U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
`v.
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_________________________________________
`Case IPR2017-00728
`Patent 7,421,032
`PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. § 42.123(a)
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`Apple v. California Institute of Technology
`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 7,421,032
`PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. § 42.123(a)
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
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`I.
`
`INTRODUCTION
`On September 18, 2017, the Board issued an order granting Petitioner’s
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`request to file this motion. Paper 19. Petitioner respectfully moves to submit
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`Exhibits 1227–1241 as supplemental information under 37 C.F.R. § 42.123(a).
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`The Board instituted inter partes review of claims 18–23 of U.S. Patent No.
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`7,421,032 (the “’032 patent”) on August 21, 2017 as obvious over Divsalar (1217) in
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`combination with other prior art references. Petitioner relied on Frey (1210) to
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`demonstrate a motivation to combine the prior art. Patent Owner challenged the
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`prior art status, including that of Divsalar, in its Preliminary Response. Petitioner
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`now seeks permission to file supplemental information to rebut Patent Owner’s
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`challenges and establish the prior art status of Divsalar and Frey. The supplemental
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`information Petitioner requests authorization to submit takes the form of fifteen
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`exhibits—consisting of affidavits, declarations, deposition transcripts, library
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`records, a purchase order, shipping information, and other publications—that
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`establish (1) the public accessibility of Divsalar no later than June 3, 1999, and
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`(2) the public accessibility of Frey no later than March 20, 2000.
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`Petitioner served the supplemental information on Patent Owner on July 14,
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`2017 in IPR Nos. 2017-00210 and 2017-00219 directed to a related patent, and then
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`again on August 28, 2017 in the present case and two related cases, IPR2017-00700
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`and IPR2017-00701. Petitioner asked Patent Owner on August 28, 2017 whether it
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`intended to oppose a motion to submit the supplemental information. Patent Owner,
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`however, did not respond regarding its position until September 6, 2017. Petitioner
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`then promptly submitted requests for authorization to file supplemental information
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`for all three proceedings on September 7, 2017. Patent Owner will have had over
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`three months to consider the supplemental information before it must file its Patent
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`Owner’s response. As a result, Petitioner’s submission of supplemental information
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`will neither prejudice Patent Owner nor impact the Board’s ability to complete the
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`inter partes review in a timely manner. Petitioner’s motion should therefore be
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`granted.
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`II. ARGUMENT
`A. Legal Standard
`Under 37 C.F.R. § 42.123(a), a party may submit supplemental information if:
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`(1) its “request for the authorization to file a motion to submit supplemental
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`information is made within one month of the date the trial is instituted;” and
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`(2) “[t]he supplemental information [is] relevant to a claim for which the trial has
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`been instituted.”
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`The Board has discretion to grant a motion to submit supplemental
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`information. South-Tek Sys., LLC v. Eng’rd Corrosion Solutions, LLC,
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`No. IPR2016-01351, 2017 WL 2609329, at *1 (PTAB June 15, 2017). In exercising
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`its discretion, the Board’s “guiding principle . . . is to ensure efficient administration
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`of the Office and the ability of the Office to complete IPR proceedings in a timely
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`manner.” Id. (internal quotation marks and citation omitted); see also 37 C.F.R.
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`§ 42.1(b) (requiring the Board to construe its rules “to secure the just, speedy, and
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`inexpensive resolution of every proceeding”).
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`It is Petitioner’s burden to prove it is entitled to the requested relief. 37 C.F.R.
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`§ 42.20(c).
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`B.
`Petitioner Is Entitled To Relief Under 37 C.F.R. § 42.123(a).
`Petitioner should be permitted to submit Exhibits 1227–1241 as supplemental
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`information pursuant to 37 C.F.R. § 42.123(a). Petitioner requested authorization to
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`submit its motion on September 7, 2017, and in response to that request the Board
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`held a conference call on September 14, 2017, less than one month after the Board
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`instituted inter partes review. See 37 C.F.R. § 42.123(a)(1).
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`Further, each exhibit supports the prior art status of Divsalar and/or Frey—the
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`primary piece of prior art upon which the Board instituted inter partes review and
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`prior art showing a motivation to combine the prior art—and are therefore “relevant
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`to a claim for which the [inter partes review] has been instituted.” 37 C.F.R.
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`§ 42.123(a)(2); see South-Tek Sys., 2017 WL 2609329, at *2 (“Based on the above
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`analysis, we determine that Exhibits 1028 and 1029 are relevant to this proceeding.
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`They provide a more complete record of the public availability of the EPRI
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`reference.”); Palo Alto Networks, Inc. v. Juniper Networks, Inc., No.
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`IPR2013-00369, at 3 (PTAB Feb. 5, 2014) (Paper 37) (“Evidence that allegedly
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`confirms the public accessibility of references that serve as the basis of the grounds
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`of unpatentability authorized in this proceeding is relevant to the claims . . . for
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`which this trial was instituted.”).
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`Patent Owner challenged the prior art status, including that of Divsalar, in its
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`Preliminary Response. See Paper 13 at 6, fn. 4. As detailed below, Exhibits
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`1227–1241 counter Patent Owner’s argument and establish the public accessibility
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`of Divsalar no later than June 3, 1999 and Frey no later than March 20, 2000:
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`1.
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`Library Records and Related Declarations. Exhibits 1227–1231
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`establish the dates by which Divsalar and Frey were published and/or publicly
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`available at certain libraries.
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` Exhibits 1227 and 1228 are library records from the Jet Propulsion Laboratory1
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`indicating that the 37th Annual Allerton Conference Proceedings—in which
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`Frey appeared—was published in 1999.
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` Exhibit 1229 is a library record indicating that the 36th Annual Allerton
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`Conference Proceedings—in which Divsalar appeared—was published by June
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`1 Jet Propulsion Laboratory is a division of Patent Owner. See JET PROPULSION LAB
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`| CALTECH, http://www.caltech.edu/content/jet-propulsion-laboratory (last visited
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`Aug. 4, 2017).
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
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`3, 1999.
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` Exhibit 1230 is the July 14, 2017, declaration of library expert Theodore A. Fons,
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`which explains how to interpret the above library records (i.e., Exhibits
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`1227–1229) and explains why they indicate that (1) Frey was published in 1999
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`and (2) Divsalar was published by June 3, 1999. Ex. 1230 at ¶¶ 20, 27.
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` Exhibit 1231 is the affidavit of Pamela Stansbury, an employee in the Original
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`Cataloging Unit of the Cornell University Library. Ex. 1231 at ¶ 1.
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`Ms. Stansbury states that Frey “w[as] publicly available at the Cornell University
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`Library as of March 20, 2000.” Id. at ¶ 4.
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`2.
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`36th and 37th Allerton Conferences. Exhibits 1232–1236 establish the
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`timelines associated with the 36th and 37th Allerton Conferences—at which
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`Divsalar and Frey were presented—and the subsequent publication of the
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`conference proceedings—in which Divsalar and Frey were published.
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` Exhibits 1232, 1233, and 1234 are affidavits from Dr. Bruce Hajek, Dr. Tamer
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`Basar, and Dr. Ramavarapu Sreenivas. Dr. Hajek is a six-time co-chair of the
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`Allerton Conference, including the 36th Allerton Conference (at which Divsalar
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`was presented) and the 37th Allerton Conference (at which Frey was presented),
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`Ex. 1232 at ¶ 5; Dr. Basar is a six-time co-chair of the Allerton Conference,
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`including the 36th Allerton Conference (at which Divsalar was presented),
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`Ex. 1233 at ¶ 5; Dr. Sreenivas is a two-time co-chair of the Allerton Conference,
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`including the 37th Allerton Conference (at which Frey was presented), Ex. 1234
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`at ¶ 5. Each confirms that (1) the Allerton Conference was well known to those
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`of skill in the art, well attended by those of skill in the art, and open to the public
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`for a fee, Ex. 1232 at ¶ 7, Ex. 1233 at ¶ 7, Ex. 1234 at ¶ 7; and (2) copies of the
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`Allerton Conference Proceedings would have been shipped to conference
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`attendees no later than the February following the conference—i.e., February
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`1999 for the 36th Allerton Conference Proceedings in which Divsalar appeared
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`and February 2000 for the 37th Allerton Conference Proceedings in which Frey
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`appeared, Ex. 1232 at ¶ 9, Ex. 1233 at ¶ 9, Ex. 1234 at ¶ 9. Drs. Hajek, Basar, and
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`Sreenivas attach to their affidavits a purchase order for the 37th Allerton
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`Conference Proceedings dated December 8, 1999.2 Each states that the
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`Proceedings would have shipped approximately ten weeks after the date of the
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`purchase order—i.e., on or around February 16, 2000. Ex. 1232 at ¶ 12, Ex. 1233
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`at ¶ 12, Ex. 1234 at ¶ 12. Dr. Basar further states that “it is quite likely that [he]
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`received [his] copy of the Conference Proceedings for the 36th Annual Allerton
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`Conference [which includes Divsalar] in February 1999, and [he] received [his]
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`copy of the Conference Proceedings for the 37th Annual Allerton Conference
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`[which includes Frey] in February 2000.” Ex. 1233 at ¶ 9.
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`2 The purchase order is also submitted as Exhibit 1237.
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
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` Exhibit 1235 is the July 14, 2017, declaration Dr. Brendan Frey, co-author of the
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`Frey reference. Dr. Frey confirms that (1) he presented the work described in
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`Frey at the 37th Allerton Conference—a public conference—on September 22,
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`1999, Ex. 1235 at ¶ 16; (2) Frey was publicly available on the website of
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`Dr. Frey’s co-author, Dr. David MacKay, by October 1999, id. at ¶ 18; and
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`(3) Frey was published in the 37th Allerton Conference Proceedings, which Dr.
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`Frey received in January or February 2000, id. at ¶ 17.
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` Exhibit 1236 is a screen capture of an archived version of the website for the 37th
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`Annual Allerton Conference—at which Frey was presented—dated September 9,
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`1999. The website states that copies of “[f]ull camera-ready versions of accepted
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`papers [e.g., Frey] will be due the last day of the Conference”—i.e., September
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`24, 1999.
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`3.
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`37th Allerton Conference Proceedings. Exhibits 1237–1238 establish
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`the dates by which the 37th Allerton Conference Proceedings were ordered and
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`shipped.
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` Exhibit 1237 is a purchase order for the 37th Allerton Conference Proceedings
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`dated December 8, 1999.
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` Exhibit 1238 is a bill of lading for the 37th Annual Allerton Conference
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`Proceedings with a ship date of February 21, 2000.
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`4. Witness Testimony. Exhibits 1239–1240 are excerpts from deposition
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`transcripts of Patent Owner’s experts in the litigation The California Institute of
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`Technology v. Hughes Communications, Inc., No. 2:13-cv-07245 (C.D. Cal.)
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`(“Hughes Litigation”), in which the witnesses testified regarding the public
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`availability of Divsalar and Frey.
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` Exhibit 1239 is an excerpt from the deposition of Dr. Steven Wicker in the
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`Hughes Litigation. Dr. Wicker testified that he was “reasonably sure that the
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`irregular turbo codes paper, Frey ’99, was indeed published as part of the
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`proceedings of the Allerton conference.” Ex. 1239 at 157:2–5.
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` Exhibit 1240 is an excerpt from the deposition of Dr. Rüdiger Urbanke in the
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`Hughes Litigation. Dr. Urbanke suggested that people in the field were looking
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`at Divsalar in 1999. Ex. 1240 at 168:4–21.
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`5.
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`Publication. Exhibit 1241 is a copy of the textbook Forward Error
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`Correction Based on Algebraic-Geometric Theory by Jafar A. Alzubi, Omar A.
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`Alzubi, and Thomas M. Chen. The book describes Frey as presented “[i]n 1999,”
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`Ex. 1241 at 36, and cites Frey as a 1999 publication, id. at 39.
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`Because Exhibits 1227–1241 establish the public accessibility of Frey no later than
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`March 20, 2000, and the public accessibility of Divsalar no later than June 3, 1999,
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`the exhibits support the prior art status of those references. Each exhibit is therefore
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`“relevant to a claim for which the [inter partes review] has been instituted.” 37
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`C.F.R. § 42.123(a)(2).
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`The Board consistently grants motions to submit supplemental information
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`under 37 C.F.R. § 42.123(a) where, as here, the supplemental information supports
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`the prior art status of a reference upon which the Board instituted inter partes
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`review. See, e.g., South-Tek Sys., 2017 WL 2609329; Smart Microwave Sensor
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`GmbH v. Wavetronix LLC, No. IPR2016-00488, 2016 WL 8969973 (PTAB Aug.
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`26, 2016); Creston Elecs. Inc. v. Intuitive Building Controls, Inc.,
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`No. IPR2015-01379 (PTAB Feb. 2, 2016) (Paper 27); Valeo N. Am., Inc. v. Magna
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`Elecs., Inc., No. IPR2014-01204 (PTAB Apr. 10, 2015) (Paper 26); Palo Alto
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`Networks, No. IPR2013-00369; see also TCL Corp. v. Telefonaktiebolaget LM
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`Ericsson, Nos. IPR2015-01584, -01600, 2016 WL 8969226 (PTAB Aug. 11, 2016)
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`(granting Petitioner’s motion to submit supplemental information to support prior
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`art status of reference under stricter 37 C.F.R. § 42.123(b) standard); Biomarin
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`Pharm. Inc. v. Genzyme Therapeutic Prods. Ltd. P’Ship, Nos. IPR2013-00534,
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`-00537 (PTAB Jan. 7, 2015) (Paper 80) (same).
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`C.
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`Petitioner’s submission of Exhibits 1227–1241 will in no way
`prejudice Patent Owner or negatively impact the Board’s ability to
`complete the inter partes review in a timely manner.
`The Board exercises its discretion and grants motions to submit supplemental
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`
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`information under 37 C.F.R. § 42.123(a) where such action promotes “‘the just,
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`speedy, and inexpensive resolution’ [of the] proceeding.” Creston Elecs., No.
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`IPR2015-01379, at 3 (quoting 37 C.F.R. § 42.1(b)). This is just such an instance.
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`Petitioner submitted its Petition on January 20, 2017. It included copies of
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`Frey and Divsalar as attachments to the Petition. See Exs. 1210, 1217. In view of a
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`previous Board decision denying the prior art status of Frey,3 Petitioner also
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`attached a date-stamped copy of the Table of Contents from the Proceedings of the
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`Thirty-Seventh Annual Allerton Conference on Communication, Control, and
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`Computing establishing the public accessibility of Frey no later than March 20,
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`2000. See Ex. 1210. Petitioner had no reason to believe that any information
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`beyond what was included in the Petition would be necessary to establish the prior
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`art status of Frey and Divsalar.4 The need for the information Petitioner now seeks
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`permission to submit did not become apparent until Patent Owner’s Preliminary
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`Response, in which Patent Owner challenged the prior art status, including that of
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`Divsalar. See Paper 13 at 6, fn. 4.
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`Petitioner acted promptly to address Patent Owner’s arguments. On August
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`28, 2017—only one week after the Institution of Inter Partes Review (Paper 14) and
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`3 Hughes Network Sys., LLC v. California Inst. of Tech., No. IPR2015-00067, at
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`8–11 (PTAB Apr. 27, 2015).
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`4 Indeed, the prior art status of Divsalar had already been confirmed in a prior Board
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`decision. See Hughes Network Sys., LLC v. California Inst. of Tech.,
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`No. IPR2015-00059, at 13–22 (PTAB Apr. 21, 2016) (Paper 42).
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`prior to Patent Owner’s Notice of Objection to Evidence (Paper 17)—Petitioner
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`served Patent Owner with Exhibits 1227–1241 and asked Patent Owner to consent to
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`the submission of these exhibits as supplemental information or, in the alternative, to
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`meet and confer on the issue. Patent Owner did not respond. Petitioner emailed
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`Patent Owner on September 1 and on September 6, 2017, but Patent Owner did not
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`reply until September 6. Petitioner promptly requested authorization to file this
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`motion on September 7, 2017.
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`
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`Petitioner’s submission of Exhibits 1227–1241 at this stage of the
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`proceedings will not prejudice Patent Owner or impact the schedule of this inter
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`partes review. See South-Tek Sys., 2017 WL 2609329, at *1. Patent Owner
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`dedicated only a footnote of its twenty-one-page Preliminary Response to the prior
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`art status, including that of Divsalar. Paper 13 at 6, fn. 4. Moreover, Patent Owner
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`received the supplemental information as early as July 14, 2017, when Petitioner
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`served it on Patent Owner in the related IPR Nos. 2017-00210 and 2017-00219.
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`Patent Owner will have had possession of Exhibits 1227–1241 for months before
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`Patent Owner’s Response is due and before Patent Owner has taken any discovery in
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`this proceeding. Patent Owner has had and will have ample opportunity to address
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`the reasons it believes the claims of the ’032 patent are valid over Divsalar and other
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`prior art in view of Frey, if any. As such, no change to the schedule is necessary, and
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`the Board can complete this inter partes review within the statutorily-mandated
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`eighteen months.
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`That Petitioner filed an Updated Exhibit List with replacement exhibits in this
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`proceeding should have no impact on the Board’s analysis of this motion. See Paper
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`11. As explained in Petitioner’s Unopposed Motion to Submit Replacement
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`Exhibits, the replacement exhibits correct certain clerical errors. See Paper 10 at
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`3–7. They were not supplemental information and they did not respond to Patent
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`Owner’s challenge. Nor could they have. Patent Owner did not challenge the prior
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`art status of Divsalar and Frey until May 23, 2017, over two months after Petitioner
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`filed the replacement exhibits. Petitioner’s submission of its Updated Exhibit List
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`is therefore irrelevant.
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`III. CONCLUSION
`For the above reasons, Petitioner respectfully requests that the Board grant its
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`Motion to Submit Supplemental Information Pursuant to 37 C.F.R. 42.123(a).
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`Dated: September 22, 2017
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`Respectfully Submitted,
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`/Michael Smith/
`Michael H. Smith (No. 71,190)
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`U.S. Patent No. 7,421,032
`Apple v. California Institute of Technology
`CERTIFICATE OF SERVICE
`I hereby certify that on September 22, 2017, a true and correct copy of the
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`foregoing PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
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`INFORMATION PURSUANT TO 37 C.F.R. § 42.123(a) was served via electronic
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`mail upon the following attorneys of record:
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`Michael Rosato (mrosato@wsgr.com)
`Matthew Argenti (margenti@wsgr.com)
`Richard Torczon (rtorczon@wsgr.com)
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`
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`/Michael Smith/
`Michael Smith (No. 71,190)
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