The California Institute of Technology v. Broadcom Limited et al

RESPONSE

C.D. Cal.February 21, 2019

DEFENDANTS’ RESPONSE TO CALTECH’S SUPPLEMENTAL BRIEF RE IPR ESTOPPEL CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MARK D. SELWYN (SBN 244180) mark.selwyn@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 950 Page Mill Road Palo Alto, California 94304 Tel: (650) 858-6000 Fax: (650) 858-6100 JAMES M. DOWD (SBN 259578) james.dowd@wilmerhale.com AARON S. THOMPSON (SBN 272391) aaron.thompson@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 350 South Grand Avenue, Suite 2100 Los Angeles, California 90071 Tel: (213) 443-5300 Fax: (213) 443-5400 Attorneys for Defendants and Counter- Claim Plaintiffs Broadcom Limited, Broadcom Corporation, Avago Technologies Limited, and Apple Inc. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA THE CALIFORNIA INSTITUTE OF TECHNOLOGY, Plaintiff, vs. BROADCOM LIMITED, BROADCOM CORPORATION, AVAGO TECHNOLOGIES LIMITED, AND APPLE INC., Defendants. CASE NO. 2:16-cv-3714-GW(AGRx) DEFENDANTS’ RESPONSE TO CALTECH’S SUPPLEMENTAL BRIEF REGARDING IPR ESTOPPEL Hon. George H. Wu Hearing Date: March 7, 2019 Time: 8:30 AM Place: Courtroom 9D Case 2:16-cv-03714-GW-AGR Document 903 Filed 02/21/19 Page 1 of 6 Page ID #:49455 DEFENDANTS’ RESPONSE TO CALTECH’S SUPPLEMENTAL BRIEF RE IPR ESTOPPEL CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BROADCOM LIMITED, BROADCOM CORPORATION, AVAGO TECHNOLOGIES LIMITED, AND APPLE INC., Counterclaim- Plaintiffs, vs. THE CALIFORNIA INSTITUTE OF TECHNOLOGY, Counterclaim- Defendant. Case 2:16-cv-03714-GW-AGR Document 903 Filed 02/21/19 Page 2 of 6 Page ID #:49456 -1- DEFENDANTS’ RESPONSE TO CALTECH’S SUPPLEMENTAL BRIEF RE IPR ESTOPPEL CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 The Court has twice rejected the same arguments Caltech makes in its Supplemental Brief Regarding IPR Estoppel (“Suppl. Br.”)—first, in Dkt. 830 for the ’032 and ’781 patents, and again in the February 7 Tentative Order on the ’710 patent (“Tent.”). Those decisions have accounted for multiple rounds of briefing and oral argument on the topic. (See Dkts. 767, 854, 857.) Caltech’s Supplemental Brief presents nothing new, and the Court should not change course now. As Defendants’ prior briefs show, the invalidity case against ’032 claims 11 and 18, ’781 claims 12 and 22, and ’710 claims 20 and 22 will be meaningfully different at trial from what the PTAB considered in two significant ways. First, it is based upon the different legal standard under the “known or used” prong of 35 U.S.C. § 102(a), which Defendants could not have raised in the PTAB. Second, it is based upon a different collection of evidence from that presented to the PTAB. I. OBVIOUSNESS UNDER § 102(A)’S “KNOWN OR USED” TEST IS NOT ELIGIBLE FOR IPR To prove obviousness under § 102(a)’s “known or used” prong, Defendants must prove the content of an invention that was known or used by others in the U.S. before Caltech’s patents. This is a different test, demonstrated through different evidence, from proving invalidity over a patent or printed publication. Because of these differences, “known or used” invalidity grounds are ineligible for IPR and, thus, not subject to IPR estoppel as a matter of law. 35 U.S.C. § 311(b) (limiting to “patents or printed publications”). Caltech’s superficial argument—that the claim limitations Defendants prove to be invalid through “known or used” prior art are the same as those that were at issue in the IPRs—does not alter this conclusion. The limitations of Caltech’s asserted claims have not changed. It is the legal standard for “known or used” prior art—and the evidence used to meet that standard—that are different. Those differences are what take “known or used” art beyond the realm of IPR estoppel. Case 2:16-cv-03714-GW-AGR Document 903 Filed 02/21/19 Page 3 of 6 Page ID #:49457 -2- DEFENDANTS’ RESPONSE TO CALTECH’S SUPPLEMENTAL BRIEF RE IPR ESTOPPEL CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 II. DEFENDANTS’ EVIDENCE IS DIFFERENT Caltech argues that, to be meaningfully different, Defendants’ evidence must “disclose an element of the claims not found in the printed publications.” (Br. at 3.) Caltech is wrong, and cites no law for this proposition.1 Rather, Defendants expect their trial evidence to be meaningfully different from the IPRs in several ways: First, Defendants expect Drs. Pfister, Siegel, and Frey to testify to their respective inventions. Dr. Frey will testify that he was inspired by earlier work on RA codes and irregular LDPC codes to develop his own irregular turbo-like code invention. (Dkt. 740-25 [Frey Am. Rpt. Vol. I] at ¶ 155 (“I attended the Allerton Conference in September 1998 and . . . the [RA code] presentation.”).) Dr. Frey then wrote software to test his invention and generate the data he presented at Allerton 1999. (Id. (“[W]e agreed . . . to try making an irregular version of the regular turbo-like code that was presented.”), ¶ 231 (“[We] demonstrated . . . irregular turbocodes perform better . . . .”); Dkt. 854-6 [Frey 12/4/18 Tr.] at 110:17- 111:3, 184:12-20, 185:3-23.) Dr. Frey will explain the operation of his software, and that his software met the asserted claims. (Id. at 108:2-5 (“I remember thinking, ‘Oh, I could try that out using the software I had . . . written[]’ . . . to simulate irregular turbo codes.”); id. at 110:17-111:3, 184:12-21, 185:3-23, 186:4-21.) Drs. Pfister and Siegel will similarly testify about their RAA codes invention. As Dr. Siegel’s report explains, Dr. Pfister wrote their RAA codes software in San Diego (see Dkt. 599-7 [Siegel Rpt.] at ¶¶ 86-88, 92), and Dr. Siegel presented results from that software at the 1999 Allerton Conference. (Id. at ¶¶ 57-88, 92.) Second, Defendants expect to present contemporaneous documents and 1 Tellingly, the SRAM, LLC v. RFE Holding (Can.) Corp. case that Caltech cites is not directed to a “meaningful difference” standard at all. No. 15-cv-11362, ECF No. 102 at 11-12 (N.D. Ill. Jan. 25, 2019) (Dkt. 891-2), Instead, it applied the “superior and separate” test that this Court rejected. Compare id. at 11, with (Tent. at 10.) Caltech offers no reason to revisit that rejection, and there is none. Neither 35 U.S.C. § 315(e)(2) nor any Federal Circuit case permits applying IPR estoppel simply because the “known or used” grounds are not “superior and separate” from the printed publication grounds. (Tent. at 6-7.) Case 2:16-cv-03714-GW-AGR Document 903 Filed 02/21/19 Page 4 of 6 Page ID #:49458 -3- DEFENDANTS’ RESPONSE TO CALTECH’S SUPPLEMENTAL BRIEF RE IPR ESTOPPEL CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 emails corroborating this testimony—and the features taught by Dr. Frey’s and Drs. Pfister’s and Siegel’s inventions. Dr. Frey’s email to Dr. Divsalar, for example, corroborates that his irregular repeat concept (present in Dr. Frey’s turbo-like codes) was known in the art. (Dkt. 847-3 [Email from Dr. Frey to Dr. Divsalar (Dec. 8, 1999)].) Drs. Siegel’s and Pfister’s email likewise describes key features of their RAA code invention and the simulations that Dr. Pfister ran, as well as the dissemination of this invention in the prior art. (Dkt. 854-10 [Pfister 10/7/99 Email] (“The idea of multiple 1/(1+d) sections seemed very neat so I decided to extend my work to incorporate it.”); Dkt. 854-11 [Siegel 10/5/99 Email]; Dkt. 854-12 [Lee 9/29/99 Email].) Indeed, Hui Jin (a named Caltech inventor) has conceded both his own prior knowledge of the RAA codes invention and that it disclosed features later claimed in his patents. (Dkt. 854-14 [Part 2 of Hui Jin, “Analysis and Design of Turbo-like Codes,” Cal. Inst. Of Tech. (2001)] at 46; Dkt. 854-18 [Jin Thesis] at 161 (citing Pfister Paper); (Dkt. 599-7 [Siegel Rpt.] at ¶¶ 95-96 (identifying Jin’s thesis as acknowledging prior study of RAA in the Pfister Paper).) Third, Drs. Frey and Siegel presented their respective inventions to the same audience in the same session at the same 1999 Allerton Conference. Caltech’s expert, Dr. Mitzenmacher, has now conceded that (1) the outer coder of Frey’s invention was an irregular repeater; (2) Pfister’s invention taught that “Any Code Rate r<1” could be used as its outer coder; and thus (3) a POSITA in the audience at Allerton would have known to use Dr. Frey’s irregular repeater as the outer coder of Dr. Pfister’s RAA code. (Dkt. 888-4 [11/30/18 Mitzenmacher Depo.] at 186:4- 205:5; see also Dkt. 888-5 [Mitzenmacher Rpt.] at ¶¶ 149-151, 171-172; Dkt. 772-5 [Hassibi Rpt.] at ¶¶ 136-138; Dkt. 769-7 [Divsalar Rpt.] at ¶¶ 102-103; Dkt. 900 [Shoemake Rpt.] at ¶¶ 250-263; Dkt. 740-25 [Frey Am. Rpt. Vol. 1] at ¶¶ 242-253.) None of this evidence could have been made available to the PTAB. In short, the Court’s February 7 Tentative Ruling was correct about Defendants’ “known or used” prior art grounds and should be maintained. Case 2:16-cv-03714-GW-AGR Document 903 Filed 02/21/19 Page 5 of 6 Page ID #:49459 -4- DEFENDANTS’ RESPONSE TO CALTECH’S SUPPLEMENTAL BRIEF RE IPR ESTOPPEL CASE NO. 2:16-CV-3714-GW-AGRX 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Respectfully submitted, DATED: February 21, 2019 By: /s/ James M. Dowd JAMES M. DOWD (SBN 259578) james.dowd@wilmerhale.com AARON S. THOMPSON (SBN 272391) aaron.thompson@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 350 South Grand Avenue, Suite 2100 Los Angeles, California 90071 Tel: (213) 443-5300 Fax: (213) 443-5400 MARK D. SELWYN (SBN 244180) mark.selwyn@wilmerhale.com WILMER CUTLER PICKERING HALE AND DORR LLP 950 Page Mill Road Palo Alto, California 94304 Tel: (650) 858-6000 Fax: (650) 858-6100 Attorneys for Defendants and Counter-Claim Plaintiffs Broadcom Limited, Broadcom Corporation, Avago Technologies Limited, and Apple Inc. Case 2:16-cv-03714-GW-AGR Document 903 Filed 02/21/19 Page 6 of 6 Page ID #:49460