Hughes Network Systems, LLC and Hughes Communications, Inc.v.California Institute of Technology

Patent Trial and Appeal Board

Apr 27, 2015

09861102 (P.T.A.B. Apr. 27, 2015)

Trials@uspto.gov Paper 18
571-272-7822 Entered: April 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HUGHES NETWORK SYSTEMS, LLC and
HUGHES COMMUNICATIONS, INC.,
Petitioner,

v.

CALIFORNIA INSTITUTE OF TECHNOLOGY,
Patent Owner.
_______________

Case IPR2015-00067
Patent 7,116,710 B1
____________

Before KALYAN K. DESHPANDE, GLENN J. PERRY, and
TREVOR M. JEFFERSON, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Hughes Network Systems, LLC and Hughes Communications, Inc.
(collectively, “Petitioner”) filed a Corrected Petition requesting an inter
partes review of claims 1, 3, 4, 5, 6, 15, 16, 20, 21, and 22 of
U.S. Patent No. 7,116,710 B1 (Ex. 1001, “the ’710 patent”). Paper 4
(“Pet.”). California Institute of Technology (“Patent Owner”) timely filed a
Preliminary Response. Paper 13 (“Prelim. Resp.”). We have jurisdiction
under 35 U.S.C. § 314(a), which provides that an inter partes review may
not be instituted “unless . . . there is a reasonable likelihood that the
petitioner would prevail with respect to at least 1 of the claims challenged in
the petition.” After considering the Petition, the Preliminary Response, and
associated evidence, we conclude that Petitioner has not demonstrated a
reasonable likelihood that it would prevail in showing unpatentability of all
the challenged claims. Thus, we deny institution of an inter partes review of
claims 1, 3, 4, 5, 6, 15, 16, 20, 21, and 22 of the ’710 patent.
A. Related Proceedings
Petitioner indicates that the ’710 patent is the subject of the
proceedings in California Institute of Technology v. Hughes
Communications, Inc., No. 13-cv-07245 (C.D. Cal.). Pet. 1–2.
The ʼ710 patent is also the subject of IPR2015-00068. Additionally,
Petitioner indicates that the ʼ710 patent is related to U.S. Patent No.
7,421,032, U.S. Patent No. 7,916,781, and U.S. Patent No. 8,284,833, which
are the subject of IPR2015-00059, IPR2015-00060, IPR2015-00061, and
IPR2015-00081. Paper 7, 1–2.

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B. The ʼ710 Patent
The ’710 patent describes the serial concatenation of interleaved
convolutional codes forming turbo-like codes. Ex. 1001, Title. It explains
some of the prior art with reference to its Fig. 1, reproduced below.

Figure 1 is a schematic diagram of a prior “turbo code” system. Id. at 2:14–
15. The ’710 patent specification describes Figure 1 as follows:
A standard turbo coder 100 is shown in FIG. 1. A block
of k information bits is input directly to a first coder 102. A k
bit interleaver 106 also receives the k bits and interleaves them
prior to applying them to a second coder 104. The second coder
produces an output that has more bits than its input, that is, it is
a coder with rate that is less than 1. The coders 102,104 are
typically recursive convolutional coders.
Three different items are sent over the channel 150: the
original k bits, first encoded bits 110, and second encoded bits
112. At the decoding end, two decoders are used: a first
constituent decoder 160 and a second constituent decoder 162.
Each receives both the original k bits, and one of the encoded
portions 110, 112. Each decoder sends likelihood estimates of
the decoded bits to the other decoders. The estimates are used to
decode the uncoded information bits as corrupted by the noisy
channel.
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Id. at 1:38–53(emphasis omitted).
A coder 200, according to a first embodiment of the invention, is
described with respect to Figure 2, reproduced below.

Figure 2 of the ’710 patent is a schematic diagram of coder 200. Id. at2:16–
17.
The specification states that “coder 200 may include an outer coder
202, an interleaver 204, and inner coder 206.” Id. at 2:34–35. It further
states as follows.
The outer coder 202 receives uncoded data. The data
may be partitioned into blocks of fixed size, say k bits. The
outer coder may be an (n,k) binary linear block coder, where
n>k. The coder accepts as input a block u of k data bits and
produces an output block v of n data bits. The mathematical
relationship between u and v is v=T0u, where T0 is an n x k
matrix, and the rate1 of the coder is k/n.

The rate of the coder may be irregular, that is, the value
of T0 is not constant, and may differ for sub-blocks of bits in the
data block. In an embodiment, the outer coder 202 is a repeater
that repeats the k bits in a block a number of times q to produce
a block with n bits, where n=qk. Since the repeater has an
irregular output, different bits in the block may be repeated a

1 The “rate” of an encoder refers to the ratio of the number of input bits to
the number of resulting encoded output bits related to those input bits. See
Ex. 1010 ¶ 19.
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different number of times. For example, a fraction of the bits in
the block may be repeated two times, a fraction of bits may be
repeated three times, and the remainder of bits may be repeated
four times. These fractions define a degree sequence, or degree
profile, of the code.

The inner coder 206 may be a linear rate-1 coder, which
means that then-bit output block x can be written as x=TIw,
where TI is a nonsingular n x n matrix. The inner coder 210 can
have a rate that is close to 1, e.g., within 50%, more preferably
10% and perhaps even more preferably within 1% of 1.

Id. at 2:41–64 (emphasis omitted and footnote added). Codes characterized
by a regular repeat of message bits into a resulting codeword are referred to
as “regular repeat,” whereas codes characterized by irregular repeat of
message bits into a resulting codeword are referred to as “irregular
repeat.” The second (“inner”) encoder 206 performs an “accumulate”
function. Thus, the two step encoding process illustrated in Fig. 2, including
a first encoding (“outer encoding”) followed by a second encoding (“inner
encoding”), results in either a “regular repeat accumulate” (“RRA”) code or
an “irregular repeat accumulate (“IRA”) code, depending upon whether the
repetition in the first encoding is regular or irregular.
Figure 4 of the ’710 patent, reproduced below, shows an alternative
embodiment in which the first encoding is carried out by a low density
generator matrix.
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Figure 4 of the ’710 patent is a schematic of an irregular repeat and
accumulate coder using a Low density generator matrix (LDGM)2 coder. Id.
at 2:20–21, 3:25. The LDGM coder “performs an irregular repeat of the k
bits in the block, as shown in FIG. 4.” Id. at 3:52–54. LDGM codes are a
special class of low density parity check codes that allow for less encoding
and decoding complexity. LDGM codes are systematic linear codes
generated by a “sparse” generator matrix. No interleaver (as in the Figure 2
embodiment) is required in the Figure 4 embodiment because the LDGM
provides scrambling otherwise provided by the interleaver.
C. Illustrative Claim
Petitioner challenges claims 1, 3, 4, 5, 6, 15, 16, 20, 21, and 22 of the
’710 patent. Pet. 3–4. Claim 1 is illustrative of the claims at issue and is
reproduced below:
1. A method of encoding a signal, comprising:
obtaining a block of data in the signal to be
encoded;

2 A “generator” matrix (typically referred to by “G”) is used to create
(generate) codewords. A parity check matrix (typically referred to by “H”)
is used to decode a received message.
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partitioning said data block into a plurality of sub-
blocks, each sub-block including a plurality of data
elements;
first encoding the data block to from a first
encoded data block, said first encoding including
repeating the data elements in different sub-blocks a
different number of times;
interleaving the repeated data elements in the first
encoded data block; and
second encoding said first encoded data block
using an encoder that has a rate close to one.
D. The Alleged Grounds of Unpatentability
The information presented in the Petition sets forth proposed grounds
of unpatentability of claims 1, 2, 4, 6, 8, 9, 10, 11, and 13 of the ’710 patent
as follows (see Pet. 15–50):
Reference(s) Basis Claim(s) Challenged
Frey3 § 102(a) 1
Frey and Divsalar4 § 103(a) 1, 3, 4, 5, 6, 15, 16, 21, and 22
Frey, Divsalar, and Hall5 § 103(a) 15, 16, 21, and 22
Frey, Divsalar, and Ping6 § 103(a) 20
Frey, Divsalar, Ping, and
Hall § 103(a) 20

3 Brendan J. Frey and David J.C. MacKay, Irregular Turbocodes,
PROCEEDINGS OF THE 37TH ALLERTON CONFERENCE ON COMMUNICATION,
CONTROL, AND COMPUTING (1999) at 1–7 (Ex.1012, “Frey).
4 Dariush Divsalar, et al., Coding Theorems for “Turbo-Like” Codes,
THIRTY-SIXTH ANNUAL ALLERTON CONFERENCE ON COMMUNICATION,
CONTROL, AND COMPUTING, Sept. 23–25, 1998, at 201–209 (Ex. 1011,
“Divsalar”).
5 Eric K. Hall, et al., Stream-Oriented Turbo Codes, 48TH IEEE VEHICULAR
TECHNOLOGY CONFERENCE 1998 at 71-75 (Ex. 1013, “Hall”).
6 L. Ping, et al., Low Density Parity Check Codes with Semi-Random Parity
Check Matrix, 35 ELECTRONIC LETTERS 38–39, 1999 (Ex. 1014, “Ping”).
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II. ANALYSIS7
A. Grounds based, in part, on Frey
Petitioner contends that claim 1 is unpatentable under 35 U.S.C.
§ 102(a) over Frey (Pet. 15–21) and that each of the challenged claims 1, 3,
4, 5, 6, 15, 16, 20, 21, and 22 are unpatentable under 35 U.S.C. § 103(a) as
obvious over Frey in combination with other asserted prior art (Pet. 21–50).
Thus, whether Frey is a prior art printed publication is a dispositive issue in
this proceeding.
1. Frey (Ex. 1014)
Petitioner describes Frey as disclosing “a generalized two-step
irregular code involving (1) a permutation and (2) a convolution.” Pet. 10
(citing Ex. 1014 at 3–4; Figs. 1 and 2). Petitioner states that Frey was
published at least by May 11, 2000 without direct citation, citing only the
Declaration of David J.C. Mackay, Ex. 1060 ¶¶ 40–49 for indirect support.
Pet. 2. Petitioner’s list of Exhibits parenthetically notes that Frey was also
“published no later than October 8, 1999 at the website of D.J.C. MacKay.”
Pet. iii.
Patent Owner challenges the availability of Frey as a printed
publication as of the asserted date of May 11, 2000. Prelim. Resp. 21–24.
Patent Owner argues that Petitioner makes no attempt to explain or support
the contention that Frey was “published at least by May 11, 2000” other than
the reference to the declaration of D.J.C. MacKay. Id. at 22. Patent Owner

7 Patent Owner argues that, as a threshold matter, the Petition should be
dismissed because Petitioner fails to identify all real parties in interest.
Prelim. Resp. 3. Because we have determined that Petitioner has not
demonstrated a reasonable likelihood of prevailing, we need not address the
real parties in interest issue in this Decision.
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contends that Petitioner has also failed to show that Frey was publicly
accessible as of the asserted date. Id. (citing In re Wyer, 655 F.2d 221, 227
(CCPA 1981)).
Patent Owner states that the petition lacks any “discussion of the
dissemination of Frey, such that a person of ordinary skill exercising
reasonable diligence would have located this document as of the date
alleged. Nor does the petition discuss whether Frey was sufficiently
accessible to members of the public interested and ordinarily skilled in the
art before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir.
1989).” Prelim. Resp. 23.
“Whether an anticipatory document qualifies as a ‘printed publication’
under § 102 is a legal conclusion based on underlying factual
determinations.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186,
1192 (Fed .Cir. 2008) (citation omitted); see In re Klopfenstein, 380 F.3d
1345, 1347 (Fed. Cir. 2004) (“Where no facts are in dispute, the question of
whether a reference represents a ‘printed publication’ is a question of law.”)
In the present case, Petitioner has provided insufficient evidence and
supporting argument that Frey, Ex. 1012, is a printed publication that was
disseminated and sufficiently accessible to members of the public.8

8 “Because there are many ways in which a reference may be disseminated
to the interested public, ‘public accessibility’ has been called the touchstone
in determining whether a reference constitutes a ‘printed publication’ bar
under 35 U.S.C.§ 102(b).” SRI Int’l, Inc., 511 F.3d at 1194 (quoting In re
Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “A given reference is
‘publicly accessible’ upon a satisfactory showing that such document has
been disseminated or otherwise made available to the extent that persons
interested and ordinarily skilled in the subject matter or art exercising
reasonable diligence, can locate it.” Id. (quoting Bruckelmyer v. Ground
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Although Petitioner’s asserted date for publication of Frey appears to
rely on the Allerton Conference, the Declaration of Dr. David J.C.
MacKay—a co-author (with Frey) of the paper—discusses only publication
of Frey via the MacKay website (Ex. 1060 ¶ 44). Indeed, the paragraphs of
MacKay’s testimony cited by Petitioner do not state that the Frey reference
was published as part of the Allerton Conference, but merely indicates that it
was submitted for publication. Ex. 1060 ¶ 43. We also note that although
the first page of the Frey reference indicates that it was prepared for the 37th
Allerton Conference in 1999 (Ex. 1012, 1), the pages of Exhibit 1012 do not
indicate that it was taken from an Allerton Conference published proceeding
as apparent from Divsalar (Ex. 1011). Compare Frey, Ex. 1012 with
Divsalar, Ex 1011.
The silence of the Petition on whether the paper was published as part
of the Allerton Conference proceedings and whether such a publication was
received or shelved by a library is telling. Petitioner’s sole reference to the
MacKay declaration (Pet. 2, citing Ex. 1060 ¶¶ 40–49) does not provide
sufficient support for the contention that Frey was published to the interested
public as of May 11, 2000. Furthermore, the Petition provides insufficient
testimony, evidence or argument with respect to the public accessibility of
the MacKay website.

Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)); see In re Cronyn, 890
F.2d at 1160 (“[D]issemination and public accessibility are the keys to the
legal determination whether a prior art reference was ‘published.’” (quoting
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir.
1988), cert. denied, 488 U.S. 892 (1988))).
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Based on the record before us, Petitioner provides insufficient
evidence by declaration or document to establish the public accessibility of
Frey. Cf. In re Hall, 781 F.2d at 899 (examining affidavit in support of
public availability of thesis). Petitioner’s naked assertion that Frey was
published (Pet. 2) is not supported sufficiently by the record.
Because each of Petitioner’s asserted grounds of unpatentability is
based, in part, on Frey (Pet. 3–4), and Petitioner has not met its burden of
establishing that Frey is a “printed publication” and, thus, satisfies the
statutory requirement of 35 U.S.C. § 311(b), Petitioner has not shown a
reasonable likelihood of prevailing on the asserted grounds.
III. CONCLUSION
For the foregoing reasons, we determine that the information
presented in the Petition does not establish a reasonable likelihood that
Petitioner would prevail in establishing the unpatentability of: (1) claim 1 as
anticipated by Frey; (2) claims 1, 3, 4, 5, 6, 15, 16, 20, 21, and 22 as obvious
over Frey, Divsalar and Hall; (3) claims 15, 16, 211, and 22 as obvious over
Frey, Divsalar and Hall; (4) claim 20 as obvious over Frey, Divsalar, and
Ping; and (5) claim 20 as obvious over Frey, Divsalar, Ping, and Hall.
IV. ORDER
Accordingly, it is
ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
hereby denied as to all grounds raised in the Petition for the reasons stated
above and no trial is instituted.

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For PETITIONER:
Eliot Williams
eliot.williams@bakerbotts.com

G. Hopkins Guy III
hop.guy@bakerbotts.com

For PATENT OWNER:
Michael Rosato
mrosato@wsgr.com

Matthew Argenti
margenti@wsgr.com