to claim
`
`18, the difference between nonuniform row weight of Hd and nonuniform row
`
`weight of H is illustrated by the fact that although Hd has uniform row weight, H
`
`does not. See also Ex. 2001 ¶¶32-36.
`
`Ping discloses that Hd has a constant column weight of t and row weight of
`
`kt/(n-k). Ex. 1203 at 38. The row weight of Hd is thus constant. Ex. 2001 ¶33. If Hd
`
`has a uniform row weight of kt/(n-k), then the row weights of each row of Ping’s
`
`-19-
`
`
`
`
`parity check matrix H is given by the row weight of Hd (kt/(n-k)) plus the row
`
`weight of Hp for that row (1 or 2). H is reproduced below, with the total weight of
`
`each row indicated:
`
`
`In other words, Ping discloses a parity check matrix with different numbers of ones
`
`per row—i.e., different row weights. In particular, the first row has weight
`
`
`(cid:14)(cid:15)
`
`(cid:3)(cid:16)(cid:17)(cid:14)(cid:6)(cid:18)1 and the remaining rows have weight (cid:14)(cid:15)(cid:3)(cid:16)(cid:17)(cid:14)(cid:6)(cid:18)2. The variable row
`
`weights, however, reflects variability in the row weights of Hp, not that there is
`
`variability of the row weights of Hd.
`
`Accordingly, as illustrated above, Ping’s parity check matrix H has different
`
`row weights. Thus, MacKay’s discussion of “nonuniform row weights” describes a
`
`property that Ping’s parity check matrix already has, and which Petitioner admits
`
`does not satisfy claim 20.
`
`Petitioner’s attempt to apply MacKay’s “nonuniform row weights” to Hd
`
`(see Pet. at 68-70) repeats the errors discussed above in Section III.A.2, and so
`
`should be disregarded for similar reasons.
`
`-20-
`
`
`
`
`Furthermore, the petition fails to establish a motivation to combine MacKay
`
`and Ping with regard to this limitation. While Petitioner asserts that introducing
`
`nonuniform row weights in Hd “would have been straightforward for a person of
`
`ordinary skill” (Pet. at 68-69), Petitioner does not give any reason that a person of
`
`ordinary skill would have been motivated to make such a change. Because the
`
`petition has not provided any reason why a person of ordinary skill would have
`
`implemented the modification proposed, it has failed to demonstrate the alleged
`
`obviousness of claim 20.
`
`Accordingly, Petitioner has failed to show that MacKay teaches “wherein
`
`the message passing decoder is configured to decode the received data stream as if
`
`a number of inputs into nodes vi was not constant,” as recited in claim 20.
`
`IV. CONCLUSION
`
`Petitioner has failed to meet its burden to show it has a reasonable likelihood
`
`of prevailing on its sole proposed ground of unpatentability. Accordingly,
`
`institution of inter partes review should be denied.
`
`Respectfully submitted,
`
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`-21-
`
`
`
`
`
`
`Date: May 23, 2017
`
`
`
`
`
`
`
`CERTIFICATE OF COMPLIANCE
`
`Pursuant to §42.24(d), the undersigned certifies that this paper contains no
`
`more than 14,000 words, not including the portions of the paper exempted by
`
`§42.24(b). According to the word-processing system used to prepare this paper, the
`
`Respectfully submitted,
`
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`paper contains 4,382 words.
`
`
`
`
`
`Date: May 23, 2017
`
`
`
`
`
`-22-
`
`
`
`
`V. APPENDIX
`
`
`
`EXHIBIT NO.
`
`DESCRIPTION
`
`Declaration of Dr. R. Michael Tanner
`
`Curriculum Vitae of Dr. R. Michael Tanner
`
`
`
`2001
`
`2002
`
`
`
`-23-
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that the foregoing Patent Owner’s Preliminary Response Pursuant to
`
`37 C.F.R. § 42.107 and Exhibits 2001 and 2002 were served on this 23rd day of
`
`May, 2017, on the Petitioner at the correspondence address of the Petitioner as
`
`follows:
`
`Richard Goldenberg
`Brian M. Seeve
`Dominic Massa
`WILMER CUTLER PICKERING HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`richard.goldenberg@wilmerhale.com
`brian.seeve@wilmerhale.com
`
`dominic.massa@wilmerhale.com
`
`Respectfully submitted,
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`
`
`
`
`
`
`Date: May 23, 2017
`
`
`
`
`
`
`
`-24-
`
`
`
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