You are on page 1of 220

Case 3:17-cv-00108-GPC-MDD Document 661 Filed 10/12/18 PageID.

60160 Page 1 of 9

1 Juanita R. Brooks, SBN 75934, brooks@fr.com
Seth M. Sproul, SBN 217711, sproul@fr.com
2 Fish & Richardson P.C.
3
12390 El Camino Real
San Diego, CA 92130
4 Phone: 858-678-5070 / Fax: 858-678-5099
5 Ruffin B. Cordell, DC Bar No. 445801, pro hac vice, cordell@fr.com
Lauren A. Degnan, DC Bar No. 452421, pro hac vice, degnan@fr.com
6 Fish & Richardson P.C.
7 1000 Main Avenue, S.W., Suite 1000
Washington, D.C. 20024
8 Phone: 202-783-5070 / Fax: 202-783-2331
9 William A. Isaacson, DC Bar No. 414788, pro hac vice, wisaacson@bsfllp.com
10
Karen L. Dunn, DC Bar No. 1002520, pro hac vice, kdunn@bsfllp.com
Boies, Schiller & Flexner LLP
11 1401 New York Avenue, N.W.
Washington, DC 20005
12 Phone: 202-237-2727 / Fax: 202-237-6131
13
Attorneys for Plaintiff and Counterclaim-Defendant Apple Inc.
14
(Additional counsel listed below signature line)
15
UNITED STATES DISTRICT COURT
16
SOUTHERN DISTRICT OF CALIFORNIA
17
IN RE: Case No. 3:17-CV-00108-GPC-MDD
18

19
QUALCOMM LITIGATION, [Consolidated with
Case No. 3:17-CV-01010-GPC-MDD]
20
EX PARTE APPLICATION TO SUPPLEMENT
21 APPLE INC. AND THE CONTRACT
MANUFACTURERS’ MOTION FOR PARTIAL
22 SUMMARY JUDGMENT THAT CERTAIN
23 PATENTS ARE UNENFORCEABLE DUE TO
EXHAUSTION AND FOR A HEARING ON
24 THAT SUPPLEMENT
25 JUDGE: Hon. Gonzalo P. Curiel
26

27

28
Case 3:17-cv-00108-GPC-MDD Document 661 Filed 10/12/18 PageID.60161 Page 2 of 9

1 TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD:
2 Apple Inc. and the Contract Manufacturers1 respectfully apply ex parte:
3 1. To file a Supplement to their Motion for Partial Summary Judgment
4 that Certain Patents Are Unenforceable Due to Exhaustion
5 (“Supplemental Motion”).
6 2. For an order that Qualcomm file any opposition to the Supplemental
7 Motion on or before October 26, 2018, and the replies to the opposition
8 be filed on or before November 2, 2018.
9 3. For advancement of the hearing on the Supplemental Motion to be
10 heard on November 9, 2018 at the same time as the original Motion for
11 Partial Summary Judgment on this issue (“Original Motion”), Dkt. 600.
12 Exhaustion of Qualcomm’s patent portfolio is a central question to the issues
13 that this Court will need to address at trial and arises in numerous claims,
14 counterclaims, and defenses. The Supplemental Motion addresses the exhaustion
15 issue in the context of a new patent that Qualcomm injected into this case through
16 its opening expert reports, and that the Court did not strike. This patent is also not
17 subject to Qualcomm’s eleventh-hour covenant not to sue and there can be no
18 question that there is a case or controversy over the exhaustion of this patent.
19 Mindful of the fact that Apple and the CMs’ request adds issues to an existing
20 motion, Apple and the CMs have structured this supplement to not repeat the
21 analysis of Qualcomm’s commercial practice contained in the pending summary
22 judgment motion, and to focus solely on the question of whether the Qualcomm
23 baseband chip substantially embodies the claims of the new patent.
24 Apple notified Qualcomm of this ex parte application on October 12, 2018.
25 Qualcomm opposes it. Although no response is necessary, if one is allowed, Apple
26 and the CMs ask Qualcomm oppose this application no later than October 16, 2018.
27
1
Compal Electronics, Inc., FIH Mobile Ltd. and Hon Hai Precision Industry Co.,
28
Ltd., Pegatron Corporation, and Wistron Corporation (or, “the CMs”).
1 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661 Filed 10/12/18 PageID.60162 Page 3 of 9

1 I. CONSISTENT WITH THIS COURT’S AUGUST 29TH ORDER,
GOOD CAUSE EXISTS FOR THE SUPPLEMENTAL MOTION
2
On August 29th this Court ordered “the deadline for dispositive motions
3
remains August 31, 2018, however the Court will entertain a motion for relief
4
following the resolution of the expert report dispute.” Dkt. 589. On September 4th
5
the Court resolved the expert report dispute. Dkt. 603. Specifically, the Court
6
struck certain opinions of Qualcomm experts on infringement, but determined that
7
other expert opinions need not be struck. Id. at 4-5. The Court allowed, inter alia,
8
for Qualcomm’s experts to maintain opinions relating to 93 additional patents
9
Qualcomm injected into this case. Those patents were unilaterally declared by
10
Qualcomm to be essential to certain cellular standards (“SEPs”), including those of
11
the European Telecommunications Standards Institute (“ETSI”).
12
Qualcomm thus put the issue of exhaustion as to those 93 SEPs squarely at
13
issue in this case. This Court noted that Qualcomm’s opinions on the 93 SEPs
14
“relate to issues of essentiality and valuation.” Id. at 4. Through its essentiality
15
opinions, Qualcomm claims that Apple products make use of the cellular standards
16
to which Qualcomm declared the 93 SEPs as essential and, consequently, claims
17
that Apple and the CMs practice the 93 SEPs. See, e.g., ETSI IPR Policy, available
18
at www.etsi.org/images/ files/IPR/etsi-ipr-policy.pdf (explaining “‘ESSENTIAL’ as
19
applied to IPR2 means that it is not possible on technical (but not commercial)
20
grounds . . . to make, sell, lease, otherwise dispose of, repair, use or operate
21
EQUIPMENT or METHODS which comply with a STANDARD without infringing
22
that IPR”); see also Dkt. 644 at 12-17. Additionally, Qualcomm relies on the 93
23
declared SEPs to bolster its portfolio’s alleged value in support of its contention that
24
its licenses and licensing demands comply with FRAND obligations. Id.
25
Accordingly, whether these patents are exhausted is now a live dispute under
26
Apple’s FAC Count LIX and the CMs’ Counterclaim Count LXVII, as well as
27
numerous other claims, counterclaims, and defenses the parties have made. Id.
28
2
“‘IPR’ shall mean any intellectual property right . . . .”
2 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661 Filed 10/12/18 PageID.60163 Page 4 of 9

1 Apple and the CMs respectfully apply ex parte to supplement their Original
2 Motion to clarify the claims, counterclaims, and defenses that are impacted by this
3 issue and to address the exhaustion of an exemplary patent of the 93 declared SEPs,
4 U.S. Patent No. 9,136,878 (“the ’878 patent”).3 Addressing this supplemental issue
5 increases the potential to streamline this case by resolving certain issues and
6 simplifying others left for the jury and the Court to decide at trial. Good cause
7 exists for this Supplemental Motion because the relevance to and status of inclusion
8 in the case of the ’878 patent (and the other 93 declared SEPs) were pending when
9 the Original Motion was filed, and therefore were not included. In addition, as
10 Qualcomm’s covenant not to sue and attendant motion for partial dismissal make
11 clear, see Dkt. 616, as well as its opposition to the Original Motion, see Dkt. 631-1
12 at 3-7, Qualcomm is desperate to avoid judicial review of its illegal business
13 practices which include forced licenses of exhausted patents. But Qualcomm cannot
14 legitimately deny that there is a case or controversy over the ’878 patent, which it
15 injected into this case in its opening expert reports. The supplement to the Original
16 Motion addresses this patent.
17 II. APPLE AND THE CMS NEED 7 PAGES FOR THE SUPPLEMENTAL
MOTION AND 3 PAGES FOR THE STATEMENT OF FACTS
18
Apple and the CMs respectfully request seven additional pages for their
19
Supplemental Motion and three additional pages for their corresponding statement
20
of undisputed material facts. Good cause exists to grant this request to allow Apple
21
and the CMs to address in a plain and concise manner one of the patents Qualcomm
22
injected into this case, and that the Court determined need not be struck. Dkt. 555-1
23
& 603. For example, the new SEP addressed in the supplement has 74 claims, all of
24
which are substantially embodied in Qualcomm’s baseband chipset. For efficiency,
25

26
3
As set forth in their rebuttal expert reports served on October 2, 2018, Apple and
27 the CMs’ experts analyzed the claims of the 93 declared SEPs for which
28 Qualcomm’s experts provided opinions and determined that more than 95% of those
claims would be substantially embodied in the Qualcomm baseband chipset.
3 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661 Filed 10/12/18 PageID.60164 Page 5 of 9

1 the supplement to the Original Motion does not repeat the argument regarding the
2 authorized sale component of the exhaustion analysis, but rather relies on the
3 Original Motion in this regard. Given the numerous claims that turn on this issue of
4 exhaustion, the requested pages are warranted.
5 III. GOOD CAUSE EXISTS TO ALLOW THE COURT TO HEAR
ARGUMENT ON BOTH THE ORIGINAL AND SUPPLEMENTAL
6 MOTIONS RELATED TO EXHAUSTION AT THE SAME TIME
7 This ex parte application is made pursuant to Local Rule 7.1(e)(1).
8 Consistent with Local Rule 7.1(e)(1), the Supplemental Motion will be filed and
9 served not later than twenty-eight days before the November 9, 2018 date set for
10 hearing on the Original Motion. Likewise, the requested opposition and reply
11 deadlines are consistent with Local Rules 7.1(e)(2) and 7.1(e)(3) because they
12 would be fourteen and seven calendar days prior to the hearing date, respectfully.
13 Good cause exists to grant this request to allow the Court to hear argument on
14 the Supplemental Motion at the same time that the Original Motion is heard. Both
15 motions are grounded in the same facts related to Qualcomm’s business practice of
16 seeking to extend its patent rights in exhausted patents. Granting this request is also
17 consistent with this Court’s August 29th order contemplating further relief following
18 resolution of the dispute regarding Qualcomm’s expert reports. Dkt. 589.
19 IV. CONCLUSION
20 Accordingly, Apple and the CMs ask that the Court (1) permit them to file a
21 supplement to their Original Motion and for the necessary pages to do so; (2) set
22 Qualcomm’s opposition to the Supplemental Motion and Motion to Supplement for
23 October 26, 2018; and (3) set the hearing for Apple and the CMs’ Supplemental
24 Motion for November 9, 2018 at 1:30 PM.
25
Dated: October 12, 2018 Respectfully submitted,
26
By: /s/ Seth M. Sproul
27 Juanita R. Brooks, SBN 75934, brooks@fr.com
Seth M. Sproul, SBN 217711, sproul@fr.com
28 Fish & Richardson P.C.

4 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661 Filed 10/12/18 PageID.60165 Page 6 of 9

1 12390 El Camino Real
San Diego, CA 92130
2 Phone: 858-678-5070 / Fax: 858-678-5099
3 Ruffin B. Cordell, DC Bar No. 445801,
4
pro hac vice, cordell@fr.com
Lauren A. Degnan, DC Bar No. 452421,
5 pro hac vice, degnan@fr.com
Fish & Richardson P.C.
6 1000 Main Avenue, S.W., Suite 1000
Washington, D.C. 20024
7 Phone: 202-783-5070 / Fax: 202-783-2331
8
William A. Isaacson, DC Bar No. 414788,
9 pro hac vice, wisaacson@bsfllp.com
Karen L. Dunn, DC Bar No. 1002520,
10 pro hac vice, kdunn@bsfllp.com
11
Boies, Schiller & Flexner LLP
1401 New York Avenue, N.W.
12 Washington, DC 20005
Phone: 202-237-2727 / Fax: 202-237-6131
13
Attorneys for Plaintiff and Counterclaim-Defendant
14 Apple Inc.
15

16 By: /s/ Jennifer J. Rho
THEODORE J. BOUTROUS, JR. (SBN 132099)
17 tboutrous@gibsondunn.com
18
DANIEL G. SWANSON (SBN 116556)
dswanson@gibsondunn.com
19 JASON C. LO (SBN 219030)
jlo@gibsondunn.com
20 JENNIFER J. RHO (SBN 254312)
jrho@gibsondunn.com
21 MELISSA PHAN (SBN 266880)
22 mphan@gibsondunn.com
GIBSON, DUNN & CRUTCHER LLP
23 333 South Grand Avenue
Los Angeles, CA 90071
24 Tel: (213) 229-7000; Fax: (213) 229-7520
25
CYNTHIA RICHMAN (DC Bar No. 492089,
26 Pro Hac Vice)
crichman@gibsondunn.com
27 GIBSON, DUNN & CRUTCHER LLP
1050 Connecticut Avenue, N.W.
28 Washington, DC 20036
5 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661 Filed 10/12/18 PageID.60166 Page 7 of 9

1 Tel: (202) 955-8500; Fax: (202) 467-0539

2 Attorneys for Defendants, Counterclaimants, and
Third-Party Plaintiffs Compal Electronics, Inc., FIH
3 Mobile Ltd., Hon Hai Precision Industry Co., Ltd.,
4
Pegatron Corporation, and Wistron Corporation

5
HUGH F. BANGASSER (Pro Hac Vice)
6 hugh.bangasser@klgates.com
CHRISTOPHER M. WYANT (Pro Hac Vice)
7 chris.wyant@klgates.com
J. TIMOTHY HOBBS (Pro Hac Vice)
8 tim.hobbs@klgates.com
9 K&L GATES LLP
925 Fourth Avenue, Suite 2900
10 Seattle, Washington 98104
Telephone: +1 206 623 7580
11 Facsimile: +1 206 370 6371
12
CAITLIN C. BLANCHE (SBN 254109)
13 caitlin.blanche@klgates.com
K&L GATES LLP
14 1 Park Plaza Twelfth Floor
Irvine, CA 92614
15 Telephone: +1 949 253 0900
16 Facsimile: +1 949 253 0902

17 Attorneys for Defendant, Counterclaimant, and Third-
Party Plaintiff Wistron Corporation
18

19

20

21

22

23

24

25

26

27

28

6 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661 Filed 10/12/18 PageID.60167 Page 8 of 9

1
FILER’S ATTESTATION
Pursuant to Section 2(f)(4) of the Electronic Case Filing Administrative
2
Policies and Procedures of the United States District Court of the Southern District
3
of California, I certify that authorization for the filing of this document has been
4
obtained from each of the other signatories shown above and that all signatories
5
have authorized placement of their electronic signature on this document.
6
Dated: October 12, 2018
7 By: s/ Seth M. Sproul
8 Seth M. Sproul
9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

7 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661 Filed 10/12/18 PageID.60168 Page 9 of 9

1 CERTIFICATE OF SERVICE
2 The undersigned hereby certifies that a true and correct copy of the above and

3 foregoing document has been served on October 12, 2018 to all counsel of record

4 who are deemed to have consented to electronic service via the Court’s CM/ECF

5 system per Civil Local Rule 5.4. Any other counsel of record will be served by

6 electronic mail, facsimile and/or overnight delivery.

7 Executed on October 12, 2018, at San Diego, California.

8
s/ Seth M. Sproul
9 Seth M. Sproul
10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

8 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-1 Filed 10/12/18 PageID.60169 Page 1 of 12

1 Juanita R. Brooks, SBN 75934, brooks@fr.com
Seth M. Sproul, SBN 217711, sproul@fr.com
2 Fish & Richardson P.C.
3 12390 El Camino Real
San Diego, CA 92130
4 Phone: 858-678-5070 / Fax: 858-678-5099
5 Ruffin B. Cordell, DC Bar No. 445801, pro hac vice, cordell@fr.com
6 Lauren A. Degnan, DC Bar No. 452421, pro hac vice, degnan@fr.com
Fish & Richardson P.C.
7 1000 Main Avenue, S.W., Suite 1000
Washington, D.C. 20024
8 Phone: 202-783-5070 / Fax: 202-783-2331
9 William A. Isaacson, DC Bar No. 414788, pro hac vice, wisaacson@bsfllp.com
10 Karen L. Dunn, DC Bar No. 1002520, pro hac vice, kdunn@bsfllp.com
Boies, Schiller & Flexner LLP
11 1401 New York Avenue, N.W.
Washington, DC 20005
12 Phone: 202-237-2727 / Fax: 202-237-6131
13
Attorneys for Plaintiff and Counterclaim-Defendant Apple Inc.
14
(Additional counsel listed below signature line)
15
UNITED STATES DISTRICT COURT
16 SOUTHERN DISTRICT OF CALIFORNIA
17
IN RE: Case No. 3:17-CV-00108-GPC-MDD
18
QUALCOMM LITIGATION, [Consolidated with
19 Case No. 3:17-CV-01010-GPC-MDD]
20 APPLE INC. AND THE CONTRACT
21 MANUFACTURERS’ MEMORANDUM OF
POINTS AND AUTHORITIES IN SUPPORT OF
22 THE SUPPLEMENT TO THEIR MOTION FOR
PARTIAL SUMMARY JUDGMENT THAT
23 CERTAIN PATENTS ARE UNENFORCEABLE
24 DUE TO EXHAUSTION

25 DATE: November 9, 2018
TIME: 1:30 p.m.
26 DEPT: 2D
JUDGE: Hon. Gonzalo P. Curiel
27
28

Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-1 Filed 10/12/18 PageID.60170 Page 2 of 12

1 I. INTRODUCTION
2 After the Court struck Qualcomm’s expert reports regarding infringement of
3 the patents-in-suit, Qualcomm served Apple with a covenant not to sue
4 (“Covenant”) on the nine patents-in-suit, in a transparent effort to moot Apple’s and
5 the CMs’ motion for partial summary judgment that Qualcomm’s patent rights are
6 exhausted by Qualcomm’s authorized sale of chipsets to the CMs. Dkt. 631-1 at 1,
7 3-7. Qualcomm’s Covenant does not moot the case or controversy in Apple’s and
8 the CMs’ original Motion for Partial Summary Judgment, Dkt. 601-1 (“Original
9 Motion”), nor does it address any of the new patents Qualcomm injected into this
10 case in its June 29, 2018 expert reports. See generally Opp’n to Mtn. for Partial
11 Dismissal, Dkt. 643. This Supplement addresses an exemplary one of those new
12 patents to illustrate how the exhaustion analysis applies equally to a patent
13 Qualcomm hand-picked for its expert reports.
14 Specifically, Qualcomm injected into this case 93 patents that it declared as
15 essential to certain cellular standards (“SEPs”). See Dkt. 555-1 at 8:2-5. Qualcomm
16 put the exhaustion of those patents squarely at issue by claiming Apple products
17 practice those patents and using them to bolster its portfolio’s alleged value in
18 support of its contention that its licenses and licensing demands comply with its
19 FRAND obligations. Dkt. 643 at 12-17. This Court reviewed opinions that
20 Qualcomm’s experts proffered concerning these declared SEPs and declined to
21 strike them. Dkt. 603 at 4-5. Given Qualcomm’s allegations about these declared
22 SEPs, whether these patents are exhausted is now a live dispute. Dkt. 643 at 12-17.
23 Apple and the CMs supplement their Original Motion to address U.S. Patent
24 No. 9,136,878 (“the ’878 patent”), the opinions for which the Court did not strike.1
25 A ruling would greatly impact the exhaustion issues affecting Qualcomm’s patent
26
27 The authorized sale component of the exhaustion analysis is set out in the
1

28 original Motion and applies equally to all patents substantially embodied in chipsets
sold by Qualcomm. That analysis is incorporated by reference herein.
1 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-1 Filed 10/12/18 PageID.60171 Page 3 of 12

1 portfolio. Unlike Qualcomm’s selection of 93 declared SEPs, Apple and the CMs
2 engaged an expert to analyze a randomly-selected, statistically significant sample of
3 the patents Qualcomm identified to Apple as its best SEPs. The ’878 patent is one
4 of those randomly-selected patents. Forty-four percent of the sampled patents are
5 situated similarly to the ’878 patent—i.e., all claims of these patents are
6 substantially embodied in the Qualcomm baseband chipset sold to the CMs for
7 incorporation into Apple products. SOF ¶ 26. Apple and the CMs’ experts also
8 analyzed the 93 cherry-picked declared SEPs and found that more than 95% are
9 substantially embodied in the Qualcomm baseband chipset based on the exemplary
10 claims Qualcomm chose to highlight in its expert reports.2 For the reasons set forth
11 below, this Court should enter summary judgment that Qualcomm’s rights in the
12 ’878 patent are exhausted by the authorized sale of its baseband chipsets to the CMs
13 as to products that incorporate those chipsets.
14 Furthermore, the exhaustion dispute in this case arises in not only Apple’s
15 First Amended Complaint Count LIX and the CMs’ Counterclaim Count LXVII, but
16 also numerous other claims, counterclaims, and defenses the parties have made.
17 Apple and the CMs also supplement their Original Motion to make clear that they
18 seek partial summary judgment on the following additional claims and defenses that
19 rely, at least in part, on the exhaustion of the Qualcomm patents described in the
20 Original Motion and this Supplement thereto:
21 Apple’s and the CMs’ Claims, Counterclaims, and Defenses
22 Apple’s FAC Count LIX & Declaration of Unenforceability Due to
CMs’ Counterclaims: Count Exhaustion
23 LXVII
24 Apple’s FAC: Count LXI Declaratory Relief: Qualcomm’s Agreements
with Apple’s Contract Manufacturers
25 CMs Counterclaims: Count XII Declaration of Unenforceability under Cal. Civ.
Code §§ 1598-99
26 Apple’s FAC Count LXIII & Violations of the California Unfair Competition
27 CMs’ Counterclaims: Count IV Law

28 2
Qualcomm’s experts did not examine all claims of each of the 93 additional
patents.
2 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-1 Filed 10/12/18 PageID.60172 Page 4 of 12

Apple’s and the CMs’ Claims, Counterclaims, and Defenses
1
Apple’s Answer: 17th, Qualcomm’s Counterclaims Are Barred as a
2 Affirmative Defense Result of Patent Exhaustion
th
3 Apple’s Answer: 20 , Qualcomm’s Counterclaims Are Barred
Affirmative Defense Because Contracts Allegedly Interfered with
4 Were Not Breached or Disrupted
Apple’s Answer: 23rd, Qualcomm’s Counterclaims Are Barred Under
5 Affirmative Defense Doctrines of Unenforceability and/or Illegality
CMs’ Answer: 6th Affirmative Qualcomm Is Not Entitled to Relief Because
6 Defense Contracts Are Illegal and Voidable
th
7 CMs’ Answer: 8 Affirmative Qualcomm Cannot Enforce the Contracts
Defense Because They Are Unconscionable
8 th
CMs’ Answer: 9 Affirmative Qualcomm Is Not Entitled to Relief Because
Defense Contracts Are Unenforceable Under California
9 Unfair Competition Laws, Business and
10 Professions Code § 17200, as Against Public
Policy, as Exhausted, and for Violating FRAND
11 Promise
th
CMs’ Answer: 12 Affirmative The CMs Are Excused from Performance on
12 Defense Contracts Because Royalty Rates Are Illegal
13 and/or in Violation of FRAND Commitment,
and/or Qualcomm’s Right to Licensing Fees for
14 Its Patents Is Exhausted
CMs’ Answer: 16th Affirmative Qualcomm Is Not Entitled to Relief Because
15 Defense Qualcomm’s Right to Licensing Fees for Its
Patents Is Exhausted
16
17 See Dkt. 643 at 15-16.
18 II. U.S. PATENT NO. 9,136,878
19 Qualcomm owns the ’878 patent. SOF ¶ 1. The ’878 patent “discloses
20 Raptor code encoding and decoding, or generating redundant symbols for an input
21 signal at an encoder that can be used at a decoder to achieve resilience against bit
22 erasures and losses during transmission.” SOF ¶ 2. According to the patent, a
23 combination of source symbols and repair symbols is received by the mobile station
24 where the received repair symbols are generated from an ordered set of source
25 symbols. SOF ¶ 3. The process includes generating a plurality of intermediate
26 symbols based on the ordered set of source symbols. SOF ¶ 4.
27 Qualcomm’s expert, Dr. Jayant, identified the alleged benefit of the ’878
28 patent to be generating the intermediate symbols and recovering source symbols to a

3 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-1 Filed 10/12/18 PageID.60173 Page 5 of 12

1 desired degree of accuracy. SOF ¶ 5. Similarly, the Patent Office indicated on
2 seventeen separate occasions during prosecution of the patent that “the novel
3 element of the instant invention” in view of “the prior art made of record” is the
4 limitation of “wherein the encoding is such that the plurality of source symbols can
5 be regenerated to the desired degree of accuracy from any predetermined number,
6 N, of a combination of the transmitted source symbols and transmitted repair
7 symbols.” SOF ¶ 6; LifeScan Scotland,, Ltd. v. Shasta Techs., LLC, 734 F.3d 1361,
8 1369 (Fed. Cir. 2013) (“What is ‘inventive’ about patent claims in the patent
9 exhaustion context is what distinguishes them from the prior art.”).
10 The method of independent claim 1 recites steps related to the encoding of
11 data and transmitting symbols over a communications channel. SOF ¶ 7. The
12 method of independent claim 29 recites steps related to the reception and decoding
13 of symbols received over a communications channel. SOF ¶ 8. A person of skill in
14 the art would recognize that such coding is for error-control purposes, which can be
15 performed by either a base station or a mobile station. SOF ¶ 9. Qualcomm opines
16 that the ’878 patent is essential to cellular communications standards which it says
17 “are directed to user equipment (‘UE’) operation, structure, and performance.” Dkt.
18 631, Ex. 30 at 465 ¶ h. In a mobile station (i.e., UE), the encoding and transmitting
19 are baseband operations. SOF ¶ 10.
20 As it relates to claim 1, to the extent that encoding and transmitting are being
21 performed by a mobile station, rather than in network infrastructure equipment, each
22 claim limitation, including the inventive aspect, would be performed by
23 functionality within a baseband chipset. SOF ¶ 11. A baseband chipset is the part
24 of a mobile station that would do the encoding such that the plurality of source
25 symbols can be regenerated to the desired degree of accuracy. SOF ¶ 12. It is also
26 the part that would transmit output symbols over the communications channel. SOF
27 ¶ 13. Even if the “transmitting” step were performed by circuitry that resides
28 outside the Qualcomm baseband chipset, “transmitting” is a standard, well-known
4 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-1 Filed 10/12/18 PageID.60174 Page 6 of 12

1 operation that is carried out using standard, well-known components such as RF
2 circuitry. SOF ¶ 14. Like the step of connecting a chipset to memory in Quanta,
3 the transmitting step here is common and noninventive. Quanta Computer, Inc. v.
4 LG Elecs., Inc., 553 U.S. 617, 634 (2008). The baseband chipset thus substantially
5 embodies claim 1 because it “carr[ies] out all the inventive processes when
6 combined, according to [its] design, with standard components” like RF circuitry
7 that enables data transmission. Id.
8 Likewise, as it relates to claim 29, to the extent that receiving and decoding
9 are being performed by a mobile station, rather than in network infrastructure
10 equipment, each claim limitation, including the inventive aspect, would be
11 performed by functionality within a baseband chipset. SOF ¶ 15. A baseband
12 chipset is the part of a mobile station that would receive symbols on the downlink
13 and do the decoding such that the plurality of source symbols can be regenerated to
14 the desired degree of accuracy. SOF ¶ 16. The baseband chipset thus substantially
15 embodies claim 29. Quanta, 553 U.S. at 634
16 Qualcomm acknowledges that the baseband chipset is the component
17 responsible for coding the data for error-control purposes. According to Dr. Jayant,
18 claim 29 is essential to LTE Release 8 in general, and specifically to the “MBMS
19 FEC scheme”3 disclosed in 3GPP TS 25.346 (v8.1.0). SOF ¶ 17. The sections of
20 the LTE standard Dr. Jayant cited in the essentiality chart address protecting data
21 through the use of forward error control (“FEC”) coding, and he relates these
22 portions of the standard to downlink communications (i.e., communications received
23 by the mobile station). SOF ¶ 19. Persons skilled in the art would understand that it
24 would not make sense to receive and decode an MBMS signal anywhere but in the
25 baseband chipset. SOF ¶ 20. Similar to an LTE signal, which is received and
26
27 3
MBMS is an abbreviation for “Multimedia Broadcast/Multicast Service,” which
28 is a part of the LTE standard that allows broadcast and multicast content to be sent
from a base station to a mobile station alongside other transmissions. SOF ¶ 18.
5 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-1 Filed 10/12/18 PageID.60175 Page 7 of 12

1 decoded in the baseband chipset, the MBMS signal would also be received and
2 decoded in the very same baseband chipset. SOF ¶ 20.
3 Qualcomm, through its expert Dr. Jayant, thus confirmed that the baseband
4 chipset performs the error-control coding on the downlink. Accordingly, there is no
5 genuine issue of material fact that the baseband chipset would substantially embody
6 independent claims 1 and 29 of the ’878 patent to the extent they are practiced by a
7 mobile station. SOF ¶ 22. Further, the only reasonable and intended use of this
8 functionality in the baseband chipset is to practice the identified inventive feature of
9 the patent. SOF ¶ 21. In fact, the baseband chipset “all but completely practice[s]
10 the patent” when it is practiced by a mobile station. Quanta, 553 U.S. at 633.
11 The dependent claims likewise would be substantially embodied in the
12 baseband chipset. They do not add any limitations that impact the substantial
13 embodiment analysis for those claims. SOF ¶ 23. Claims 2-28 further limit claim 1
14 by adding a step of precalculating and storing the systematic index (claim 2),
15 specifying the values of the systematic index (claim 3), specifying the nature of the
16 symbol relations (claims 4-5), specifying each source symbol has an ESI that
17 identifies the symbol and how the symbol relation identified by the ESI is
18 determined and used (claims 6-9), adding steps for calculating and determining
19 values to be implemented in an encoder within the baseband chipset and specifying
20 how the values are calculated and determined (claims 10-18), and specifying the
21 precoding relations (claims 19-28). SOF ¶ 23. Claims 2-28 are implemented in the
22 same structure as claim 1, and those claims would thus be substantially embodied in
23 the baseband chipset. SOF ¶ 24. Claims 30-56 depend on claim 29 and mirror
24 claims 2-28, respectively. SOF ¶ 23. The analysis of claims 30-56 follows that of
25 claims 2-28, and these claims too are substantially embodied in the baseband
26 chipset. SOF ¶ 24.
27 Claims 57, 59-61, and 65-71 depend on claim 1 and further limit that claim by
28 specifying that (a) the output symbols are placed into one or more packets for
6 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-1 Filed 10/12/18 PageID.60176 Page 8 of 12

1 transmission (claim 57), (b) the output symbols are placed into packets for
2 transmission and the contents of the packets (claims 59-61), and (c) the K source
3 symbols correspond to a source block and further defining that source block, one or
4 more source blocks can correspond to a source file and further defining that source
5 file, each of the source blocks are encoded separately from the other source blocks,
6 and the contents of the packets (claims 65-71). SOF ¶ 23. Claims 58, 62-64, and
7 72-74 mirror claims 57, 59-61, and 69-71, respectively. SOF ¶ 23. Claims 57-74
8 are implemented in the same structure as the independent claims on which they
9 depend, and those dependent claims would thus also be substantially embodied in
10 the baseband chipset. SOF ¶ 24.
11 For the foregoing reasons, Qualcomm cannot legitimately dispute that, under
12 its own essentiality analysis, the baseband chipset substantially embodies all claims
13 of the ’878 patent. SOF ¶ 25. As a result, Qualcomm’s authorized sale of chipsets
14 to the CMs exhausts Qualcomm’s patent rights in the ’878 patent with respect to
15 Apple products that incorporate those chipsets. See Quanta, 553 U.S. at 638.
16 III. CONCLUSION
17 For all the above-stated reasons, this Court should grant partial summary
18 judgment on Counts LIX, LXI, and LXIII of Apple’s Amended Complaint, Counts
19 IV, XII, and LXVII of the CMs’ Counterclaims, Apple’s 17th, 20th, and 23rd
20 Defenses to Qualcomm’s counterclaims, and the CMs’ 6th, 8th, 9th, 12th, and 16th
21 Defenses to Qualcomm’s claims, and hold that Qualcomm’s rights in the ’725, ’822,
22 ’021, and ’878 patents are exhausted by the authorized sale of its baseband chipsets
23 to the CMs as to products that incorporate those chipsets.
24
25 Dated: October 12, 2018 Respectfully submitted,
26 By: /s/ Seth M. Sproul
Juanita R. Brooks, SBN 75934, brooks@fr.com
27 Seth M. Sproul, SBN 217711, sproul@fr.com
28 Fish & Richardson P.C.
12390 El Camino Real
7 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-1 Filed 10/12/18 PageID.60177 Page 9 of 12

San Diego, CA 92130
1 Phone: 858-678-5070 / Fax: 858-678-5099
2
Ruffin B. Cordell, DC Bar No. 445801,
3 pro hac vice, cordell@fr.com
Lauren A. Degnan, DC Bar No. 452421,
4 pro hac vice, degnan@fr.com
5 Fish & Richardson P.C.
1000 Main Avenue, S.W., Suite 1000
6 Washington, D.C. 20024
Phone: 202-783-5070 / Fax: 202-783-2331
7
William A. Isaacson, DC Bar No. 414788,
8 pro hac vice, wisaacson@bsfllp.com
9 Karen L. Dunn, DC Bar No. 1002520,
pro hac vice, kdunn@bsfllp.com
10 Boies, Schiller & Flexner LLP
1401 New York Avenue, N.W.
11 Washington, DC 20005
12 Phone: 202-237-2727 / Fax: 202-237-6131

13 Attorneys for Plaintiff and Counterclaim-Defendant
Apple Inc.
14
15 By: /s/ Jennifer J. Rho
16 THEODORE J. BOUTROUS, JR. (SBN 132099)
tboutrous@gibsondunn.com
17 DANIEL G. SWANSON (SBN 116556)
dswanson@gibsondunn.com
18 JASON C. LO (SBN 219030)
19 jlo@gibsondunn.com
JENNIFER J. RHO (SBN 254312)
20 jrho@gibsondunn.com
MELISSA PHAN (SBN 266880)
21 mphan@gibsondunn.com
GIBSON, DUNN & CRUTCHER LLP
22 333 South Grand Avenue
23 Los Angeles, CA 90071
Tel: (213) 229-7000; Fax: (213) 229-7520
24
CYNTHIA RICHMAN (DC Bar No. 492089,
25 Pro Hac Vice)
26 crichman@gibsondunn.com
GIBSON, DUNN & CRUTCHER LLP
27 1050 Connecticut Avenue, N.W.
Washington, DC 20036
28 Tel: (202) 955-8500; Fax: (202) 467-0539
8 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-1 Filed 10/12/18 PageID.60178 Page 10 of
12

1 Attorneys for Defendants, Counterclaimants, and
2 Third-Party Plaintiffs Compal Electronics, Inc., FIH
Mobile Ltd., Hon Hai Precision Industry Co., Ltd.,
3 Pegatron Corporation, and Wistron Corporation
4
HUGH F. BANGASSER (Pro Hac Vice)
5 hugh.bangasser@klgates.com
6 CHRISTOPHER M. WYANT (Pro Hac Vice)
chris.wyant@klgates.com
7 J. TIMOTHY HOBBS (Pro Hac Vice)
tim.hobbs@klgates.com
8 K&L GATES LLP
925 Fourth Avenue, Suite 2900
9 Seattle, Washington 98104
10 Telephone: +1 206 623 7580
Facsimile: +1 206 370 6371
11
CAITLIN C. BLANCHE (SBN 254109)
12 caitlin.blanche@klgates.com
13 K&L GATES LLP
1 Park Plaza Twelfth Floor
14 Irvine, CA 92614
Telephone: +1 949 253 0900
15 Facsimile: +1 949 253 0902
16 Attorneys for Defendant, Counterclaimant, and Third-
17 Party Plaintiff Wistron Corporation
18
19
20
21
22
23
24
25
26
27
28
9 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-1 Filed 10/12/18 PageID.60179 Page 11 of
12

FILER’S ATTESTATION
1
Pursuant to Section 2(f)(4) of the Electronic Case Filing Administrative
2
Policies and Procedures of the United States District Court of the Southern District
3
of California, I certify that authorization for the filing of this document has been
4
obtained from each of the other signatories shown above and that all signatories
5
have authorized placement of their electronic signature on this document.
6
Dated: October 12, 2018
7 By: /s/ Seth M. Sproul
8 Seth M. Sproul
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
10 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-1 Filed 10/12/18 PageID.60180 Page 12 of
12

1 CERTIFICATE OF SERVICE
2 The undersigned hereby certifies that a true and correct copy of the above and
3 foregoing document has been served on October 12, 2018 to all counsel of record
4 who are deemed to have consented to electronic service via the Court’s CM/ECF
5 system per Civil Local Rule 5.4. Any other counsel of record will be served by
6 electronic mail, facsimile and/or overnight delivery.
7 Executed on October 12, 2018, at San Diego, California.
8
9 /s/ Seth M. Sproul
Seth M. Sproul
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
11 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-2 Filed 10/12/18 PageID.60181 Page 1 of 8

1 Juanita R. Brooks, SBN 75934, brooks@fr.com
Seth M. Sproul, SBN 217711, sproul@fr.com
2 Fish & Richardson P.C.
3 12390 El Camino Real
San Diego, CA 92130
4 Phone: 858-678-5070 / Fax: 858-678-5099
5 Ruffin B. Cordell, DC Bar No. 445801, pro hac vice, cordell@fr.com
6 Lauren A. Degnan, DC Bar No. 452421, pro hac vice, degnan@fr.com
Fish & Richardson P.C.
7 1000 Main Avenue, S.W., Suite 1000
Washington, D.C. 20024
8 Phone: 202-783-5070 / Fax: 202-783-2331
9 William A. Isaacson, DC Bar No. 414788, pro hac vice, wisaacson@bsfllp.com
10 Karen L. Dunn, DC Bar No. 1002520, pro hac vice, kdunn@bsfllp.com
Boies, Schiller & Flexner LLP
11 1401 New York Avenue, N.W.
Washington, DC 20005
12 Phone: 202-237-2727 / Fax: 202-237-6131
13
Attorneys for Plaintiff and Counterclaim-Defendant Apple Inc.
14
(Additional counsel listed below signature line)
15
UNITED STATES DISTRICT COURT
16
17 SOUTHERN DISTRICT OF CALIFORNIA

18 IN RE: Case No. 3:17-CV-00108-GPC-MDD

19 QUALCOMM LITIGATION, [Consolidated with
Case No. 3:17-CV-01010-GPC-MDD]
20
21 APPLE INC. AND THE CONTRACT
MANUFACTURERS’ STATEMENT OF
22 UNDISPUTED MATERIAL FACTS IN SUPPORT
OF THE SUPPLEMENT TO THEIR MOTION
23 FOR PARTIAL SUMMARY JUDGMENT THAT
CERTAIN PATENTS ARE UNENFORCEABLE
24 DUE TO EXHAUSTION
25
DATE: November 9, 2018
26 TIME: 1:30 p.m.
DEPT: 2D
27 JUDGE: Hon. Gonzalo P. Curiel
28

Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-2 Filed 10/12/18 PageID.60182 Page 2 of 8

1 APPLE’S SUMF AND EVIDENCE QUALCOMM’S RESPONSE
2 1. Qualcomm Inc. owns U.S. Patent No.
3 9,136,878. Ex. 1 at 1-4, 7.
4 2. The ’878 patent relates to Raptor
5 code encoding and decoding. Ex. 2 at
6 Abstract; Ex. 3 ¶ 102; Ex. 4 ¶ 7.
7 3. It deals with receiving a combination
8 of source symbols and repair symbols
9 by the mobile station (“MS”). Ex. 2 at
10 3:59-4:5; Ex. 3 ¶ 102; Ex. 4 ¶¶ 8-10.
11 4. The procedure includes generating a
12 plurality of intermediate symbols based
13 on an ordered set of source symbols.
14 Ex. 2 at 5:41-46; Ex. 3 ¶ 102.
15 5. Qualcomm identified patent benefit
16 to be generating intermediate symbols
17 and recovering source symbols to a
18 desired degree of accuracy. Ex. 3 ¶¶
19 102-03; see also Ex. 2 at 3:59-4:5.
20 6. Patent Office said the same on
21 numerous occasions. Ex. 5; see also
22 Ex. 4 ¶ 13.
23 7. Claim 1 deals with encoding of data
24 and transmitting symbols over a
25 communications channel. Ex. 4 ¶ 15.
26 8. Claim 29 deals with reception and
27 decoding of symbols received over a
28 communications channel. Ex. 4 ¶ 16.
1 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-2 Filed 10/12/18 PageID.60183 Page 3 of 8

1 9. POSITA recognizes such coding is for
2 error-control purposes. Ex. 4 ¶¶ 15-16.
3 10. In UE, encoding and transmitting
4 are baseband operations. Ex. 4 ¶ 15.
5 11. Each limitation of claim 1 would be
6 performed by a BBC. Ex. 4 ¶¶ 15, 17.
7 12. BBC does encoding. Ex. 4 ¶ 15.
8 13. BBC causes transmit of output
9 symbols. Ex. 4 ¶ 15.
10 14. Transmitting is a standard, well-
11 known operation carried out using
12 standard, well-known components such
13 as RF circuitry. Ex. 4 ¶ 15.
14 15. Each limitation of claim 29 would
15 be performed by BBC. Ex. 4 ¶¶ 16-17.
16 16. BBC receives symbols on the
17 downlink for decoding. Ex. 4 ¶ 16.
18 17. According to Qualcomm, claim 29
19 is essential to LTE Release 8 and
20 “MBMS FEC scheme” disclosed in
21 3GPP TS 25.346 (v8.1.0). Ex. 3 at
22 App. A.
23 18. MBMS allows broadcast and
24 multicast content to be sent from a base
25 station to a MS alongside other
26 transmissions. Ex. 4 ¶ 22.
27 19. Qualcomm admits ’878 patent deals
28 with protecting data through FEC
2 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-2 Filed 10/12/18 PageID.60184 Page 4 of 8

1 coding in downlink communications.
2 Ex. 3 ¶¶ 102-03, App. A.
3 20. POSITA understands that receive
4 and decode of MBMS signals done at
5 BBC like LTE signals. Ex. 4 ¶ 23.
6 21. The only reasonable and intended
7 use of this functionality in BBC is to
8 practice the inventive feature. Ex. 4 ¶
9 17.
10 22. BBC substantially embodies claims
11 1 and 29 if practiced by UE. Ex. 4 ¶ 17.
12 23. Dependent claims do not add any
13 limitations that impact substantial
14 embodiment analysis for those claims.
15 Ex. 4 ¶¶ 18-21.
16 24. The additional limitations of the
17 dependent claims would be practiced at
18 the BBC. Ex. 4 ¶¶ 18-21.
19 25. BBC substantially embodies all
20 claims of the ’878 patent if they are
21 practiced by a UE. Ex. 4 ¶¶ 17-21.
22 26. All claims of 52 of the 119 (44%)
23 randomly-selected Qualcomm patents
24 are substantially embodied in the BBC.
25 Ex. 4 ¶ 24.
26 Dated: October 12, 2018 Respectfully submitted,
27 By: /s/ Seth M. Sproul
28 Juanita R. Brooks, SBN 75934, brooks@fr.com
Seth M. Sproul, SBN 217711, sproul@fr.com
3 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-2 Filed 10/12/18 PageID.60185 Page 5 of 8

Fish & Richardson P.C.
1 12390 El Camino Real
2 San Diego, CA 92130
Phone: 858-678-5070 / Fax: 858-678-5099
3
Ruffin B. Cordell, DC Bar No. 445801,
4 pro hac vice, cordell@fr.com
5 Lauren A. Degnan, DC Bar No. 452421,
pro hac vice, degnan@fr.com
6 Fish & Richardson P.C.
1000 Main Avenue, S.W., Suite 1000
7 Washington, D.C. 20024
Phone: 202-783-5070 / Fax: 202-783-2331
8
9 William A. Isaacson, DC Bar No. 414788,
pro hac vice, wisaacson@bsfllp.com
10 Karen L. Dunn, DC Bar No. 1002520,
pro hac vice, kdunn@bsfllp.com
11 Boies, Schiller & Flexner LLP
12 1401 New York Avenue, N.W.
Washington, DC 20005
13 Phone: 202-237-2727 / Fax: 202-237-6131
14 Attorneys for Plaintiff and Counterclaim-Defendant
Apple Inc.
15
16
17 By: /s/ Jennifer J. Rho
THEODORE J. BOUTROUS, JR. (SBN 132099)
18 tboutrous@gibsondunn.com
19 DANIEL G. SWANSON (SBN 116556)
dswanson@gibsondunn.com
20 JASON C. LO (SBN 219030)
jlo@gibsondunn.com
21 JENNIFER J. RHO (SBN 254312)
jrho@gibsondunn.com
22 MELISSA PHAN (SBN 266880)
23 mphan@gibsondunn.com
GIBSON, DUNN & CRUTCHER LLP
24 333 South Grand Avenue
Los Angeles, CA 90071
25 Tel: (213) 229-7000; Fax: (213) 229-7520
26
CYNTHIA RICHMAN (DC Bar No. 492089,
27 Pro Hac Vice)
crichman@gibsondunn.com
28 GIBSON, DUNN & CRUTCHER LLP
4 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-2 Filed 10/12/18 PageID.60186 Page 6 of 8

1050 Connecticut Avenue, N.W.
1 Washington, DC 20036
2 Tel: (202) 955-8500; Fax: (202) 467-0539
3 Attorneys for Defendants, Counterclaimants, and
Third-Party Plaintiffs Compal Electronics, Inc., FIH
4 Mobile Ltd., Hon Hai Precision Industry Co., Ltd.,
5 Pegatron Corporation, and Wistron Corporation

6
HUGH F. BANGASSER (Pro Hac Vice)
7 hugh.bangasser@klgates.com
CHRISTOPHER M. WYANT (Pro Hac Vice)
8 chris.wyant@klgates.com
J. TIMOTHY HOBBS (Pro Hac Vice)
9 tim.hobbs@klgates.com
10 K&L GATES LLP
925 Fourth Avenue, Suite 2900
11 Seattle, Washington 98104
Telephone: +1 206 623 7580
12 Facsimile: +1 206 370 6371
13
CAITLIN C. BLANCHE (SBN 254109)
14 caitlin.blanche@klgates.com
K&L GATES LLP
15 1 Park Plaza Twelfth Floor
Irvine, CA 92614
16 Telephone: +1 949 253 0900
17 Facsimile: +1 949 253 0902
18 Attorneys for Defendant, Counterclaimant, and Third-
Party Plaintiff Wistron Corporation
19
20
21
22
23
24
25
26
27
28
5 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-2 Filed 10/12/18 PageID.60187 Page 7 of 8

FILER’S ATTESTATION
1
Pursuant to Section 2(f)(4) of the Electronic Case Filing Administrative
2
Policies and Procedures of the United States District Court of the Southern District
3
of California, I certify that authorization for the filing of this document has been
4
obtained from each of the other signatories shown above and that all signatories
5
have authorized placement of their electronic signature on this document.
6
Dated: October 12, 2018
7 By: /s/ Seth M. Sproul
8 Seth M. Sproul
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
6 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-2 Filed 10/12/18 PageID.60188 Page 8 of 8

1 CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true and correct copy of the above and
2
foregoing document has been served on October 12, 2018 to all counsel of record
3
who are deemed to have consented to electronic service via the Court’s CM/ECF
4
system per Civil Local Rule 5.4. Any other counsel of record will be served by
5
electronic mail, facsimile and/or overnight delivery.
6
Executed on October 12, 2018, at San Diego, California.
7
8
/s/ Seth M. Sproul
9 Seth M. Sproul
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
7 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-3 Filed 10/12/18 PageID.60189 Page 1 of 4

Juanita R. Brooks, SBN 75934, brooks@fr.com
1 Seth M. Sproul, SBN 217711, sproul@fr.com
2 Fish & Richardson P.C.
12390 El Camino Real
3 San Diego, CA 92130
Phone: 858-678-5070 / Fax: 858-678-5099
4

5 Ruffin B. Cordell, DC Bar No. 445801, pro hac vice, cordell@fr.com
Lauren A. Degnan, DC Bar No. 452421, pro hac vice, degnan@fr.com
6 Fish & Richardson P.C.
1000 Main Avenue, S.W., Suite 1000
7 Washington, D.C. 20024
Phone: 202-783-5070 / Fax: 202-783-2331
8

9 William A. Isaacson, DC Bar No. 414788, pro hac vice, wisaacson@bsfllp.com
Karen L. Dunn, DC Bar No. 1002520, pro hac vice, kdunn@bsfllp.com
10 Boies, Schiller & Flexner LLP
1401 New York Avenue, N.W.
11 Washington, DC 20005
12 Phone: 202-237-2727 / Fax: 202-237-6131

13 Attorneys for Plaintiff and Counterclaim-Defendant Apple Inc.
14 UNITED STATES DISTRICT COURT
15 SOUTHERN DISTRICT OF CALIFORNIA
16 IN RE: Case No. 3:17-CV-00108-GPC-MDD
17 QUALCOMM LITIGATION, [Consolidated with
18 Case No. 3:17-CV-01010-GPC-MDD]
19 DECLARATION OF SETH M. SPROUL IN
SUPPORT OF APPLE INC. AND THE
20
CONTRACT MANUFACTURERS’
21 SUPPLEMENT TO THEIR MOTION FOR
PARTIAL SUMMARY JUDGMENT THAT
22 CERTAIN PATENTS ARE UNENFORCEABLE
DUE TO EXHAUSTION
23

24 DATE: November 9, 2018
TIME: 1:30 p.m.
25 DEPT: 2D
JUDGE: Hon. Gonzalo P. Curiel
26

27

28

Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-3 Filed 10/12/18 PageID.60190 Page 2 of 4

1 I, Seth Sproul, declare as follows:
2 1. I am a member of Fish & Richardson P.C., counsel of record in this
3 action for Plaintiff and Counterclaim-Defendant Apple Inc. (“Apple”). I am a
4 member of the Bar of the State of California and of this Court. I have personal
5 knowledge of the matters stated in this declaration and would testify truthfully to
6 them if called upon to do so.
7 2. I make this declaration in support of Apple Inc. and the Contract
8 Manufacturers’ Supplement to Their Motion for Partial Summary Judgment That
9 Certain Patents Are Unenforceable Due To Exhaustion. I have personal knowledge
10 of the matters stated in this declaration and would testify truthfully to them if called
11 on to do so.
12 3. Attached hereto as Exhibit 1 is a true and correct copy of the Patent
13 Assignments for U.S. Patent No. 9,136,878, annotated.
14 4. Attached hereto as Exhibit 2 is a true and correct copy of U.S. Patent
15 No. 9,136,878.
16 5. Attached hereto as Exhibit 3 is a true and correct copy of excerpts from
17 the Expert Report of Dr. Nikil Jayant Regarding Qualcomm’s Patent Portfolio, dated
18 June 29, 2018.
19 6. Attached hereto as Exhibit 4 is a true and correct copy of the
20 Declaration of Dr. Matthew C. Valenti in Support of Apple and the Contract
21 Manufacturers’ Supplemental Motion for Partial Summary Judgment Due to Patent
22 Exhaustion, dated October 11, 2018.
23 7. Attached hereto as Exhibit 5 is a true and correct copy of excerpts from
24 the prosecution history of U.S. Patent No. 9,136,878.
25 I declare under penalty of perjury under the laws of the United States that the
26 foregoing is true and correct. Executed at San Diego, California on October 12, 2018.
27
/s/ Seth M. Sproul
28 Seth M. Sproul
1 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-3 Filed 10/12/18 PageID.60191 Page 3 of 4

1 CERTIFICATE OF SERVICE
2 The undersigned hereby certifies that a true and correct copy of the above and
3 foregoing document has been served on October 12, 2018 to all counsel of record
4 who are deemed to have consented to electronic service via the Court’s CM/ECF
5 system per Civil Local Rule 5.4. Any other counsel of record will be served by
6 electronic mail, facsimile and/or overnight delivery.
7 Executed on October 12, 2018, at San Diego, California
8

9
/s/ Seth M. Sproul
Seth M. Sproul
10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

2 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-3 Filed 10/12/18 PageID.60192 Page 4 of 4

TABLE OF EXHIBITS
1

2 Exhibit No. Page Nos.
3 Exhibit 1 Pages 1-7
4 Exhibit 2 Pages 8-56
5 Exhibit 3 Pages 57-70
6 Exhibit 4 Pages 71-112
7 Exhibit 5 Pages 113-182
8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

3 Case No. 3:17-CV-00108-GPC-MDD
Case 3:17-cv-00108-GPC-MDD Document 661-4 Filed 10/12/18 PageID.60193 Page 1 of 8

Exhibit 1
Case 3:17-cv-00108-GPC-MDD Document 661-4 Filed 10/12/18 PageID.60194 Page 2 of 8

504826403 03/19/2018
PATENT ASSIGNMENT COVER SHEET

Electronic Version v1 .1 EPASID:PAT4873139
Stylesheet Version v1 .2

SUBMISSION TYPE: NEW ASSIGNMENT
NATURE OF CONVEYANCE: ASSIGNMENT

CONVEYING PARTY DATA
Name Execution Date
DIGITAL FOUNTAIN, INC. 03/15/2018

RECEIVING PARTY DATA
Name: QUALCOMM INCORPORATED
Street Address: 5775 MOREHOUSE DRIVE
City: SAN DIEGO
State/Country: CALIFORNIA
Postal Code: 92121

PROPERTY NUMBERS Total: 130
Property Type Number
Application Number: 60101473
Patent Number: 6307487
Patent Number: 6320520
Patent Number: 6373406
Patent Number: 6614366
Patent Number: 7057534
Patent Number: 7233264
Patent Number: 9246633
Patent Number: 7812743
Application Number: 11841975
Application Number: 11841994
Patent Number: 7243285
Application Number: 10684133
Application Number: 09584064
Patent Number: 8131867
Patent Number: 6411223
Application Number: 60248443
Patent Number: 7072971
Patent Number: 7512697
Patent Number: 8122139

PATENT
504826403 REEL: 045641 FRAME: 0207
Exhibit 1
Page 1
Case 3:17-cv-00108-GPC-MDD Document 661-4 Filed 10/12/18 PageID.60195 Page 3 of 8

Property Type Number
Patent Number: 7030785
Patent Number: 7265688
Patent Number: 7633413
Application Number: 11842123
Application Number: 60357443
Patent Number: 7249291
Application Number: 60319597
Patent Number: 6909383
Patent Number: 7394407
Patent Number: 7532132
Patent Number: 9236885
Patent Number: RE43741
Application Number: 60526218
Application Number: 60526452
Patent Number: 7412641
Application Number: 60569127
Patent Number: 7418651
Patent Number: 9136878
Patent Number: 9236887
Application Number: 60590498
Application Number: 60600932
Patent Number: 7721184
Application Number: 12331268
Application Number: 60708865
Application Number: 60709251
Patent Number: 7660245
Patent Number: 8279755
Application Number: 60608350
Application Number: 60611062
Application Number: 60689632
Patent Number: 7644335
Application Number: 60689333
Patent Number: 7676735
Application Number: 60773185
Application Number: 60773501
Patent Number: 9136983
Application Number: 60773032
Application Number: 60773470

REEL: 045641 FRAME: 0209
Exhibit 1
Page 2
Case 3:17-cv-00108-GPC-MDD Document 661-4 Filed 10/12/18 PageID.60196 Page 4 of 8

PATENT ASSIGNMENT

WHEREAS, Digital Fountain, Inc., is a Delaware corporation having a place of business
located at 5775 Morehouse Drive, San Diego, CA 92121, U.S.A. (hereinafter "ASSIGNOR").

AND WHEREAS, QUALCOMM Incorporated, a Delaware corporation, having a place
of business located at 5775 Morehouse Drive, San Diego, California, 92121, U.S.A. (hereinafter
"ASSIGNEE"), has agreed to acquire all right, title and interest in, to and under (i) the registered
patents and patent applications identified in the Exhibit attached hereto (hereinafter the "Exhibit
1"), and all provisional applications relating thereto; (ii) all patents issuing on any patent
applications identified in the Exhibit; (iii) all reissues, reexaminations, extensions, divisionals,
renewals, continuations, continuations-in-part and counterparts (whether foreign or domestic)
claiming priority to any of the foregoing items in (i) or (ii) above, along with all patents issuing
therefrom; and (iv) all inventions and improvements claimed or described in any of the foregoing
items (i), (ii) or {iii) (subsections (i), (ii), (iii) and (iv) hereinafter collectively referred to as the
"Patent Items").

NO\V, THEREFORE, for good and valuable consideration, the receipt and sutliciency of
which is hereby acknowledged, the parties hereto agree as follows:

ASSIGNOR does hereby sell, assign, transfer, convey and deliver unto ASSIGNEE, its
successors, legal representatives and assigns, its entire right, title and interest throughout the world
in, to and under the Patent Items, including without limitation all foreign patents and any rights of
priority based on or relating to the Patent Items.

AND ASSIGNOR hereby authorizes and requests the Commissioner of Patents of the
United States of America, and any Official of any country or countries foreign to the United States
of America, whose duty it is to issue patents on applications, to issue all patents for the Patent
Items to ASSIGNEE, its successors, legal representativ®s and assigns, in accordance with the terms
of this Patent Assigmnent.

AND ASSIGNOR hereby sells, assigns, transfers, conveys and delivers to ASSIGNEE, its
successors., legal representatives and assigns, all rights of enforcement, all claims for damages and
all remedies arising out of, relating to or resulting from the Patent Items or any violation(s) thereof,
whether accrued prior to the date of this Patent Assignment or hereafter, including but not limited
to the right to sue for, seek, collect, recover and retain damages and any other relief arising out of
or resulting from any past, present or future infringement or violation of any of the Patent Items,
and all other rights; including common law rights, that ASSIGNOR may have relating to the Patent
Items, including but not limited to any ongoing or prospective royalties to which ASSIGNOR may
be entitled, or that ASSIGNOR may collect for any infringements of any of the Patent Items or
from any settlement or agreement related to the Patent Items arising before or after the date of this
Patent Agreement, such rights to be held and enjoyed by ASSIGNEE, its successors, legal
representatives and assigns, as fully and entirely as the same would have been held and enjoyed
by ASSIGNOR if this Patent Assignment had not been made.

Patent Assignment [DFI to QCI] 1of43

PATENT
REEL: 045641 FRAME: 0213
Exhibit 1
Page 3
Case 3:17-cv-00108-GPC-MDD Document 661-4 Filed 10/12/18 PageID.60197 Page 5 of 8

AND ASSIGNOR hereby agrees that upon the written request of ASSIGNEE,
ASSIGNOR will communicate promptly to ASSIGNEE, its successors, legal representatives and
assigns, all facts known to ASSIGNOR respecting the Patent Items, and will testify in any legal
proceeding, sign all lawful papers, transfer all file histories, make diligent effort to find or reach
every inventor of the Patent Items necessary or appropriate in connection with preparation of any
lawful document or proceeding relating to the Patent Items, make reasonab1e efforts to obtain all
necessary or appropriate signed and executed documents relating to the Patent Items from every
inventor named in the Patent Items, make all rightful declarations and/or oaths and generally do
everything possible to aid ASSIGNEE, its successors, legal representatives and assigns, to obtain
and enforce patent protection for the Patent Items on a worldwide basis in all countries.
ASSIGNEE further covenants and agrees that it will wholly refrain from challenging the validity,
enforceability or scope of the Patent Items, whether through opposition, re-examination and/or
court proceedings.

[Remainder ofPage Intentionally Left Blank]

Patent Assignment [DFI to QCI] 2 of 43

PATENT
REEL: 045641 FRAME: 0214
Exhibit 1
Page 4
Case 3:17-cv-00108-GPC-MDD Document 661-4 Filed 10/12/18 PageID.60198 Page 6 of 8

IN WITNESS WHEREOF, I hereunto set my hand this s· <day of March 2018.
Digital Fountain, Inc.

Printed Name: David T. Marr

Title: Vice President

ACKNOWLEDGMENT
A notary public or other officer completing this certificate
verifies only the identity of the individual who signed the
document to which this certificate is attached, and not the
trnthfulness, accuracy, or validity of that document.

) .... :'\ ' \ . .~"'' '
On _}'.:J&lLCh_ i S !--,?~'.?_{~~~-- before me, _ _ _F_,..._!_·_L_. _C_'-,__
/\_i_1:>_-f_·t_·:'.._v_,q_'_/_··"_}·'_·'_'.:·i_i_i_z_:_ _
t_.--'_..i_;

(insert name and title of thi officer)

personally appeared David T. Marr , who proved to me on the basis of satisfactory evidence to
be the person(s) whose name(Bj is/'*'8 subscribed to the within instrnment and acknowledged to me that
he/she/they executed the same in his/her/their authorized capacity(ies), and that by his/her/their signature(-s)
on the instrument the person(5), or the entity upon behalf of which the person(Bj acted, executed the
instrument.

I certify under PENALTY OF PERJURY tmder the laws of the State of California that the foregoing
paragraph is trne and correct.
WITNESS my hand and offJ.cial seal. ~.ltmA
,/ ~
C~§!oo ti 2129527

. ./_·__,:;_~ ?_'(_~: ·_·~._~:..._·~_~:f_·~.-,_·l~«-~,_·- _- _ __
Signature __l_f{_
4 ~w ~ ~
$an~C~
omlf@fms
(Seal)

IN WITNESS WHEREOF, acknowledged and accepted on this /~/t.;day of March 2018.
On Behalf of QUALCOMM Incorporated

~~
Printed Name: Adam P. Schwenk.er

Title: V.P., Assistant Secretary

Patent Assignment [DFI to QCI] 3of43

PATENT
REEL: 045641 FRAME: 0215
Exhibit 1
Page 5
Case 3:17-cv-00108-GPC-MDD Document 661-4 Filed 10/12/18 PageID.60199 Page 7 of 8

ACKNOWLEDGMENT
A notary public or other officer completing this certificate
verifies only the identity of the individual who signed the
document to which this certificate is attached, and not the
truthfulness, accuracy, or validity of that document.

State of California
,,, ·:;\ \ ()(~;<·"·:
C ounty o f _::..'\.-·i
..~LU-L~-~-.:-;.:~-~'-··" _ _ _ _ _ __
)

On .ff) (\LLhJ_~:::'._·~---:~~l'.6_· __ before me, }<·._r::-'-~.~'-';·t: :. 1'1·_·_'" ~ '-'~· ·t"- '·}z." ~" ·:~-" .e'-.-"-~ .:. .· ~.~:. .(>.:o:. t~_:, ,~- -'-~-=-/. .c.~s-'-i°?" ,:{.~J\. o:. .·i:.~·_, _(~. : :~-~" ~-~" :·~_,_~·-"'t.'------
+ -'

(insert name and title of the otficer)

personally appeared Adam P. Schwenker , who proved to me on the basis ofsatisfactory evidence
to be the person(-s) whose name(sj is/are subscribed to the within instrument and acknowledged to me that
he/she/they executed the same in his/her/their authorized capacity(iss), and that by his/her/their signature(s)
on the instrument the person(s), or the entity upon behalf of which the person(~ acted, executed the
instrument.

I certify under PENALTY OF PERJURY under the laws of the State of California that the foregoing
paragraph is true and correct.
WITNESS my hand and official seal.
~·'_..·"···

Signature -·~·/~)~
.
....·_'{~: ;: =?;~JE=~ ~'- '~\,~·~,,·'~, _~i;_:~:._·1·~:;"' =." ·~_ _ _ __ (Sea.I)

Patent Assignment [DFI to QCI] 4 of 43

PATENT
REEL: 045641 FRAME: 0216
Exhibit 1
Page 6
Case 3:17-cv-00108-GPC-MDD Document 661-4 Filed 10/12/18 PageID.60200 Page 8 of 8

Application Application Grant Grant
Country Title Number Date Number Date
FILE DOWNLOAD AND 11/125,818 05/09/2005 7,418,651 08/26/2008
us STREAMING SYSTEM

us FILE DOWNLOAD AND
STREAMING SYSTEM
12/197,993 08/25/2008 9,136,878 09/15/2015

us FILE DOWNLOAD AND
STREAMING SYSTEM
13/408,944 02/29/2012 9,236,887 01/12/2016
FILE DOWNLOAD AND PCT/US2005/016334 05/09/2005
WO STREAMING SYSTEM
FILE DOWNLOAD AND 200580001026. 7 05/09/2005 ZL200580001 02/27/2013
CN STREAMING SYSTEM
026.7
FILE DOWNLOAD AND 201310014760.3 01/15/2013 ZL201310014 05/10/2017
CN STREAMING SYSTEM
760.3
FILE DOWNLOAD AND 05747947.9 05/09/2005
EP STREAMING SYSTEM
FILE DOWNLOAD AND 10002379.5 03/08/2010
EP STREAMING SYSTEM
FILE DOWNLOAD AND 07105599.7 05/09/2005
HK STREAMING SYSTEM
DATA ENCODING IN FILE 2427 /CHENP/2006 05/09/2005 257657 10/23/2013
IN DOWNLOAD AND
STREAMING SYSTEM
FILE DOWNLOAD AND 2007-511719 05/09/2005 4971144 04/13/2012
JP STREAMING SYSTEM
FILE DOWNLOAD AND 2012-000796 01/05/2012 5485302 02/28/2014
JP STREAMING SYSTEM
FILE DOWNLOAD AND 10-2006-7009106 05/09/2005 10-1161193 06/25/2012
KR STREAMING SYSTEM
FILE DOWNLOAD AND 10-2011-7024580 10/18/2011 10-1205758 11/22/2012
KR STREAMING SYSTEM
TUNNELING PROTOCOLS 60/590,498 07/23/2004
us FOR COUNTERACTING DATA
ERRORS AND/OR ERASURES
FILE DOWNLOAD SYSTEM 60/600,932
us USING FOUNTAIN CODES
08/11/2004
METHOD AND APPARATUS 11/202,933 08/11/2005 7,721,184 05/18/2010
FOR FAST ENCODING OF
us DATA SYMBOLS
ACCORDING TO HALF-
WEIGHT CODES
METHOD AND APPARATUS 12/331,268 12/09/2008
FOR FAST ENCODING OF
us DATA SYMBOLS
ACCORDING TO HALF-
WEIGHT CODES
METHOD AND APPARATUS PCT/US2005/028668 08/11/2005
FOR FAST ENCODING OF
WO DATA SYMBOLS
ACCORDING TO HALF-
WEIGHT CODES
FEC ARCHITECTURE FOR 60/708,865 08/16/2005
STREAMING SERVICES
us INCLUDING SYMBOL-BASED
OPERATIONS AND PACKET
TAGGING
FEC ARCHITECTURE FOR 60/709,251 08/17/2005
STREAMING SERVICES
us INCLUDING SYMBOL-BASED
OPERATIONS AND PACKET
TAGGING

Patent Assignment [DFI to QCI] 20 of 43

PATENT
REEL: 045641 FRAME: 0232
Exhibit 1
Page 7
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60201 Page 1 of 50

Exhibit 2
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60202 Page 2 of 50

Exhibit 2
Page 8
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60203 Page 3 of 50

Exhibit 2
Page 9
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60204 Page 4 of 50

Exhibit 2
Page 10
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60205 Page 5 of 50

Exhibit 2
Page 11
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60206 Page 6 of 50

Exhibit 2
Page 12
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60207 Page 7 of 50

Exhibit 2
Page 13
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60208 Page 8 of 50

Exhibit 2
Page 14
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60209 Page 9 of 50

Exhibit 2
Page 15
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60210 Page 10 of
50

Exhibit 2
Page 16
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60211 Page 11 of
50

Exhibit 2
Page 17
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60212 Page 12 of
50

Exhibit 2
Page 18
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60213 Page 13 of
50

Exhibit 2
Page 19
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60214 Page 14 of
50

Exhibit 2
Page 20
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60215 Page 15 of
50

Exhibit 2
Page 21
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60216 Page 16 of
50

Exhibit 2
Page 22
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60217 Page 17 of
50

Exhibit 2
Page 23
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60218 Page 18 of
50

Exhibit 2
Page 24
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60219 Page 19 of
50

Exhibit 2
Page 25
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60220 Page 20 of
50

Exhibit 2
Page 26
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60221 Page 21 of
50

Exhibit 2
Page 27
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60222 Page 22 of
50

Exhibit 2
Page 28
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60223 Page 23 of
50

Exhibit 2
Page 29
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60224 Page 24 of
50

Exhibit 2
Page 30
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60225 Page 25 of
50

Exhibit 2
Page 31
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60226 Page 26 of
50

Exhibit 2
Page 32
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60227 Page 27 of
50

Exhibit 2
Page 33
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60228 Page 28 of
50

Exhibit 2
Page 34
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60229 Page 29 of
50

Exhibit 2
Page 35
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60230 Page 30 of
50

Exhibit 2
Page 36
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60231 Page 31 of
50

Exhibit 2
Page 37
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60232 Page 32 of
50

Exhibit 2
Page 38
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60233 Page 33 of
50

Exhibit 2
Page 39
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60234 Page 34 of
50

Exhibit 2
Page 40
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60235 Page 35 of
50

Exhibit 2
Page 41
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60236 Page 36 of
50

Exhibit 2
Page 42
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60237 Page 37 of
50

Exhibit 2
Page 43
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60238 Page 38 of
50

Exhibit 2
Page 44
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60239 Page 39 of
50

Exhibit 2
Page 45
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60240 Page 40 of
50

Exhibit 2
Page 46
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60241 Page 41 of
50

Exhibit 2
Page 47
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60242 Page 42 of
50

Exhibit 2
Page 48
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60243 Page 43 of
50

Exhibit 2
Page 49
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60244 Page 44 of
50

Exhibit 2
Page 50
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60245 Page 45 of
50

Exhibit 2
Page 51
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60246 Page 46 of
50

Exhibit 2
Page 52
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60247 Page 47 of
50

Exhibit 2
Page 53
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60248 Page 48 of
50

Exhibit 2
Page 54
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60249 Page 49 of
50

Exhibit 2
Page 55
Case 3:17-cv-00108-GPC-MDD Document 661-5 Filed 10/12/18 PageID.60250 Page 50 of
50

Exhibit 2
Page 56
Case 3:17-cv-00108-GPC-MDD Document 661-6 Filed 10/12/18 PageID.60251 Page 1 of 15

Exhibit 3
Case 3:17-cv-00108-GPC-MDD Document 661-6 Filed 10/12/18 PageID.60252 Page 2 of 15

1 UNITED STATES DISTRICT COURT
2 SOUTHERN DISTRICT OF CALIFORNIA
3
IN RE:
4 No. 3:17-cv-00108-GPC-MDD
QUALCOMM LITIGATION No. 3:17-cv-01010-GPC-MDD
5
6
7
EXPERT REPORT OF DR. NIKIL JAYANT
8
REGARDING QUALCOMM’S PATENT PORTFOLIO
9
10
11
12
13
14
15
16
Dated: June 29, 2018
17
Santa Barbara, CA
18
19
20
21
22
23
_____________________________
24
25
26
27
28
Case No. 17-cv-00108-GPC-MDD
EXPERT REPORT OF DR. NIKIL JAYANT

Exhibit 3
Page 57
Case 3:17-cv-00108-GPC-MDD Document 661-6 Filed 10/12/18 PageID.60253 Page 3 of 15

1
2
3 2. Raptor Codes
4 a. U.S. Patent No. 9,136,878
5
102. The ’878 Patent is entitled “File download and streaming
6
system.” It discloses Raptor code encoding and decoding, or generating
7
redundant symbols for an input signal at an encoder that can be used at a
8
decoder to achieve resilience against bit erasures and losses during
9
transmission. See ’878 Patent at Abstract. A combination of source symbols
10
and repair symbols is received where the received repair symbols are
11
generated from an ordered set of source symbols. See id. at 3:59-4:5. The
12
process includes generating a plurality of intermediate symbols based on the
13
ordered set of source symbols. See id. at 5:41-46. The ordered set of source
14
symbols has associated with it an index which enables the plurality of
15
intermediate symbols to be uniquely defined and also determines the
16
relations used for the generation of the received symbols. See id. Both the
17
intermediate symbols and the ordered set of source symbols can be generated
18
to a desired degree of accuracy. See id. at 3:59-4:5.
19
103. The UMTS and LTE standards specify generating encoding
20
symbols from the source symbols and intermediate symbols. Specifically,
21
there are at least as many encoding symbols as source symbols. The
22
encoding symbols, as received, are associated with symbol relations based on
23
a “systematic index, J(K),” which are used to determine the missing source
24
symbols. A block of source symbols is recovered if a mathematically
25
sufficient number of encoding symbols are generated and conveyed to the
26
receiver. By doing so, the standard achieves the benefits described above.
27
28
-40-
EXPERT REPORT OF DR. NIKIL JAYANT

Exhibit 3
Page 58
Case 3:17-cv-00108-GPC-MDD Document 661-6 Filed 10/12/18 PageID.60254 Page 4 of 15

1 104. A claim chart showing how each element of Claim 29 of the
2 ’878 Patent corresponds to LTE Release 8 is attached as part of Appendix A.
3
4
5
6
7
8
9
10
11
12
13
14
15
a
16
17
18
19
20
21
22
23
24
25
26
27
28
-41-
EXPERT REPORT OF DR. NIKIL JAYANT

Exhibit 3
Page 59
Case 3:17-cv-00108-GPC-MDD Document 661-6 Filed 10/12/18 PageID.60255 Page 5 of 15

APPENDIX A

Exhibit 3
Page 60
Case 3:17-cv-00108-GPC-MDD Document 661-6 Filed 10/12/18 PageID.60256 Page 6 of 15

U.S. Patent No. 9,136,878 to LTE Rel. 8

U.S. Pat. No. 9,136,878 U.S. Patent No. 9,136,878 to LTE Rel. 8 Mapping

29. A method of decoding The “MBMS FEC scheme” is described in sub-clause 8.2.2.8. Mapping
encoded data received over a
communications channel A UE that supports MBMS User Services shall support a decoder for the “MBMS FEC Decoding is performed by a UE that
transmitted from a source to a scheme”. receives a “mathematically sufficient set
destination, the method of encoding symbols.”
comprising: …
“[S]ource” is mapped to the MBMS
If a UE that supports MBMS User Services receives a mathematically sufficient set of transmitter, and “destination” is mapped
encoding symbols generated according to the encoder specification in Annex B for to a user equipment.
reconstruction of a source block then the decoder shall recover the entire source block. Note
that the example decoder described in [91] clause 5.5 fulfils this requirement.

TS 26.346 v8.1.0 at § 8.2.2

This clause defines an FEC encoding scheme for the MBMS forward error correction code
defined in [91] for the download delivery method. This scheme is identified by FEC
Encoding ID 1. The FEC Payload ID format and FEC Object Transmission Information
format are as defined in [91], clause 3.1 and 3.2 respectively.

TS 26.346 v8.1.0 at § 7.2.12.1

[91] IETF RFC 5053 (October 2007): “Raptor Forward Error Correction Scheme for
Object Delivery”, M. Luby, A. Shokrollahi, M. Watson, T. Stockhammer.

TS 26.346 v8.1.0 at § 2

receiving a predetermined If a UE that supports MBMS User Services receives a mathematically sufficient set of Mapping
number, N, of symbols, encoding symbols generated according to the encoder specification in [91] for reconstruction
wherein the received symbols “[R]eceived repair symbols generated
comprise a combination of from a plurality of an ordered set of K

-1-
Exhibit 3
Page 61
Case 3:17-cv-00108-GPC-MDD Document 661-6 Filed 10/12/18 PageID.60257 Page 7 of 15

U.S. Pat. No. 9,136,878 U.S. Patent No. 9,136,878 to LTE Rel. 8 Mapping

received source symbols and of a source block then the decoder shall recover the entire source block. Note that the source symbols” is mapped to repair
received repair symbols example decoder described in [91] clause 5.5 fulfils this requirement. symbols generated “from a source block
generated from a plurality of that consists of K source symbols.”
an ordered set of K source TS 26.346 v8.1.0 at § 7.2.2
symbols, The “predetermined number, N, of
Encoding symbol: a symbol that is included in a data packet. The encoding symbols consist symbols” is mapped to the smallest
of the source symbols and the repair symbols. Repair symbols generated from a source value “N” of encoding symbols (where
block have the same size as the source symbols of that source block. N >= K) for which the decoding failure
probability is below a specified limit.

Encoding symbols “consist of the source
Repair symbol: the encoding symbols sent for a source block that are not the source symbols and the repair symbols.”
symbols. The repair symbols are generated based on the source symbols.

IETF RFC 5053 at § 5.1.1

The principal component of the systematic Raptor code is the basic encoder described in
Section 5.4. First, it is described how to derive values for a set of intermediate symbols from
the original source symbols such that knowledge of the intermediate symbols is sufficient to
reconstruct the source symbols. Secondly, the encoder produces repair symbols, which are
each the exclusive OR of a number of the intermediate symbols. The encoding symbols are
the combination of the source and repair symbols. The repair symbols are produced in such
a way that the intermediate symbols, and therefore also the source symbols, can be recovered
from any sufficiently large set of encoding symbols.

IETF RFC 5053 at § 5.2

The systematic Raptor encoder is used to generate repair symbols from a source block that
consists of K source symbols.

IETF RFC 5053 at § 5.4.1

-2-
Exhibit 3
Page 62
Case 3:17-cv-00108-GPC-MDD Document 661-6 Filed 10/12/18 PageID.60258 Page 8 of 15

U.S. Pat. No. 9,136,878 U.S. Patent No. 9,136,878 to LTE Rel. 8 Mapping

It is assumed that the decoder knows the structure of the source block it is to decode,
including the symbol size, T, and the number K of symbols in the source block.

From the algorithms described in Section 5.4, the Raptor decoder can calculate the total
number L = K+S+H of pre-coding symbols and determine how they were generated from the
source block to be decoded.

Let N >= K be the number of received encoding symbols for a source block and let M =
S+H+N.

IETF RFC 5053 at § 5.5.2.1

generating to a desired degree Raptor is a fountain code, i.e., as many encoding symbols as needed can be generated by the Mapping
of accuracy one or more encoder on-the-fly from the source symbols of a block. The decoder is able to recover the
unreceived source symbols of source block from any set of encoding symbols only slightly more in number than the “[G]enerating to a desired degree of
the ordered set of K source number of source symbols. accuracy one or more unreceived source
symbols, symbols of the ordered set of K source
IETF RFC 5053 at § 1 symbols” is mapped to recovering “the
entire source block” if “a
The principal component of the systematic Raptor code is the basic encoder described in mathematically sufficient set of
Section 5.4. First, it is described how to derive values for a set of intermediate symbols from encoding symbols generated according
the original source symbols such that knowledge of the intermediate symbols is sufficient to to the encoder specification in RFC 5053
reconstruct the source symbols. Secondly, the encoder produces repair symbols, which are [91], section 5.3, for reconstruction of a
each the exclusive OR of a number of the intermediate symbols. The encoding symbols are source block” is received.
the combination of the source and repair symbols. The repair symbols are produced in such
a way that the intermediate symbols, and therefore also the source symbols, can be recovered RFC 5053 specifies that “encoding
from any sufficiently large set of encoding symbols. symbols” include both source and repair
symbols. Thus, if enough encoding
IETF RFC 5053 at § 5.2 symbols are received, specified in the
RFC 5053 as being “slightly more in

-3-
Exhibit 3
Page 63
Case 3:17-cv-00108-GPC-MDD Document 661-6 Filed 10/12/18 PageID.60259 Page 9 of 15

U.S. Pat. No. 9,136,878 U.S. Patent No. 9,136,878 to LTE Rel. 8 Mapping

A receiver supporting the streaming delivery method shall support the packet format for number than the number of source
FEC source packets and may also support the packet format for FEC repair packets. symbols,” any missing source symbols
can be recovered.
If any FEC source packets have been lost, but sufficient FEC source and FEC repair packets
have been received, FEC decoding can be performed to recover the FEC source block. The
original packets UDP payload and UDP flow identity can then be extracted from the source
block and provided to the upper layer. If not enough FEC source and repair packets were
received, only the original packets that were received as FEC source packets will be
available. The rest of the original packets are lost.

If a UE that supports MBMS User Services receives a mathematically sufficient set of
encoding symbols generated according to the encoder specification in Annex B for
reconstruction of a source block then the decoder shall recover the entire source block. Note
that the example decoder described in [91] clause 5.5 fulfils this requirement.

TS 26.346 v8.1.0 at § 8.2

This Annex specifies the systematic Raptor forward error correction code and its application
to MBMS [7]. Raptor is a fountain code, i.e., as many encoding symbols as needed can be
generated by the encoder on-the-fly from the source symbols of a block. The decoder is able
to recover the source block from any set of encoding symbols only slightly more in number
than the number of source symbols.

The code described in this document is a Systematic code, that is, the original source
symbols are sent unmodified from sender to receiver, as well as a number of repair symbols.

TS 26.346 v8.1.0 at Annex B

wherein each received Finally, the construction of the intermediate symbols from the source symbols is governed Mapping
symbol has an associated by a 'systematic index', values of which are provided in Section 5.7 for source block sizes
symbol relation that is from 4 source symbols to Kmax = 8192 source symbols. The “systematic index, J(K),” is mapped
determined by a systematic to “the systematic index, J(K).”

-4-
Exhibit 3
Page 64
Case 3:17-cv-00108-GPC-MDD Document 661-6 Filed 10/12/18 PageID.60260 Page 10 of
15

U.S. Pat. No. 9,136,878 U.S. Patent No. 9,136,878 to LTE Rel. 8 Mapping

index, J(K), where J(K) is Given the list of systematic indices for
determined by K, IETF RFC 5053 at § 5.2 values of K present in the RFC 5053, it
appears that the systematic index J(K) is
Associated with each symbol is a triple of integers (d, a, b). “determined by K.”
IETF RFC 5053 at § 5.3.2 “[A]ssociated symbol relation” is
mapped to the “set of source symbol
J(K) be the systematic index associated with K, as defined in Section 5.7. triples.”
IETF RFC 5053 at § 5.4.4 As shown in IETF RFC 5053 at §
5.4.4.4, the systematic index J(K) is used
The output of the triple generator is a triple, (d, a, b) determined as follows: to determine the source symbol triples
(d, a, b) for each value of K.
A = (53591 + J(K)*997) % Q

B = 10267*(J(K)+1) % Q

Y = (B + X*A) % Q

v = Rand[Y, 0, 2^^20]

d = Deg[v]

a = 1 + Rand[Y, 1, L'-1]

b = Rand[Y, 2, L']

IETF RFC 5053 at § 5.4.4.4

For each value of K, the systematic index J(K) is designed to have the property that the set
of source symbol triples (d[0], a[0], b[0]), ..., (d[L-1], a[L-1], b[L-1]) are such that the L

-5-
Exhibit 3
Page 65
Case 3:17-cv-00108-GPC-MDD Document 661-6 Filed 10/12/18 PageID.60261 Page 11 of
15

U.S. Pat. No. 9,136,878 U.S. Patent No. 9,136,878 to LTE Rel. 8 Mapping

intermediate symbols are uniquely defined, i.e., the matrix A in Section 5.4.2.4.2 has full
rank and is therefore invertible.

The following is the list of the systematic indices for values of K between 4 and 8192
inclusive.

IETF RFC 5053 at § 5.7

wherein the value of each The first step of encoding is to generate a number, L > K, of intermediate symbols from the Mapping
unreceived source symbol is K source symbols. In this step, K source symbol triples (d[0], a[0], b[0]), ..., (d[K-1], a[K-
determined by the associated 1], b[K-1]) are generated using the Trip[] generator as described in Section 5.4.2.2. The K “[W]herein each value of each
symbol relation and a source symbol triples are associated with the K source symbols and are then used to unreceived source symbol is determined
plurality of L intermediate determine the L intermediate symbols C[0],..., C[L-1] from the source symbols using an by the associated symbol relation and a
symbol values, wherein L is inverse encoding process. This process can be realized by a Raptor decoding process. plurality of L intermediate symbol
at least K, values” is mapped to “[t]he triples for
IETF RFC 5053 at § 5.4.1 missing source symbols are used to
determine which intermediate symbols
Decoding a source block is equivalent to decoding C from known A and D. It is clear that C need to be exclusive-ORed to recover
can be decoded if and only if the rank of A over GF[2] is L. Once C has been decoded, the missing source symbols.”
missing source symbols can be obtained by using the source symbol triples to determine the
number and set of intermediate symbols that MUST be exclusive-ORed to obtain each “L intermediate symbol values” is
missing source symbol. mapped to “L intermediate symbols.”

IETF RFC 5053 at § 5.5.2.1 “[W]herein L is at least K” is mapped to
“L > K.”
Then, as explained in Section 5.5.2.1, the corresponding decoding consisting of exclusive-
ORing known encoding symbols can be executed to recover the intermediate symbols based The sets of source symbol triples are
on the decoding schedule. The triples associated with all source symbols are computed used to determine L intermediate
according to Section 5.4.2.2. The triples for received source symbols are used in the symbols, which are then used to
decoding. The triples for missing source symbols are used to determine which intermediate determine the missing source symbol
symbols need to be exclusive-ORed to recover the missing source symbols. values.

-6-
Exhibit 3
Page 66
Case 3:17-cv-00108-GPC-MDD Document 661-6 Filed 10/12/18 PageID.60262 Page 12 of
15

U.S. Pat. No. 9,136,878 U.S. Patent No. 9,136,878 to LTE Rel. 8 Mapping

IETF RFC 5053 at § 5.5.2.5

For each value of K, the systematic index J(K) is designed to have the property that the set
of source symbol triples (d[0], a[0], b[0]), ..., (d[L-1], a[L-1], b[L-1]) are such that the L
intermediate symbols are uniquely defined, i.e., the matrix A in Section 5.4.2.4.2 has full
rank and is therefore invertible.

The following is the list of the systematic indices for values of K between 4 and 8192
inclusive.

IETF RFC 5053 at § 5.7

wherein the L intermediate The first step of encoding is to generate a number, L > K, of intermediate symbols from the Mapping
symbol values are determined K source symbols. In this step, K source symbol triples (d[0], a[0], b[0]), ..., (d[K-1], a[K-
by the K source symbol 1], b[K-1]) are generated using the Trip[] generator as described in Section 5.4.2.2. The K “[W]herein the L intermediate symbol
values and by the K symbol source symbol triples are associated with the K source symbols and are then used to values are determined by the K source
relations associated with the determine the L intermediate symbols C[0],..., C[L-1] from the source symbols using an symbol values and by the K symbol
K source symbols and by a inverse encoding process. This process can be realized by a Raptor decoding process. relations associated with the K source
set of L-K pre-coding symbols and by a set of L-K pre-coding
relations, IETF RFC 5053 at § 5.4.1 relations” is mapped to:

The pre-coding relationships amongst the L intermediate symbols are defined by expressing “[g]iven the K source symbols C'[0],
the last L-K intermediate symbols in terms of the first K intermediate symbols. C'[1],..., C'[K-1] the L intermediate
symbols C[0], C[1],..., C[L-1] are the
The last L-K intermediate symbols C[K],...,C[L-1] consist of S LDPC symbols and H Half uniquely defined symbol values that
symbols The values of S and H are determined from K as described below. Then L = satisfy the following conditions:
K+S+H.
1. The K source symbols C'[0], C'[1],...,
IETF RFC 5053 at § 5.4.2.3 C'[K-1] satisfy the K constraints C'[i] =
LTEnc[K, (C[0],..., C[L-1]), (d[i], a[i],
Given the K source symbols C'[0], C'[1],..., C'[K-1] the L intermediate symbols C[0], b[i])], for all i, 0 <= i < K.
C[1],..., C[L-1] are the uniquely defined symbol values that satisfy the following conditions:

-7-
Exhibit 3
Page 67
Case 3:17-cv-00108-GPC-MDD Document 661-6 Filed 10/12/18 PageID.60263 Page 13 of
15

U.S. Pat. No. 9,136,878 U.S. Patent No. 9,136,878 to LTE Rel. 8 Mapping

1. The K source symbols C'[0], C'[1],..., C'[K-1] satisfy the K constraints 2. The L intermediate symbols C[0],
C[1],..., C[L-1] satisfy the pre-coding
C'[i] = LTEnc[K, (C[0],..., C[L-1]), (d[i], a[i], b[i])], for relationships defined in Section 5.4.2.3.”
all i, 0 <= i < K. The “L-K pre-coding relations” are
mapped to the “pre-coding relationships
2. The L intermediate symbols C[0], C[1],..., C[L-1] satisfy the pre-coding relationships amongst the L intermediate symbols.”
defined in Section 5.4.2.3.
“K source symbol values” is mapped to
IETF RFC 5053 at § 5.4.2.4.1 “K source symbols.”
This section describes an efficient decoding algorithm for the Raptor codes described in this “K symbol relations” is mapped to “K
specification. Note that each received encoding symbol can be considered as the value of an source symbol triples.”
equation amongst the intermediate symbols. From these simultaneous equations, and the
known pre-coding relationships amongst the intermediate symbols, any algorithm for “L intermediate symbol values” is
solving simultaneous equations can successfully decode the intermediate symbols and hence mapped to “L intermediate symbols.”
the source symbols.

IETF RFC 5053 at § 5.5.1

Decoding a source block is equivalent to decoding C from known A and D. It is clear that C
can be decoded if and only if the rank of A over GF[2] is L. Once C has been decoded,
missing source symbols can be obtained by using the source symbol triples to determine the
number and set of intermediate symbols that MUST be exclusive-ORed to obtain each
missing source symbol.

IETF RFC 5053 at § 5.5.2.1

Then, as explained in Section 5.5.2.1, the corresponding decoding consisting of exclusive-
ORing known encoding symbols can be executed to recover the intermediate symbols based
on the decoding schedule. The triples associated with all source symbols are computed
according to Section 5.4.2.2. The triples for received source symbols are used in the

-8-
Exhibit 3
Page 68
Case 3:17-cv-00108-GPC-MDD Document 661-6 Filed 10/12/18 PageID.60264 Page 14 of
15

U.S. Pat. No. 9,136,878 U.S. Patent No. 9,136,878 to LTE Rel. 8 Mapping

decoding. The triples for missing source symbols are used to determine which intermediate
symbols need to be exclusive-ORed to recover the missing source symbols.

IETF RFC 5053 at § 5.5.2.5

wherein the L intermediate The principal component of the systematic Raptor code is the basic encoder described in Mapping
symbol values can be Section 5.4. First, it is described how to derive values for a set of intermediate symbols from
generated to a desired degree the original source symbols such that knowledge of the intermediate symbols is sufficient to “[W]herein the L intermediate symbol
of accuracy from the N reconstruct the source symbols. Secondly, the encoder produces repair symbols, which are values can be generated to a desired
received source and repair each the exclusive OR of a number of the intermediate symbols. The encoding symbols are degree of accuracy from the N received
symbols. the combination of the source and repair symbols. The repair symbols are produced in such source and repair symbols” is mapped to
a way that the intermediate symbols, and therefore also the source symbols, can be recovered “[t]he repair symbols are produced in
from any sufficiently large set of encoding symbols. such a way that the intermediate
symbols, and therefore also the source
IETF RFC 5053 at § 5.2 symbols, can be recovered from any
A receiver supporting the streaming delivery method shall support the packet format for sufficiently large set of encoding
symbols.”
FEC source packets and may also support the packet format for FEC repair packets.

If any FEC source packets have been lost, but sufficient FEC source and FEC repair packets
have been received, FEC decoding can be performed to recover the FEC source block. The
original packets UDP payload and UDP flow identity can then be extracted from the source
block and provided to the upper layer. If not enough FEC source and repair packets were
received, only the original packets that were received as FEC source packets will be
available. The rest of the original packets are lost.

If a UE that supports MBMS User Services receives a mathematically sufficient set of
encoding symbols generated according to the encoder specification in Annex B for
reconstruction of a source block then the decoder shall recover the entire source block. Note
that the example decoder described in [91] clause 5.5 fulfils this requirement.

TS 26.346 v8.1.0 at § 8.2.2

-9-
Exhibit 3
Page 69
Case 3:17-cv-00108-GPC-MDD Document 661-6 Filed 10/12/18 PageID.60265 Page 15 of
15

U.S. Pat. No. 9,136,878 U.S. Patent No. 9,136,878 to LTE Rel. 8 Mapping

This Annex specifies the systematic Raptor forward error correction code and its application
to MBMS [7]. Raptor is a fountain code, i.e., as many encoding symbols as needed can be
generated by the encoder on-the-fly from the source symbols of a block. The decoder is able
to recover the source block from any set of encoding symbols only slightly more in number
than the number of source symbols.

The code described in this document is a Systematic code, that is, the original source
symbols are sent unmodified from sender to receiver, as well as a number of repair symbols.

TS 26.346 v8.1.0 at Annex B

- 10 -
Exhibit 3
Page 70
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60266 Page 1 of 43

Exhibit 4
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60267 Page 2 of 43

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA

Case No. 3:17-CV-00108-GPC-MDD
IN RE:
[Consolidated with Case No. 3:17-CV-01010-
QUALCOMM LITIGATION.
GPC-MDD]

DECLARATION OF DR. MATTHEW C. VALENTI IN SUPPORT OF
APPLE AND THE CONTRACT MANUFACTURERS’ SUPPLEMENTAL
MOTION FOR PARTIAL SUMMARY JUDGMENT DUE TO PATENT EXHAUSTION

Exhibit 4
Page 71
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60268 Page 3 of 43

TABLE OF CONTENTS

I. THE ’878 PATENT ........................................................................................................... 2 

Patent Background ................................................................................................. 2 

Prosecution History ................................................................................................ 4 

Claimed Functionality Is Substantially Embodied in the Baseband Chipset ......... 5 

Dr. Jayant’s Analysis of the ’878 Patent ................................................................ 9 

II. SUMMARY OF OPINIONS ON WHERE CLAIMS OF RANDOMLY-SELECTED
QUALCOMM PATENTS ARE SUBSTANTIALLY EMBODIED .............................. 10 

i
Exhibit 4
Page 72
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60269 Page 4 of 43

I, Matthew C. Valenti, Ph.D., declare as follows:

I have first-hand knowledge of the facts set forth herein. The contents of this

Declaration are true and correct to the best of my knowledge, information, and belief and if

called to testify as to the statements set forth herein, I can competently do so under oath.

I am currently a Professor of Electrical Engineering at West Virginia University.

I have prepared this Declaration as an expert witness on behalf of Apple Inc. (“Apple”) in the

above-captioned Case No. 17-cv-00108-GPC-MDD and on behalf of Compal Electronics, Inc.,

Hon Hai Precision Industry Co., Ltd., FIH Mobile Ltd, Pegatron Corporation and Wistron

Corporation (collectively, “Contract Manufacturers” or “CMs”) in the consolidated Case No.

3:17-cv-01010-GPC-MDD.

In this Declaration I set forth my opinions as to where the claims of U.S. Patent No.

9,136,878 (“the ’878 Patent”) would be substantially embodied. I provide technical bases for these

opinions as appropriate.

In forming my opinions, I have relied on my knowledge and experience in cellular

networks, wireless communications, hardware, and software. My educational background,

career history, publications, and other relevant qualifications are set forth in my curriculum vitae,

appended as Exhibit A hereto.

For the purpose of this analysis I have considered the purported inventive aspect

as the feature relied on by the Patent Office to distinguish the patent from the prior art, but

otherwise take no position on the validity of the ’878 Patent. Further, when determining the

location of the claim elements and/or inventive features for this analysis, my analysis focuses on

where these elements and/or features would be practiced, if at all, and not on the essentiality or

infringement of the claim.

1

Exhibit 4
Page 73
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60270 Page 5 of 43

I. THE ’878 PATENT

The ’878 Patent is titled “File Download and Streaming System.”

Patent Background

The ‘878 Patent is concerned with the encoding and decoding of data transmitted

from a source to a destination over a communications channel. A coding scheme called “multi-

stage coding” is described. “Multi-stage encoding, as described herein, encodes the data in a

plurality of stages. Typically, but not always, a first stage adds a predetermined amount of

redundancy to the data. A second stage then uses a chain reaction code, or the like, to produce

output symbols from the original data and the redundant symbols computed by the first stage of

the encoding. In one specific embodiment of the present invention, the received data is first

decoded using a chain reaction decoding process. If that process is not successful in recovering

the original data completely, a second decoding step can be applied.” See ’878 Patent at 5:66-6:9.

“In embodiments of multi-stage encoding, redundant symbols are generated from

the input file or block of the stream during the first stage of encoding. In these embodiments, in

the second stage of encoding, output symbols are generated from the combination of the input file

or block of the stream and the redundant symbols. In some of these embodiments, the output

symbols can be generated as needed. In embodiments in which the second stage comprises chain

reaction encoding, each output symbol can be generated without regard to how other output

symbols are generated. Once generated, these output symbols can then be placed into packets and

transmitted to their destination, with each packet containing one or more output symbols. Non-

packetized transmission techniques can be used instead or as well.” Id. at 6:10-23.

“According to one embodiment of the invention, a method of encoding data for

transmission from a source to a destination over a communications channel is provided. The

2

Exhibit 4
Page 74
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60271 Page 6 of 43

method operates on an ordered set of input symbols and includes generating a plurality of

redundant symbols from the input symbols. The method also includes generating a plurality of

output symbols from a combined set of symbols including the input symbols and the redundant

symbols, wherein the number of possible output symbols is much larger than the number of

symbols in the combined set of symbols, wherein at least one output symbol is generated from

more than one symbol in the combined set of symbols and from less than all of the symbols in the

combined set of symbols, and such that the ordered set of input symbols can be regenerated to a

desired degree of accuracy from any predetermined number of the output symbols. The plurality

of redundant symbols is generated from an ordered set of input symbols to be transmitted in a

deterministic process such that a first set of static symbols calculated using a first input symbol

has a low common membership with a second set of static symbols calculated using a second input

symbol distinct from the first input symbol.” Id. at 3:57-4:11.

“According to still another embodiment of the invention, a system for receiving

data transmitted from a source over a communications channel is provided using similar

techniques. The system comprises a receive module coupled to a communications channel for

receiving output symbols transmitted over the communications channel, wherein each output

symbol is generated from at least one symbol in a combined set of input symbols and redundant

symbols, wherein at least one output symbol is generated from more than one symbol in the

combined set and less than all of the symbols in the combined set, wherein the number of possible

output symbols is much larger than the number of symbols in the combined set, wherein the input

symbols are from an ordered set of input symbols, wherein the redundant symbols are generated

from the input symbols and wherein the plurality of redundant symbols is generated from an

ordered set of input symbols to be transmitted in a deterministic process such that a first set of

3

Exhibit 4
Page 75
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60272 Page 7 of 43

static symbols calculated using a first input symbol has a low common membership with a second

set of static symbols calculated using a second input symbol distinct from the first input symbol.”

Id. at 4:12-32.

Prosecution History

On March 11, 2010, the Patent Office issued a non-final rejection of all claims

under 35 U.S.C. § 112 as being indefinite for failing to particularly point out and distinctly claim

the subject matter which applicant regards as the invention. The Patent Office further indicated

that claims 1 to 74 would be allowable once the § 112 second rejection is overcome. Specifically,

the Patent Office stated that “the prior art made of record teaches a method and an apparatus for

encoding data transmitted from a source to a destination using an encoder; however, the prior art

made of record, fails to teach or fairly suggest or render obvious the novel element of the instant

invention as directed to a method of encoding comprising the limitation of ‘wherein the encoding

is such that the plurality of source symbols can be regenerated to the desired degree of accuracy

from any predetermined number, N, of a combination of the transmitted source symbols and

transmitted repair symbols.’” See ’878 File History, 3/11/2010 Non-Final Rejection at 4.

On July 16, 2010, the Applicant amended the claims to address the § 112 rejection.

Id. at 7/16/2010 Amendment at 3-16.

On September 9, 2010, the Patent Office provided a Notice of Allowability. Before

the patent issued, the Applicant submitted an Information Disclosure Statement with additional

references to be considered by the Patent Office. The Patent Office considered the new references

and again provided a Notice of Allowability on December 29, 2010. In that Notice the Patent

Office again provided a reason for allowance, stating that “the novel element of the instant

invention” in view of “the prior art made of record” is the limitation of “wherein the encoding is

4

Exhibit 4
Page 76
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60273 Page 8 of 43

such that the plurality of source symbols can be regenerated to the desired degree of accuracy from

any predetermined number, N, of a combination of the transmitted source symbols and transmitted

repair symbols.” Id. at 12/29/2010 Notice of Allowability at 2-3. This back-on-forth during which

the Applicant identified additional references and the Patent Office issued a new Notice of

Allowability happened fifteen more times. Each time the Patent Office repeated the same reason

for allowance. Id. at 4/11/2011 Notice of Allowability at 2-3, 8/8/2011 Notice of Allowability at

2-3, 12/7/2011 Notice of Allowability at 2-3, 4/13/2012 Notice of Allowability at 2-3, 7/26/2012

Notice of Allowability at 2-3, 2/28/2013 Notice of Allowability at 2-3, 6/19/2013 Notice of

Allowability at 2-3, 10/2/2013 Notice of Allowability at 2-3, 12/18/2013 Notice of Allowability

at 2-3, 4/14/2014 Notice of Allowability at 2-3, 7/25/2014 Notice of Allowability at 2-3,

11/13/2014 Notice of Allowability at 2-3, 2/27/2015 Notice of Allowability at 2-3, 7/7/2015 Notice

of Allowability at 2-3, 7/29/2015 Notice of Allowability at 2-3.

For purposes of my analysis, I will treat this limitation as the inventive feature.

Claimed Functionality Is Substantially Embodied in the Baseband Chipset

The method of claim 1 deals with steps related to the encoding of data and

transmitting symbols over a communications channel. One of skill in the art would recognize that

such coding is for error-control purposes, which can be performed by either a base station or

mobile station. In a mobile station, the encoding and transmitting are baseband operations. To

the extent that the encoding and transmitting are being performed at the mobile station, rather than

in the network infrastructure equipment, such encoding and transmitting would be performed in

the baseband chipset. For instance, Fig. 1 is a block diagram of a communications system 100 that

uses multi-stage coding. It includes an encoder 115 for generating output symbols. The encoder

115 provides output symbols to transmit module 140, which transmits the output symbols over a

5

Exhibit 4
Page 77
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60274 Page 9 of 43

channel 145 to a receive module 150. “Modules 140, 145 and 150 can be any suitable hardware

components, software components, physical media, or any combination thereof, so long as

transmit module 140 is adapted to transmit output symbols and any needed data about their keys

to channel 145 and receive module 150 is adapted to receive symbols and potentially some data

about their keys from channel 145.” See ’878 Patent at 11:41-47. Even if the “transmitting” step

were performed by circuitry that resides outside the Qualcomm baseband chipset, “transmitting”

is a standard, well-known operation that is carried out using standard, well-known components

such as RF circuitry.

The method of claim 29 deals with steps related to the reception and decoding of

symbols received over a communications channel. One of skill in the art would recognize that

such coding is for error-control purposes, which can be performed by either a base station or

mobile station. In a mobile station, the receiving and decoding are baseband operations. To the

extent that the receiving and decoding are being performed at the mobile station, rather than in the

network infrastructure equipment, such receiving and decoding would be performed in the

baseband chipset. For instance, Fig. 1 is a block diagram of a communications system 100 that

uses multi-stage coding. It includes a receive module 150 that outputs symbols received over a

communication channel 145 sent by a transmit module 140. Receive module 150 provides the

output symbols to a decoder 155 for decoding. “Decoder 155 provides the recovered input symbols

to an input file reassembler 165, which generates a copy 170 of input file 101 or input stream 105.”

See ’878 Patent at 12:24-27.

Accordingly, claims 1 and 29 would be substantially embodied in the baseband

chipset if they are practiced at the mobile station. The only reasonable and intended use of this

functionality in the baseband chipset is to practice the identified inventive feature of the patent.

6

Exhibit 4
Page 78
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60275 Page 10 of
43

The ’878 Patent also includes several dependent claims. Claims 2 to 28 depend on

the method of claim 1. Claim 2 further limits claim 1 by adding a step of precalculating and storing

the systematic index J(X). Claim 3 further limits claim 1 by further specifying the values of the

systematic index J(X). Claims 4 and 5 further limit claim 1 by further specifying the nature of the

symbol relations. Claim 6 further limits claim 1 by specifying that each source symbol has an ESI

that identifies the symbol and how the symbol relation identified by the ESI is determined. Claim

7 further limits claim 6 by further specifying that the systematic index J(K) and the ESI X can be

used to generate a triple (a[X],b[X],d[X]) that defines the source symbol relation for the symbol

identified by ESI X. Claim 8 further limits claim 6 by further specifying that each source symbol

can be identified by an integer ESI in the range 0 to K−1, inclusive. Claim 9 further limits claim

6 by further specifying that each repair symbol can be identified by an integer ESI that is at least

K. Claims 10 to 18 further limit claim 7 by adding steps for calculating and determining values.

As with claim 1, upon which claim 7 depends, claims 10 to 18 would be implemented in an encoder

within the baseband chipset. Claims 19 to 28 further limit claim 1 by further specifying the pre-

coding relations. Claims 19 to 28 are implemented in the same components within the baseband

chipset as claim 1. Claims 2 to 28 are implemented in the same structure as claim 1, and the

analysis of claim 1 applies to these claims as well. Thus, for reasons provided above, claims 2 to

28 are substantially embodied in the baseband chipset.

Claims 30 to 56 depend on claim 29 and mirror claims 2 to 28, respectively. The

analysis of claims 30 to 56 follows that of claims 2 to 28, and these claims too are substantially

embodied in the baseband chipset.

Claim 57 further limits claim 1 by further specifying the output symbols are placed

into one or more packets for transmission. Claims 59 to 61 further limit claim 6 by further

7

Exhibit 4
Page 79
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60276 Page 11 of
43

specifying the output symbols are placed into packets for transmission and the contents of the

packets. Claim 65 further limits claim 1 by further specifying that the K source symbols

correspond to a source block, specifying the source block, specifying that one or more source

blocks can correspond to a source file, and specifying that each of the one or more source blocks

are encoded separately from the other source blocks. Claim 66 further limits claim 65 by further

specifying that the source file is partitioned into one or more source blocks of approximately equal

size and how. Claim 67 further limits claim 66 by further specifying more than one output symbol

is placed into a packet that is used for transmission. Claim 68 further limits claim 66 by further

specifying that one or more parameters used to partition the source file into one or more source

blocks and used to partition the one or more source blocks into one or more subblocks are made

known at the destination of the output symbols. Claim 69 further limits claim 1 by further

specifying that the K source symbols correspond to a source block, wherein the source block is

defined by a transport protocol for streaming data. Claim 70 further limits claim 69 by further

specifying that one or more parameters used to determine how the K source symbols correspond

to the source block are made known at the destination of the output symbols. Claim 71 further

limits claim 69 by further specifying that more than one output symbol is placed into a packet that

is used for transmission. Claims 57, 59 to 61, and 65 to 71 are implemented in the same structure

as claim 1, and the analysis of claim 1 applies to these claims as well. Thus, for reasons provided

above, claims 57, 59 to 61, and 65 to 71 are substantially embodied in the baseband chipset.

Claims 58, 62 to 64, and 72 to 74 mirror claims 57, 59 to 61, and 69 to 71,

respectively. Specifically, claim 58 further limits claim 29 by further specifying more than one

received symbol received in at least one packet. Claim 62 further limits Claim 34 by further

specifying that the output symbols are received in one or more packets, that each output symbol

8

Exhibit 4
Page 80
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60277 Page 12 of
43

has an associated ESI, and that an ESI is received in each packet to identify a first output symbol

in the packet. Claims 63 and 64 further limit Claim 62 by further specifying the output symbols

are received in one or more packets and the contents of the packets. Claim 72 further limits claim

29 by further specifying the K source symbols. Claim 73 further limits claim 72 by further

specifying that one or more parameters used to determine how the K source symbols correspond

to the source block are made known at the destination of the output symbols. Claim 74 further

limits claim 72 by further specifying that more than one output symbol is received in a received

packet. Claims 58, 62 to 64, and 72 to 74 are implemented in the same structure as claim 29, and

the analysis of claim 29 applies to these claims as well. Thus, for reasons provided above, claims

58, 62 to 64, and 72 to 74 are substantially embodied in the baseband chipset.

Dr. Jayant’s Analysis of the ’878 Patent

In his opening expert report, Dr. Jayant provided an essentiality analysis for claim

29 of the ’878 Patent. Specifically, Dr. Jayant charted claim 29 of the ’878 Patent against LTE

Release 8 in general, and specifically against the “MBMS FEC scheme” disclosed in 3GPP TS

25.346 (v8.1.0). MBMS is an abbreviation for “Multimedia Broadcast/Multicast Service,” which

is a part of the LTE standard that allows broadcast and multicast content to be sent from a base

station alongside unicast transmissions within the same network. The sections of the LTE standard

cited in Dr. Jayant’s chart deal with the protection of data through the use of forward error control

(“FEC”) coding, and the Jayant chart relates these portions of the standard to downlink

communication.

Persons skilled in the art would understand that it would not make sense to receive

and decode an MBMS signal anywhere but in the baseband chipset. Similar to an LTE signal,

which is received and decoded in the baseband chipset, the MBMS signal would also be received

9

Exhibit 4
Page 81
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60278 Page 13 of
43

and decoded in the very same baseband chipset. Dr. Jayant’s analysis of claim 29 therefore

supports the conclusion that claim 29 of the ’878 Patent would be substantially embodied in the

baseband chipset, to the extent that it is practiced by the mobile station.

II. SUMMARY OF OPINIONS ON WHERE CLAIMS OF RANDOMLY-SELECTED
QUALCOMM PATENTS ARE SUBSTANTIALLY EMBODIED

I randomly selected 119 patents from a set of patents that Qualcomm identified to

Apple and declared to be standards essential. Based on my analysis of each of the claims of the

119 randomly-selected Qualcomm patents, I determined where the claims of each patent would be

substantially embodied. The results of my analysis showed that 44% of the patents (or 52 patents

of the 119 patents) would have all claims substantially embodied in the baseband chipset. In

addition, 22% (26 patents) would have all claims substantially embodied in the network

infrastructure equipment and 24% (29 patents) would have all claims substantially embodied in

either the baseband chipset or in the network infrastructure equipment. The remaining 10% (12

patents) would have at least one claim that would be substantially in the end-device (6 patents) or

at least one claim that has no reasonable read on a mobile device or network infrastructure

equipment alone (6 patents).

10

Exhibit 4
Page 82
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60279 Page 14 of
43

Exhibit A

Exhibit 4
Page 83
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60280 Page 15 of
43

MATTHEW C. VALENTI
Lane Dept. of Comp. Sci. & Electrical Engineering Phone: (304) 293-9139
West Virginia University Fax: (304) 293-8602
Morgantown, WV 26506-6109 Email: Matthew.C.Valenti@gmail.com
Web: http://www.csee.wvu.edu/~mvalenti

I. PROFESSIONAL BACKGROUND
A. EDUCATION
Ph.D., Electrical Engineering, August 1999.
Virginia Polytechnic Institute and State University (Virginia Tech), Blacksburg VA.
M.S., Electrical Engineering, May 1995.
Johns Hopkins University, Baltimore MD.
B.S., Electrical Engineering, May 1992.
Virginia Polytechnic Institute and State University, Blacksburg VA.
B. EMPLOYMENT HISTORY
Professor, Aug. 2010 to present.
Associate Professor, Aug. 2005 to Aug. 2010.
Assistant Professor, Aug. 1999 to Aug. 2005.
West Virginia University, Morgantown, WV.
Lane Department of Computer Science and Electrical Engineering
Bradley Fellow, Graduate Research Assistant, and Instructor, Aug. 1995-July 1999.
Virginia Tech, Blacksburg, VA.
Bradley Department of Electrical and Computer Engineering
Electronics Engineer, Summer 1991, May 1992-Aug. 1995
U.S. Naval Research Laboratory, Washington DC.

C. HONORS AND AWARDS
WVU Foundation Outstanding Teaching Award (2013)
West Virginia University, Morgantown, WV.
Outstanding Teacher (2012, 2009, 2006, 2003, and 2001)
Outstanding Advisor (2012, 2004)
Outstanding Researcher (2008, 2001, and 2000)
Statler College of Engineering and Mineral Resources
West Virginia University, Morgantown, WV.
Bradley Fellow, August 1995-May 1998
Bradley Department of Electrical Engineering
Virginia Tech, Blacksburg VA.
E. PROFESSIONAL FELLOWSHIP
Fellow, Institute of Electrical and Electronics Engineers (IEEE)
Student Member 1992, Member 1999, Senior Member 2007, Fellow 2018.

D. PROFESSIONAL REGISTRATION
Professional Engineer (P.E.)
Registered in the state of West Virginia since 2011.

1
Exhibit 4
Page 84
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60281 Page 16 of
43
MATTHEW C. VALENTI

II. TECHNICAL CONSULTING BACKGROUND
A. PATENT LITIGATION SUPPORT AND EXPERT WITNESS EXPERIENCE
1. Quinn Emanuel Urquhart & Sullivan for Samsung
Dates: 2017-2018
Venue: United States District Court; Northern District of California (San Francisco Division)
Case: Samsung Electronics Co., LTD, et al. (counterclaim-plaintiffs) v. Huawei Technologies
Co., LTD., et al. (counterclaim-defendants), Case No. 16-cv-02787-WHO
Technology: LTE wireless technology.
Activity: Declaration (Claim Construction, Patent Owner’s Response to Petition for IPR); Expert
Report (Noninfringement); Rebuttal Report (Validity). Deposition (June 20, 2018)

2. Fish & Richardson for Apple
Dates: 2017-2018
Venue: United States District Court; Southern District of California
Cases: Apple Inc. v. Qualcomm Inc., Civil Action No. 3:17-cv-00108
Technology: LTE wireless technology.
Activity: Patent portfolio technical evaluation.

3. Baker Botts for AT&T; Gibson, Dunn & Crutcher for T-Mobile
Dates: 2016-2017
Venue: United States District Court; District of Delaware
Cases: (a) Intellectual Ventures I LLC v. AT&T Mobility LLC et al., Civil Action No. 12-CV-
193-LPS (D. Del.); Intellectual Ventures I LLC v. AT&T Mobility LLC et al., Civil
Action No. 1:15-CV-00799-LPS.
(b) Intellectual Ventures I LLC v. T-Mobile USA Inc. et al. D. Del. Case No. 1:13-cv-
1632-LPS.
Technology: HSDPA wireless technology.
Activity: Expert Report; Declaration; Sur-Reply Report. Deposition (Mar. 23, 2017).

4. Rothwell Figg for LG; Paul Hastings for Samsung; Mayer Brown for Motorola Mobility
Dates: 2016
Venue: United States District Court; Southern District of California
Cases: (a) Odyssey Wireless Inc. v. LG Electronics USA, Inc. et al., Civil Action No. 3:15-cv-
01746-H-RBB (S.D. Cal.).
(b) Odyssey Wireless Inc. v. Samsung Electronics Co. et al., Civil Action No. 3:15-cv-
01738-H-RBB (S.D. Cal.).
(c) Odyssey Wireless Inc. v. Motorola Mobility, Civil Action No. 3:15-cv-01741-H-RBB
(S.D. Cal.).
Technology: LTE wireless technology.
Activity: Expert Report (Noninfringement). Deposition (Aug. 24, 2016).

5. Sheppard Mullin for Samsung; Gibson Dunn and Wilmer Hale for Intel; Boies Schiller for Apple
Dates: 2016
Case: Various regulatory agencies’ investigations of Qualcomm Incorporated (“Qualcomm”),
including the Korean Fair Trade Commission (the “KFTC”) and the United States
Federal Trade Commission (the “FTC”).
Technology: LTE wireless technology.
Activity: Declaration (technical analysis of patent portfolio).

2
Exhibit 4
Page 85
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60282 Page 17 of
43
MATTHEW C. VALENTI

6. Boies, Schiller & Flexner for Apple; Sheppard, Mullin, Richter & Hampton for HTC; Kilpatrick
Townsend & Stockton for Lenovo and Motorola Mobility; Quinn Emanuel Urquhart & Sullivan for
Samsung; McDermott Will & Emery for ZTE; SidleyAustin for Microsoft
Dates: 2016
Venue: United States District Court; District of Delaware
Cases: (a) Evolved Wireless, LCC, v. Apple Inc., Civil Action No. 1:15-cv-00542-SLR.
(b) Evolved Wireless, LCC, v. HTC Corporation and HTC America, Inc., Civil Action
No. 1:15-cv-00543-SLR. (c) Evolved Wireless, LCC, v. Lenovo Group Ltd., Lenovo
(United States) Inc., and Motorola Mobility, Civil Action No. 1:15-cv-00544-SLR.
(d) Evolved Wireless, LCC v. Samsung Electronics Co., Ltd. and Samsung Electronics
America, Inc., Civil Action No. 1:15-cv-00545-SLR. (e) Evolved Wireless, LCC v. ZTE
Corporation, ZTE (USA) Inc., and ZTE Solutions Inc., Civil Action No. 1:15-cv-00546-
SLR. (f) Evolved Wireless, LCC v. Microsoft Corporation, Microsoft Mobile OY and
Nokia Inc., Civil Action No. 1:15-cv-00547-SLR.
Technology: LTE wireless technology.
Activity: Declaration (claim construction).

7. Williams & Connolly
Dates: 2015
Case: Confidential Parties (Leading Global Wireless Communication Companies)
Consolidated Arbitrations Under the International Chamber of Commerce Rules.
Technology: LTE wireless technology.
Activity: Expert Report (patent portfolio technical evaluation).

8. Kirkland & Ellis for Samsung
Dates: 2013
Case: Samsung Electronics and Samsung Telecommunications America v. Ericsson Inc.
In the Matter of Certain Wireless Communications Equipment and Articles Therein
US. International Trade Commission (ITC) Investigation No. 337-TA-866
Technology: LTE wireless technology.
Activity: Expert Report (infringement, domestic industry practice), rebuttal report (validity).
Court testimony: direct (Oct. 23, 2013) and rebuttal (Oct. 30, 2013).

9. Quinn Emanuel Urquhart & Sullivan, LLP for Samsung
Dates: 2013
Case: Samsung Electronics GmbH v. Apple Inc.
German Patent Court, Case Number 5 Ni 49/11
Technology: Turbo codes; LTE wireless technology.
Activity: Declaration (validity).

10. Kirkland & Ellis for DIRECTV
Dates: 2009
Case: Rembrandt Data Technologies v. DIRECTV, Inc. et al.
Eastern District of Virginia, Case No. 1:08cv1009
Technology: Telephone modems; set-top boxes.
Activity: Rebuttal Expert Report (non-infringement). Deposition (May 20, 2009).

11. Kirkland & Ellis for Samsung
Dates: 2006
Case: Samsung Electronics and Samsung Telecommunications America v. Ericsson Inc.
In the Matter of Certain Wireless Communications Equipment, Articles Therein, and
Products Containing the Same
ITC Investigation No. 377-TA-577
Technology: WCDMA/UMTS wireless technology; mobile phone handsets.
Activity: Declaration (domestic industry practice). Deposition (Nov. 17, 2006).

3
Exhibit 4
Page 86
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60283 Page 18 of
43
MATTHEW C. VALENTI

B. TECHNICAL CONSULTING OF A NON-LEGAL NATURE OVER PAST TEN YEARS

1. 4D Tech Solutions, Morgantown, WV
Nonorthogonal Frequency Division Multiplexing
July 2017 to present.
2. Interdigital Communications Corporation, King of Prussia, PA
Simulation of Cooperative Communications
Nov. 2007 to Mar. 2008.
3. Digital Receiver Technology, Germantown, MD
Implementation of WiMax Convolutional Turbo Code
Oct. 2007 to Mar. 2008.
4. Welkin Sciences, Colorado Springs, CO
Interceptor Communications
Oct. 2007 to Jan. 2009.

C. DESCRIPTION TECHNICAL AREA OF EXPERTISE

My area of expertise is communication technology, with an emphasis on wireless and cellular networks.
This includes physical layer technology; i.e., modulation, error-control coding, and receiver design, as well
as issues related to cellular network call processing (e.g., control signal formats and protocols). I have a
working knowledge of several current standards, including UMTS/WCDMA (3-G Cellular), LTE (4-G
Cellular), WiMAX, and DVB-S2 (Satellite Television).

III. RESEARCH
A. PUBLICATIONS
Journal Papers
J1. T. Ferrett and M.C. Valenti, “Noncoherent LDPC-coded physical-layer network coding using
multitone FSK,” IEEE Transactions on Communications, vol. 66, no. 6, pp. 2384-2395, June 2018.
J2. D. Torrieri, S. Talarico, and M.C. Valenti, “Analysis of a frequency-hopping millimeter-wave cellular
uplink,” IEEE Transactions on Wireless Communications, vol. 15, no. 10, pp. 7089-7098, Oct. 2016.
J3. K. Venugopal, M.C. Valenti, and R. W. Heath, Jr., “Device-to-device millimeter wave
communications: Interference, coverage, rate, and finite topologies,” IEEE Transactions on Wireless
Communications, vol. 15, no. 9, pp. 6175-6188, Sept. 2016.
J4. D. Torrieri, S. Talarico, and M.C. Valenti, “Performance comparisons of geographic routing protocols
in mobile ad hoc networks,” IEEE Transactions on Communications, vol. 63, no. 11, pp. 4276-4286,
Nov. 2015.
J5. P. Rost, S. Talarico, and M.C. Valenti, “The complexity-rate tradeoff of centralized radio access
networks,” IEEE Transactions on Wireless Communications, vol. 14, no. 11, pp. 6164-6176, Nov.
2015.
J6. M.C. Valenti, D. Torrieri, and S. Talarico, “A direct approach to computing spatially averaged outage
probability,” IEEE Communications Letters, vol. 18, no. 7, pp. 1103-1106, July 2014.
J7. S. Talarico, N.A. Schmid, M. Alkhweldi, and M.C. Valenti, “Distributed estimation of a parametric
field: Algorithms and performance analysis,” IEEE Transactions on Signal Processing, vol. 62, no. 5,
pp. 1041-1053, Mar 1, 2014.
J8. D. Torrieri, M.C. Valenti, and S. Talarico, “An analysis of the DS-CDMA cellular uplink for arbitrary
and constrained topologies,” IEEE Transactions on Communications, vol. 61, no. 8, pp. 3318-3326,
Aug. 2013.

4
Exhibit 4
Page 87
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60284 Page 19 of
43
MATTHEW C. VALENTI

J9. D. Torrieri and M.C. Valenti, “Exclusion and guard zones in DS-CDMA ad hoc networks,” IEEE
Transactions on Communications, vol. 61, no. 6, pp. 2468-2476, June 2013.
J10. D. Torrieri and M.C. Valenti, “The outage probability of a finite ad hoc network in Nakagami fading,”
IEEE Transactions on Communications, vol. 60, pp. 3509-3518, Nov. 2012.
J11. M.C. Valenti and X. Xiang, “Constellation shaping for bit-interleaved LDPC coded APSK,” IEEE
Transactions on Communications, vol. 60, pp. 2960-2970, Oct. 2012.
J12. M.C. Valenti, D. Torrieri, and T. Ferrett, “Noncoherent physical-layer network coding with FSK
modulation: Relay receiver design issues,” IEEE Transactions on Communications, vol. 59, no. 9, pp.
2595-2604, Sept. 2011.
J13. D. Torrieri and M.C. Valenti, “Rapidly-converging series representations of a mutual-information
integral,” ISRN Communications and Networking, vol. 2011, Article ID 546205, 6 pages, 2011.
J14. M.C. Valenti, S. Cheng, and D. Torrieri “Iterative multisymbol noncoherent reception of coded
CPFSK,” IEEE Transactions on Communications, vol. 58, no. 7, pp. 2046-2054, July 2010.
J15. D. Torrieri and M.C. Valenti, “Efficiently decoded full-rate space-time block codes,” IEEE
Transactions on Communications, vol. 58, no. 2, pp. 480-488, Feb. 2010.
J16. S. Cheng, M.C. Valenti, and D. Torrieri, “Coherent continuous-phase frequency-shift keying:
Parameter optimization and code design,” IEEE Transactions on Wireless Communications, vol. 8, no.
4, pp. 1792-1802, Apr. 2009.
J17. D. Torrieri and M.C. Valenti, “Constellation labeling maps for low error floors,” IEEE Transactions
on Wireless Communications, vol. 7, no. 12, pp. 5401-5407, Dec. 2008.
J18. D. Torrieri, S. Cheng, and M.C. Valenti, “Robust frequency hopping for interference and fading
channels,” IEEE Transactions on Communications, vol. 56, no. 8, pp. 1343-1351, Aug. 2008.
J19. K. Vardhe, D. Reynolds, and M.C. Valenti, “The performance of multi-user cooperative diversity in
an asynchronous CDMA uplink,” IEEE Transactions on Wireless Communications, vol. 7, no. 5, pp.
1930-1940, May 2008.
J20. R. Iyer Seshadri and M.C. Valenti, “Capacity-based parameter optimization of bit-interleaved coded
CPM with differential detection,” IEEE Transactions on Vehicular Technology, vol. 57, no. 1, pp. 345-
353, Jan. 2008
J21. S. Cheng, M.C. Valenti, and D. Torrieri, “Robust iterative noncoherent reception of coded FSK over
block fading channels,” IEEE Transactions on Wireless Communications, vol. 6, no. 9, pp. 3142-3147,
Sept. 2007.
J22. S. Wei, D.L. Goeckel, and M.C. Valenti, “Asynchronous cooperative diversity,” IEEE Transactions
on Wireless Communications, vol. 5, no. 6, pp. 1547-1557, June 2006.
J23. B. Zhao and M.C. Valenti, “Position-based relaying with hybrid-ARQ for efficient ad hoc
networking,” EURASIP Journal on Wireless Communications and Networking, vol. 5, no. 5, pp. 610-
624, Dec. 2005.
J24. M.C. Valenti and S. Cheng, “Iterative demodulation and decoding of turbo coded M-ary noncoherent
orthogonal modulation,” IEEE Journal on Selected Areas in Communications, vol. 23, no. 9, pp. 1738-
1747, Sept. 2005.
J25. J. Sun and M.C. Valenti, “Joint synchronization and SNR estimation for turbo codes in AWGN
channels,” IEEE Transactions on Communications, vol. 53, no. 7, pp. 1136-1144, July 2005.
J26. B. Zhao and M.C. Valenti, “Practical relay networks: A generalization of hybrid-ARQ,” IEEE Journal
on Selected Areas in Communications, vol. 23, no. 1, pp. 7-18, Jan. 2005.
J27. B. Zhao and M.C. Valenti, “Distributed turbo coded diversity for the relay channel,” IEE Electronics
Letters, vol. 39, no. 10, pp. 786-787, May 15, 2003.

5
Exhibit 4
Page 88
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60285 Page 20 of
43
MATTHEW C. VALENTI

J28. M.C. Valenti and J. Sun, “The UMTS turbo code and an efficient decoder implementation suitable for
software defined radios,” International Journal on Wireless Information Networks, vol. 8, no. 4, pp.
203-216, Oct. 2001.
J29. M.C. Valenti and B.D. Woerner, “Pilot symbol assisted detection of turbo codes over flat-fading
channels," IEEE Journal on Selected Areas in Communications, vol. 19, pp. 1697-1705, Sept. 2001.
J30. M.C. Valenti and B.D. Woerner, “Iterative multiuser detection, macrodiversity combining and
decoding for the TDMA cellular uplink”, IEEE Journal on Selected Areas in Communications, vol. 19,
pp. 1570-1583, Aug. 2001.
J31. M.C. Valenti and B.D. Woerner, “Distributed multiuser detection for the TDMA cellular uplink,” IEE
Electronics Letters, vol. 35, no. 21, pp. 1803-1804, Oct. 21, 1999.
J32. M.C. Valenti and B.D. Woerner, “Refined channel estimation for coherent detection of turbo codes
over flat-fading channels,” IEE Electronics Letters, vol. 34, no. 17, pp. 1648-1649, Aug. 20, 1998.
Magazine Articles
A1. P. Rost, I. Berberana, A. Maeder, H. Paul, V. Suryaprakash, M.C. Valenti, D. Wubben, A. Dekorsy,
and G. Fettweis, “Benefits and challenges of virtualization in 5G radio access networks,” IEEE
Communications Magazine, vol. 53, no. 12, Communications Standards Supplement, pp. 75-82, Dec.
2015.
A2. N. Chandran and M.C. Valenti, “Cellular communication systems: Three generations of evolution in
wireless technology,” IEEE Potentials, vol. 20, no. 1, pp. 32-35, Feb./March 2001.
Book Chapters
B1. P. Rost, M.C. Valenti, S. Talarico, and A. Maeder, “Computational complexity and achievable rates in
centralized RAN,” in Cloud Radio Access Networks, Cambridge University Press, 2017.
B2. M.C. Valenti and M. Fanaei, “The interplay between modulation and channel coding,” Chapter 5 of
Transmission Techniques for Digital Communications, Elsevier, 2016.
B3. M.C. Valenti and D. Reynolds, “Distributed space-time block codes,” chapter 6 in Cooperative
Cellular Wireless Networks, Edited by E. Hossain, D.I. Kim, and V.K. Bhargava, Cambridge
University Press, 2011, pp. 153-175.
B4. M.C. Valenti, S. Cheng, and R. Iyer Seshadri, “Turbo and LDPC codes for digital video
broadcasting,” in Turbo Code Application: A Journey from a Paper to Realization, Edited by K.
Sripimanwat, Springer, 2005.
B5. M.C. Valenti and J. Sun, “Turbo codes,” in Handbook of RF and Wireless Technologies, Edited by F.
Dowla Editor, Newnes Press, 2004, pp. 375-399.
Refereed Conference Papers
C1. E. Hriba, M.C. Valenti, K. Venugopal, and R. W. Heath, Jr., “Accurately accounting for random
blockage in device-to-device mmwave networks,” in Proc. IEEE Global Commun. Conf.
(GLOBECOM), (Singapore), Dec. 2017.
C2. V. Talreja, M.C. Valenti, and N.M. Nasrabadi, “Multibiometric secure system based on deep
learning,” in Proc. IEEE Global Conf. on Signal and Information Processing (GlobalSIP), (Montreal,
Canada), Nov. 2017.
C3. T. Ferrett and M.C. Valenti, “Noncoherent analog network coding using LPDC-coded FSK,” to
appear in Proc. IEEE Int. Conf. on Commun. (ICC), (Paris), May 2017.
C4. K. Whetzel and M.C. Valenti, “Complexity-aware scheduling for an LDPC encoded C-RAN uplink,”
in Proc. Conf. on Info. Sci. and Sys.(CISS), (Baltimore, MD), Mar. 2017.
C5. S. Talarico, M.C. Valenti, and T.R, Halford, “Controlled barrage regions: Stochastic modeling,
analysis, and optimization,” in Proc. IEEE Military Commun. Conf. (MILCOM), (Baltimore, MD),
Nov. 2016.

6
Exhibit 4
Page 89
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60286 Page 21 of
43
MATTHEW C. VALENTI

C6. P. Rost, A. Maeder, M.C. Valenti, and S. Talarico, “Computationally aware sum-rate optimal
scheduling for centralized radio access networks,” in Proc. IEEE Global Commun. Conf.
(GLOBECOM), (San Diego, CA), Dec. 2015.
C7. S. Talarico and M.C. Valenti, “Frequency hopping on a 5G millimeter uplink,” in Proc. Asilomar
Conf. on Signals, Sys., & Computers, (Pacific Grove, CA), Nov. 2015. invited paper.
C8. K. Venugopal, M.C. Valenti, and R. W. Heath, Jr., “Analysis of millimeter-wave networked
wearables in crowded environments,” in Proc. Asilomar Conf. on Signals, Sys., & Computers, (Pacific
Grove, CA), Nov. 2015. invited paper.
C9. T. Ferrett and M.C. Valenti, “Reduced complexity detection for network-coded slotted ALOHA using
sphere decoding,” in Proc. Asilomar Conf. on Signals, Sys., & Computers, (Pacific Grove, CA), Nov.
2015.
C10. D. Torrieri, S. Talarico, and M.C. Valenti, “Performance analysis of a fifth-generation cellular
uplink,” in Proc. IEEE Military Commun. Conf. (MILCOM), (Tampa, FL), Oct. 2015.
C11. D. Torrieri, S. Talarico, and M.C. Valenti, “Optimization of an adaptive frequency-hopping
networks,” in Proc. IEEE Military Commun. Conf. (MILCOM), (Tampa, FL), Oct. 2015.
C12. T. Ferrett and M.C. Valenti, “LDPC Code Design for Noncoherent Physical Layer Network
Coding,” in Proc. IEEE Int. Conf. on Commun. (ICC), (London), June 2015.
C13. K. Venugopal, M.C. Valenti, and R. W. Heath, Jr., “Interference in finite-sized highly dense
millimeter wave networks,” in Proc. Information Theory and Applications (ITA) Workshop, (San
Diego, CA), Feb. 2015. invited paper.
C14. M.C. Valenti, S. Talarico, and P. Rost, “The role of computational outage in dense cloud-based
centralized radio access networks,” in Proc. IEEE Global Commun. Conf. (GLOBECOM), (Austin,
TX), Dec. 2014.
C15. D. Torrieri, S. Talarico, and M.C. Valenti, “Performance analysis of geographic routing protocols in
ad hoc networks,” in Proc. IEEE Military Commun. Conf. (MILCOM), (Baltimore, MD), Oct. 2014.
C16. S. Talarico, M.C. Valenti, and T.R, Halford, “Unicast barrage relay networks: Outage analysis and
optimization,” in Proc. IEEE Military Commun. Conf. (MILCOM), (Baltimore, MD), Oct. 2014.
C17. A.S. Bommagani, M.C. Valenti, and A. Ross, “A framework for secure cloud-empowered mobile
biometrics,” in Proc. IEEE Military Commun. Conf. (MILCOM), (Baltimore, MD), Oct. 2014.
C18. M. Fanaei, A. Tahmasbi-Sarvestani, Y.P. Fallah, G. Bansal, M.C. Valenti, and J. Kenny, “Adaptive
content control for communication amongst cooperative automated vehicles,” in Proc. IEEE
International Symposium on Wireless Vehicular Communications (WIVEC), (Vancouver, Canada),
Sept. 2014.
C19. M. Fanaei, M.C. Valenti, and N. Schmid, “Effects of spatial randomness on locating a point source
with distributed sensors,” in Proc. IEEE Int. Conf. on Commun. (ICC) Workshop on Advances in
Network Localization and Navigation (ANLN), (Sydney), June 2014, invited paper.
C20. S. Talarico and M.C. Valenti, “An accurate and efficient analysis of an MBSFN network,” in Proc.
IEEE Int. Conf. on Acoustics, Speech, and Signal Processing (ICASSP), (Florence, Italy), May 2014.
C21. M. Fanaei, M.C. Valenti, A. Jamalipour, and N. Schmid, “Optimal power allocation for distributed
BLUE estimation with linear spatial collaboration,” in Proc. IEEE Int. Conf. on Acoustics, Speech,
and Signal Processing (ICASSP), (Florence, Italy), May 2014.
C22. D. Torrieri, M.C. Valenti, and S. Talarico, “Analysis of multi-cell downlink cooperation with a
constrained spatial model,” in Proc. IEEE Global Commun. Conf. (GLOBECOM), (Atlanta, GA),
Dec. 2013.
C23. D. Torrieri, S. Talarico, and M.C. Valenti, “Multihop routing in ad hoc networks,” in Proc. IEEE
Military Commun. Conf. (MILCOM), (San Diego, CA), Nov. 2013.

7
Exhibit 4
Page 90
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60287 Page 22 of
43
MATTHEW C. VALENTI

C24. M. Fanaei, M.C. Valenti, and N.A. Schmid, “Power allocation for distributed BLUE estimation with
full and limited feedback of CSI,” in Proc. IEEE Military Commun. Conf. (MILCOM), (San Diego,
CA), Nov. 2013.
C25. M. Fanaei, M.C. Valenti, and N.A. Schmid, “Limited-feedback-based channel-aware power
allocation for linear distributed estimation,” in Proc. Asilomar Conf. on Signals, Sys., & Computers,
(Pacific Grove, CA), Nov. 2013.
C26. D. Torrieri, M.C. Valenti, and S. Talarico, “A new analysis of the DS-CDMA cellular uplink under
spatial constraints,” in Proc. IEEE Int. Conf. on Commun. (ICC), (Budapest, Hungary), June 2013.
C27. M.C. Valenti, D. Torrieri, and S. Talarico, “Adjacent-channel interference in frequency-hopping ad
hoc networks,” in Proc. IEEE Int. Conf. on Commun. (ICC), (Budapest, Hungary), June 2013.
C28. T. Ferrett, M.C. Valenti, and D. Torrieri, “An iterative noncoherent relay receiver for the two-way
relay channel,” in Proc. IEEE Int. Conf. on Commun. (ICC), (Budapest, Hungary), June 2013.
C29. M.C. Valenti, D. Torrieri, and S. Talarico, “A new analysis of the DS-CDMA cellular downlink
under spatial constraints,” in Proc. Int. Conf. on Computing, Networking, and Commun. (ICNC), (San
Diego, CA), Jan. 2013.
C30. X. Xiang and M.C. Valenti, “Closing the gap to the capacity of APSK: Constellation shaping and
degree distributions,” in Proc. Int. Conf. on Computing, Networking, and Commun. (ICNC), (San
Diego, CA), Jan. 2013.
C31. D. Torrieri and M.C. Valenti, “Guard zones and the near-far problem in DS-CDMA ad hoc
networks,” in Proc. IEEE Military Commun. Conf. (MILCOM), (Orlando, FL), Nov. 2012, pp. 86-91.
C32. M.C. Valenti, D. Torrieri, and S. Talarico, “Optimization of a finite frequency-hopping ad hoc
network in Nakagami fading,” in Proc. IEEE Military Commun. Conf. (MILCOM), (Orlando, FL),
Nov. 2012, pp. 192-197.
C33. N. Schmid, M. Alkhweldi, and M.C. Valenti, “Distributed estimation of a parametric field using
sparse noisy data,” in Proc. IEEE Military Commun. Conf. (MILCOM), (Orlando, FL), Nov. 2012.
C34. S. Talarico, M.C. Valenti, and D. Torrieri, “Analysis and optimization of a frequency hopping ad hoc
network in Rayleigh fading,” in Proc. Virginia Tech Symp. on Wireless Personal Commun.,
(Blacksburg, VA), May 2012.
C35. T. Ferrett, H. Ochiai, and M.C. Valenti, “Physical-layer network coding using FSK modulation under
frequency offset,” in Proc. IEEE Vehicular Tech. Conf. (VTC), (Yokohama, Japan), May 2012.
C36. M. Fanaei, M.C. Valenti, and N. Schmid, “Distributed parameter estimation in wireless sensor
networks using fused local observations,” in Proc. SPIE Wireless Sensing, Localization, and
Processing VII, (Baltimore, MD), Apr. 2012.
C37. T. Ferrett, M.C. Valenti, and D. Torrieri, “Noncoherent digital network coding using multi-tone
CPFSK,” in Proc. IEEE Military Commun. Conf. (MILCOM), (Baltimore, MD), Nov. 2011.
C38. X. Xiang and M.C. Valenti, “Improving DVB-S2 performance through constellation shaping and
iterative demapping,” in Proc. IEEE Military Commun. Conf. (MILCOM), (Baltimore, MD), Nov.
2011.
C39. M.C. Valenti and X. Xiang, “Constellation shaping for bit-interleaved coded APSK,” in Proc. IEEE
Int. Conf. on Commun. (ICC), (Kyoto, Japan), June 2011.
C40. M.C. Valenti, “An information-theoretic approach to accelerated simulation of hybrid-ARQ
systems,” in Proc. IEEE Int. Conf. on Commun. (ICC), (Kyoto, Japan), June 2011.
C41. M. Fanaei, M.C. Valenti, N. Schmid and V. Kulathumani, “Channel-aware distributed classification
using binary local decisions,” in Proc. SPIE Signal Processing, Sensor Fusion, and Target
Recognition XX, (Orlando, FL), Apr. 2011.

8
Exhibit 4
Page 91
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60288 Page 23 of
43
MATTHEW C. VALENTI

C42. C. Nannapaneni, M.C. Valenti, and X. Xiang, “Constellation shaping for communication channels
with quantized outputs,” in Proc. Conf. on Info. Sci. and Sys. (CISS), (Baltimore, MD), Mar. 2011.
C43. T. Ferrett, M.C. Valenti, and D. Torrieri, “Receiver design for Noncoherent digital network coding,”
in Proc. IEEE Military Commun. Conf. (MILCOM), (San Jose, CA), Nov. 2010.
C44. M.C. Valenti, S. Cheng, and D. Torrieri, “Iterative multisymbol noncoherent reception of coded
CPFSK,” in Proc. IEEE Military Communications Conference (MILCOM), (Boston, MA), Oct. 2009.
C45. M.C. Valenti, D. Torrieri, and T. Ferrett,“Noncoherent Physical-Layer Network Coding Using
Binary CPFSK Modulation,” in Proc. IEEE Military Communications Conference (MILCOM),
(Boston, MA), Oct. 2009.
C46. D. Torrieri and M.C. Valenti, “Efficient space-time block codes designed by a genetic algorithm,” in
Proc. IEEE Military Commun. Conf. (MILCOM), (San Diego, CA), Nov. 2008.
C47. M.C. Valenti, R. Doppalapudi, and D. Torrieri, “A genetic algorithm for designing constellations
with low error floors,” in Proc. Conf. on Info. Sci. and Sys. (CISS), (Princeton, NJ), Mar. 2008.
C48. D. Buckingham and M.C. Valenti, “The information-outage probability of finite-length codes over
AWGN channels,” in Proc. Conf. on Info. Sci. and Sys. (CISS), (Princeton, NJ), Mar. 2008.
C49. S. Cheng, M.C. Valenti, and D. Torrieri, “Coherent and multi-symbol noncoherent CPFSK: Capacity
and code design,” in Proc. IEEE Military Commun. Conf. (MILCOM), (Orlando, FL), Oct. 2007.
C50. D. Torrieri and M.C. Valenti, “Constellation labeling maps for low error floors,” in Proc. IEEE
Military Commun. Conf. (MILCOM), (Orlando, FL), Oct. 2007.
C51. Rohit Iyer Seshadri, S. Cheng, and M.C. Valenti, “The BICM capacity of coherent continuous-phase
frequency shift keying,” in Proc. IEEE Vehicular Tech. Conf. (VTC), (Baltimore, MD), Oct. 2007.
C52. X. Chen, S. Gong, N.A. Schmid, and M.C. Valenti, “UAV based distributed ATR under realistic
simulated environmental effects,” in Proc. SPIE Signal Processing, Sensor Fusion, and Target
Recognition XVI, (Orlando, FL), Apr. 2007.
C53. D. Torrieri, S. Cheng, and M.C. Valenti, “Robust frequency-hopping system for channels with
interference and frequency-selective fading,” in Proc. IEEE Int. Conf. on Commun. (ICC), (Glasgow,
Scotland), June 2007.
C54. R. Rajagopalan, D. Reynolds, M.C. Valenti, B.D. Woerner, “The impact of an antenna array in a
relay network,” in Proc. IEEE Int. Conf. on Commun. (ICC), (Glasgow, Scotland), June 2007.
C55. S. Cheng, R. Iyer Sehshadri, M.C. Valenti, and D. Torrieri, “The capacity of noncoherent
continuous-phase frequency shift keying,” in Proc. Conf. on Info. Sci. and Sys. (CISS), (Baltimore,
MD), Mar. 2007.
C56. S.A. Ahmad and M.C. Valenti, “A practical hybrid-ARQ protocol using noncoherent orthogonal
modulation,” in Proc. Conf. on Info. Sci. and Sys. (CISS), (Baltimore, MD), Mar. 2007.
C57. K.G. Vardhe, D. Reynolds, and M.C. Valenti, “Outage probability of a multi-user cooperation
protocol in an asynchronous CDMA cellular uplink,” in Proc. Conf. on Info. Sci. and Sys. (CISS),
(Baltimore, MD), Mar. 2007.
C58. S. Cheng and M.C. Valenti, “Union bound analysis of bit interleaved coded orthogonal modulation
with differential precoding,” in Proceedings of the International Symposium on Information Theory
(ISIT), (Seattle, WA), July 2006.
C59. R. Iyer Seshadri and M.C. Valenti, “A capacity-based approach for designing bit-interleaved coded
GFSK with noncoherent detection,” in Proceedings of the International Symposium on Information
Theory (ISIT), (Seattle, WA), July 2006.
C60. R. Iyer Seshadri and M.C. Valenti, “A capacity-based search for energy and bandwidth efficient bit-
interleaved coded noncoherent GFSK,” in Proceedings of the Virginia Tech Symp. on Wireless
Personal Commun., (Blacksburg, VA), June 2006.

9
Exhibit 4
Page 92
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60289 Page 24 of
43
MATTHEW C. VALENTI

C61. R. Iyer Seshadri and M.C. Valenti, “Soft-in/soft-out noncoherent sequence detection for Bluetooth:
Capacity, error rate and throughput analysis,” in Proceedings of the IEEE Wireless Commun. &
Networking Conf. (WCNC), (Las Vegas, NV), Apr. 2006, pp. 1354-1359.
C62. T. Ghanim and M.C. Valenti, “The throughput of hybrid-ARQ in block fading under modulation
constraints,” in Proceedings of the Conference on Information Sciences and Systems (CISS),
(Princeton, NJ), Mar. 2006.
C63. S. Cheng, M.C. Valenti, and D. Torrieri, “Turbo-NFSK: Iterative estimation, noncoherent
demodulation, and decoding for fast fading channels,” in Proc. IEEE Military Commun. Conf.
(MILCOM), (Atlantic City, NJ), Nov. 2005, pp. 3193-3199.
C64. S. Cheng and M.C. Valenti, “Macrodiversity packet combining for the IEEE 802.11a uplink,” in
Proc. IEEE Wireless Commun. & Networking Conf. (WCNC), (New Orleans, LA), Mar. 2005, pp. 88-
93.
C65. B. Zhao, R. Iyer Seshadri, and M.C. Valenti, “Geographic random forwarding with hybrid-ARQ for
ad hoc networks with rapid sleep cycles,” in Proc. IEEE Global Telecommun. Conf. (GLOBECOM),
(Dallas, TX), Dec. 2004, pp. 3047-3052.
C66. S. Cheng and M.C. Valenti, “Bit-interleaved turbo-coded noncoherent orthogonal modulation with
iterative demodulation and decoding: Capacity limits and convergence analysis,” in Proc. Asilomar
Conference on Signals, Systems, and Computers, (Pacific Grove, CA), Nov. 2004, pp. 2020-2024.
C67. J. Sun and M.C. Valenti, “Optimum frame synchronization for preamble-less packet transmission of
turbo codes,” in Proc. Asilomar Conference on Signals, Systems, and Computers, (Pacific Grove,
CA), Nov. 2004, pp. 1126-1130.
C68. M.C. Valenti and B. Zhao, “Hybrid-ARQ based intra-cluster geographic relaying,” in Proc. IEEE
Military Commun. Conf. (MILCOM), (Monterey, CA), Nov. 2004, pp. 805-811, invited paper.
C69. M.C. Valenti, E. Hueffmeier, B. Bogusch, and J. Fryer, “Towards the capacity of noncoherent
orthogonal modulation: BICM-ID for turbo coded NFSK,” in Proc. IEEE Military Commun. Conf.
(MILCOM), (Monterey, CA), Nov. 2004, pp. 1549-1555.
C70. S. Wei, D. Goeckel, and M. Valenti, “Asynchronous cooperative diversity,” in Proc. Conf. on Info.
Sci. and Sys. (CISS), (Princeton, NJ), Mar. 2004, 6 pages.
C71. G.J. Raux, A. Feliachi, and M.C. Valenti, “Telecommunication of stabilizing signals in power
systems,” in Proc. North American Power Symposium (NAPS), (Rolla, MO), Oct. 2003, 5 pages.
C72. B. Zhao and M.C. Valenti, “Some new adaptive protocols for the wireless relay channel,” in Proc.
Allerton Conf. on Commun., Control, and Comp., (Monticello, IL), Oct. 2003, pp. 1588-1589.
C73. M.C. Valenti and B. Zhao, “Distributed turbo codes: Towards the capacity of the relay channel,” in
Proc. IEEE Vehicular Tech. Conf. (VTC), (Orlando, FL), Oct. 2003, pp. 6-9.
C74. B. Zhao and M.C. Valenti, “Cooperative diversity using distributed turbo codes,” in Proc. Virginia
Tech Symp. on Wireless Personal Commun., (Blacksburg, VA), June 2003, pp.143-152.
C75. J. Sun and M.C. Valenti, “Synchronization of turbo codes based on online statistics,” in Proc. IEEE
Int. Conf. on Commun. (ICC), (Anchorage, AK), May 2003, pp. 2733-2737.
C76. B. Zhao and M.C. Valenti, “Convergence analysis of a new class of flexible hybrid concatenated
codes,” in Proc. Southeastern Symp. Sys. Theory (SSST), (Morgantown, WV), Mar. 2003, pp. 283-
287.
C77. M.C. Valenti and N. Correal, “Exploiting Macrodiversity in Dense Multihop Networks and Relay
Channels,” in Proc. IEEE Wireless Commun. & Networking Conf. (WCNC), (New Orleans, LA), Mar.
2003, pp. 1877-1882.
C78. M.C. Valenti, “Improving uplink performance by macrodiversity combining packets from adjacent
access points,” in Proc. IEEE Wireless Commun. & Networking Conf. (WCNC), (New Orleans, LA),
Mar. 2003, pp. 636-641.

10
Exhibit 4
Page 93
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60290 Page 25 of
43
MATTHEW C. VALENTI

C79. M.C. Valenti and M. Robert, “Improving the QoS of Bluetooth through turbo coding,” in Proc. IEEE
Military Commun. Conf. (MILCOM), (Los Angeles, CA), Oct. 2002, pp. 1057-1061.
C80. M.C. Valenti and M. Robert, “Custom coding, adaptive rate control, and distributed detection for
Bluetooth,” in Proc. IEEE Vehicular Tech. Conf. (VTC), (Vancouver, BC), Sept. 2002, pp. 918-922.
C81. S. Krishnamoorthy, M. Robert, S. Srikanteswara, M.C. Valenti, C. Anderson, and J.H. Reed,
“Channel frame error rate for Bluetooth in the presence of microwave ovens,” in Proc. IEEE
Vehicular Tech. Conf. (VTC), (Vancouver, BC), Sept. 2002, pp. 927-931.
C82. N.S. Correal, J. Heck, and M.C. Valenti, “An analog turbo decoder for an (8,4) product code,” in
Proc. IEEE Midwest Symp. on Circuits & Sys. (MWSCAS), (Tulsa, OK), Aug. 2002, pp. 632-635.
C83. N. Chandran and M.C. Valenti, “Bridging the gap between parallel and serial concatenated codes,” in
Proc. Virginia Tech Symp. on Wireless Personal Commun., (Blacksburg, VA), June 2002, pp. 145-
154.
C84. B. Naduvathuparambil, M.C. Valenti, and A. Feliachi, “Communication delays in wide area
measurement systems,” in Proc. Southeastern Symp. Sys. Theory (SSST), (Huntsville, AL), Mar.
2002, pp. 118-122.
C85. M.C. Valenti, M. Robert, and J.H. Reed, “On the throughput of Bluetooth data transmissions,” in
Proc. IEEE Wireless Commun. & Networking Conf. (WCNC), (Orlando, FL), Mar. 2002, pp. 119-123.
C86. B. Zhao and M.C. Valenti, “Per-survivor based detection of DPSK modulated high rate turbo codes
over Rayleigh fading channels,” in Proc. Asilomar Conference on Signals, Systems, and Computers,
(Pacific Grove, CA), Nov. 2001, pp. 1026-1030, invited paper.
C87. M.C. Valenti, “An efficient software radio implementation of the UMTS turbo codec,” in Proc. IEEE
International Symposium on Personal, Indoor, and Mobile Radio Communications (PIMRC), (San
Diego, CA), Oct. 2001, pp. 108-113.
C88. B. Zhao and M.C. Valenti, “Iterative demodulation and decoding of DPSK modulated turbo codes
over Rayleigh fading channels,” in Proc. Virginia Tech Symposium on Wireless Personal
Communications, (Blacksburg, VA), June 2001, pp. 259-270.
C89. D. Baker and M.C. Valenti, “The impact of channel estimation errors on space time block codes,” in
Proc. Virginia Tech Symposium on Wireless Personal Communications, Blacksburg, VA, June 2001,
pp. 175-186.
C90. Y. Tang and M.C. Valenti, “Coded transmit macrodiversity: Block space-time codes over distributed
antennas,” in Proc. IEEE Vehicular Technology Conference (VTC), (Rhodes, Greece), May 2001, pp.
1435-1438.
C91. N. Chandran and M.C. Valenti, “Hybrid ARQ using Serial Concatenated Convolutional Codes over
Fading Channels” in Proc. IEEE Vehicular Technology Conference (VTC), (Rhodes, Greece), May
2001, pp. 1410-1414.
C92. M.C. Valenti, “Inserting turbo code technology in the DVB satellite broadcasting system,” in Proc.
Military Communications International Symposium (MILCOM), Los Angeles, CA, Nov. 2000, pp.
650-654.
C93. M.C. Valenti, “Iterative channel estimation and decoding of turbo codes over flat-fading channels,”
in Proc. IEEE Wireless Communications and Networking Conference (WCNC), Chicago, IL, Sept.
2000, pp. 1019-1024, invited paper.
C94. M.C. Valenti, “An optimal soft-output multiuser detection algorithm and its applications,” in Proc.
Second International Symposium of Turbo Codes and Related Topics, Brest, France, Sept. 2000, pp.
177-180.
C95. Y. Wu and M.C. Valenti, “An ARQ technique using related parallel and serial concatenated
convolutional codes,” in Proc. Int. Conf. on Commun. (ICC), New Orleans, LA, June 2000, pp. 1390-
1394.

11
Exhibit 4
Page 94
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60291 Page 26 of
43
MATTHEW C. VALENTI

C96. M.C. Valenti and B.D. Woerner, “A bandwidth efficient pilot symbol technique for coherent
detection of turbo codes over fading channels,” in Proc. Military Communications International
Symposium (MILCOM), Atlantic City, NJ, Nov. 1999, pp. 81-85.
C97. M.C. Valenti, “Turbo codes and iterative processing,” in Proc. IEEE New Zealand Wireless Commun.
Symp., (Auckland, New Zealand), Nov. 1998.
C98. M.C. Valenti and B.D. Woerner, “Combined multiuser detection and channel decoding with receiver
diversity,” in Proc. IEEE Global Telecommun. Conf. (GLOBECOM), Commun. Theory Mini-Conf.,
(Sydney, Australia), Nov. 1998, pp. 137-142.
C99. M.C. Valenti and B.D. Woerner, “Multiuser detection with base station diversity,” in Proc. IEEE Int.
Conf. on Universal Personal Commun. (ICUPC), (Florence, Italy), Oct. 1998, pp. 1189-1194.
C100. M.C. Valenti and B.D. Woerner, “Iterative multiuser detection for convolutionally coded
asynchronous DS-CDMA,” in Proc. IEEE Int. Symp. on Personal, Indoor, & Mobile Radio Commun.
(PIMRC), (Boston, MA), Sept. 1998, pp. 213-217.
C101. M.C. Valenti and B.D. Woerner, “Performance of turbo codes in interleaved flat fading channels
with estimated channel state information,” in Proc. IEEE Vehicular Tech. Conf. (VTC), (Ottawa, ON),
May 1998, pp. 66-70.
C102. M.C. Valenti and B.D. Woerner, “Combined multiuser reception and channel decoding for TDMA
cellular systems,” in Proc. IEEE Vehicular Tech. Conf. (VTC), (Ottawa, ON), May 1998, pp. 1915-
1919.
C103. M.C. Valenti and B.D. Woerner, “Variable latency turbo codes for wireless multimedia
applications,” in Proc. Int. Symp. on Turbo Codes & Related Topics, (Brest, France), Sept. 1997, pp.
216-219.
B. PRESENTATIONS
Invited Research Seminars and Tutorial Presentations
1. “Centralized radio access networks: Moving baseband to the Cloud,” a half-day tutorial presented at
the IEEE International Conference on Communications (Kuala Lumpur, Malaysia), May 27, 2016.
2. “The computational requirements of centralized RAN,” invited presentation, Communication Theory
Workshop (Nafplio, Greece), May 16, 2016.
3. “Research challenges in biometrics”, invited seminar, Biometrics Institute meeting (Australian
Embassy, Washington, DC), Sep. 15, 2015.
4. “Computational outage: A new KPI for C-RAN,” invited seminar, University of Southampton
(Southampton, UK), June 12, 2015.
5. “Centralized radio access networks: Moving baseband to the Cloud,” a half-day tutorial presented at
the Virginia Tech Symposium on Wireless Personal Communications and Annual Wireless Summer
School, (Blacksburg, VA), May 28, 2015.
6. “Coverage and rate in finite-sized device-to-device millimeter wave networks,” invited seminar,
McGill Univeristy (Montreal, Quebec), Mar. 23, 2015.
7. “Centralized radio access networks: The case for baseband in the cloud,” invited seminar, University
of Toronto (Toronto, ON), Nov. 12, 2014.
8. “Centralized radio access networks: The case for baseband in the cloud,” invited seminar, University of
New Mexico (Albuquerque, NM), Oct. 31, 2014.
9. “Mobile biometrics in the cloud,” invited presentation, Smart Card Alliance Government Conference
(Washington, DC), Oct. 30, 2014.
10. “Computational communication theory: A modern tool for engineering future wireless networks,”
invited seminar, Motorola Labs (Plantation, FL), May 23, 2014.

12
Exhibit 4
Page 95
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60292 Page 27 of
43
MATTHEW C. VALENTI

11. “Interference and spatial modeling in wireless networks,” invited seminar, University at Buffalo, The
State University of New York (Buffalo, NY), May 15, 2014.
12. “Interference and spatial modeling in wireless networks,” invited seminar, University of Pisa (Pisa,
Italy), May 5, 2014.
13. “A day in the life of an LTE handset,” a half-day tutorial presented at the Virginia Tech Symposium on
Wireless Personal Communications and Annual Wireless Summer School, (Blacksburg, VA), May 30,
2013.
14. “Interference and spatial modeling in wireless networks,” invited seminar, Clemson University, May
28, 2013
15. “Constellation shaping for LDPC-coded APSK,” invited seminar, Hughes Network Systems
(Germantown, MD), Mar. 14, 2013.
16. “The LTE physical layer,” a half-day tutorial presented at the Virginia Tech Symposium on Wireless
Personal Communications, (Blacksburg, VA), June 1, 2012.
17. “A high-performance computing approach to wireless network optimisation,” invited seminar,
University of Auckland (Auckland, New Zealand), Feb. 3, 2012.
18. “Communication theory in the cloud: The transformative power of cheap utility computing,” plenary,
Australian Communication Theory Workshop (Wellington, New Zealand), Jan. 30, 2012.
19. “Modern digital satellite television: How it works,” invited seminar, United States Naval Academy,
Nov. 7, 2011.
20. “Modern digital satellite television: How it works,” invited seminar, Georgia Institute of Technology,
Nov. 1, 2011.
21. “The transmission capacity of frequency-hopping ad hoc networks,” invited seminar, Osaka
University, June 13, 2011.
22. “LDPC codes: Achieving the capacity of the binary erasure channel,” invited talk, Math/CS
Colloquium (West Virginia University, Morgantown, WV), Nov. 30, 2009.
23. “Communication theory in the cloud,” invited seminar, University of Toronto, Oct. 30, 2009.
24. “Channel coding for IEEE 802.16e mobile WiMAX,” a half-day tutorial presented at the IEEE
International Conference on Communications (Dresden, Germany), June 18, 2009.
25. “Channel coding for IEEE 802.16e mobile WiMAX,” a half-day tutorial presented at the Virginia Tech
Symposium on Wireless Personal Communications (Blacksburg, VA), June 4, 2009.
26. “Mutual information as a tool for the design, analysis, and testing of modern communication systems,”
invited seminar presented to Hughes Network Systems, (Germantown, MD), June 8, 2007.
27. “Turbo and LDPC codes: Implementation, simulation, and standardization,” a half-day tutorial
presented at the 16th Virginia Tech/MPRG Symposium on Wireless Personal Communications and 2nd
Annual Wireless Summer School, (Blacksburg, VA), June 2006.
28. “Distributed Simulation of Modern Communication Systems Using the Global Grid Exchange,”
invited presentation, Teaming to Win Conference, Stonewall Jackson Resort (Walkersville, WV), June
1, 2006.
29. “Distributed Simulation of Modern Communication Systems Using the Global Grid Exchange,”
invited presentation, West Virginia University Computing & Technology Symp., Apr. 12, 2006.
30. “Modern wireless network design based on constrained capacity,” invited seminar, Pittsburgh Signal
Processing Society Seminar, University of Pittsburgh, April 20, 2005.
31. “Coded-protocols for implementing cooperative diversity,” invited research colloquium, Motorola
Corporate Research Labs, (Schaumburg, IL), June 30, 2004.

13
Exhibit 4
Page 96
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60293 Page 28 of
43
MATTHEW C. VALENTI

32. “Bluetooth: Throughput analysis and tricks to improve performance,” invited seminar, Ohio
University, (Athens, OH), May 15, 2002.
33. “Bluetooth: Link and physical layer,” invited research colloquium, Motorola Florida Research Labs,
(Plantation, FL), Mar. 25, 2002.
34. “Turbo codes and iterative processing,” invited research colloquium, Motorola Florida Research Labs,
(Plantation, FL), Mar. 22, 2002.
35. “Emerging wireless standards,” invited presentation, Second YAS Broadband Venture Seminar, West
Virginia University, (Morgantown, WV), Sept. 7, 2001.
36. “Wireless communications research at West Virginia University,” invited research colloquium,
National Radio Astronomy Observatory (NRAO), (Green Bank, WV), June 13, 2000.
Oral Conference Presentations
1. “Accurately accounting for random blockage in device-to-device mmwave networks,” Global
Commun. Conf. (GLOBECOM), (Singapore), Dec. 5, 2017.
2. “Controlled barrage regions: Stochastic modeling, analysis, and optimization,” IEEE Military
Commun. Conf. (MILCOM), (Baltimore, MD), Nov. 2016.
3. “Frequency hopping on a 5G millimeter uplink,” in Proc. Asilomar Conf. on Signals, Sys., &
Computers, (Pacific Grove, CA), Nov. 2015
4. “Optimization of an adaptive frequency-hopping networks,” in Proc. IEEE Military Commun. Conf.
(MILCOM), (Tampa, FL), Oct. 2015.
5. “Effects of spatial randomness on locating a point source with distributed sensors,” IEEE Int. Conf. on
Commun. (ICC) Workshop on Advances in Network Localization and Navigation (ANLN), (Sydney),
June 2014.
6. “An iterative noncoherent relay receiver for the two-way relay channel,” in Proc. IEEE Int. Conf. on
Commun. (ICC), (Budapest, Hungary), June 2013.
7. “Closing the gap to the capacity of APSK: Constellation shaping and degree distributions,” in Proc.
Int. Conf. on Computing, Networking, and Commun. (ICNC), (San Diego, CA), Jan. 2013.
8. “Analysis and optimization of a frequency hopping ad hoc network in Rayleigh fading,” Virginia Tech
Symp. on Wireless Personal Commun., (Blacksburg, VA), May 30, 2012.
9. “Iterative multisymbol noncoherent reception of coded CPFSK,” presented at the IEEE Military
Communications Conference (MILCOM), (Boston, MA), Oct. 19, 2009.
10. “Robust frequency-hopping system for channels with interference and frequency-selective fading,”
IEEE Int. Conf. on Commun. (ICC), (Glasgow, Scotland), June 2007.
11. “The impact of an antenna array in a relay network,” IEEE Int. Conf. on Commun. (ICC), (Glasgow,
Scotland), June 2007.
12. “Macrodiversity packet combining for the IEEE 802.11a uplink,” IEEE Wireless Commun. &
Networking Conf. (WCNC), (New Orleans, LA), Mar. 2005.
13. “Bit-interleaved turbo-coded noncoherent orthogonal modulation with iterative demodulation and
decoding: Capacity limits and convergence analysis,” Asilomar Conference on Signals, Systems, and
Computers, (Pacific Grove, CA), Nov. 2004.
14. “Hybrid-ARQ based intra-cluster geographic relaying,” in Proc. IEEE Military Commun. Conf.
(MILCOM), (Monterey, CA), Nov. 2004, invited presentation.
15. “Towards the capacity of noncoherent orthogonal modulation: BICM-ID for turbo coded NFSK,”
IEEE Military Commun. Conf. (MILCOM), (Monterey, CA), Nov. 2004.
16. “Some new adaptive protocols for the wireless relay channel,” Allerton Conf. on Commun., Control,
and Comp., Monticello, IL, Oct. 3, 2003.

14
Exhibit 4
Page 97
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60294 Page 29 of
43
MATTHEW C. VALENTI

17. “Cooperative diversity using distributed turbo codes,” Virginia Tech Symp. on Wireless Personal
Commun., Blacksburg, VA, June 6, 2003.
18. “Exploiting Macrodiversity in Dense Multihop Networks and Relay Channels,” IEEE Wireless
Commun. & Networking Conf. (WCNC), New Orleans, LA, Mar. 20, 2003.
19. “Improving uplink performance by macrodiversity combining packets from adjacent access points,”
IEEE Wireless Commun. & Networking Conf. (WCNC), New Orleans, LA, Mar. 19, 2003.
20. “Improving the QoS of Bluetooth Through Turbo Coding,” IEEE Military Commun. Conf. (MILCOM),
Los Angeles, CA, Oct. 8, 2002.
21. “Custom coding, adaptive rate control, and distributed detection for Bluetooth,” IEEE Vehicular Tech.
Conf. (VTC), Vancouver, BC, Sept. 26, 2002.
22. “An analog turbo decoder for an (8,4) product code,” IEEE Midwest Symp. on Circuits & Sys.
(MWSCAS), Tulsa, OK, Aug. 7, 2002.
23. “Bridging the gap between parallel and serial concatenated codes,” Virginia Tech Symp. on Wireless
Personal Commun., Blacksburg, VA, June 7, 2002.
24. “On the throughput of Bluetooth data transmissions,” IEEE Wireless Commun. & Networking Conf.
(WCNC), (Orlando, FL), Mar. 18, 2002.
25. “Per-survivor based detection of DPSK modulated high rate turbo codes over Rayleigh fading
channels,” Asilomar Conference on Signals, Systems, and Computers, Pacific Grove, CA, Nov. 2001,
invited presentation.
26. “An efficient software radio implementation of the UMTS turbo codec,” IEEE International Symp. on
Personal, Indoor, and Mobile Radio Communications (PIMRC), San Diego, CA, Oct. 2001.
27. “The impact of channel estimation errors on space time block codes,” Virginia Tech Symposium on
Wireless Personal Communications, Blacksburg, VA, June 2001.
28. “Coded transmit macrodiversity: Block space-time codes over distributed antennas,” in Proc. IEEE
Vehicular Technology Conference (VTC), Rhodes, Greece, May 2001.
29. “Hybrid ARQ using Serial Concatenated Convolutional Codes over Fading Channels” IEEE Vehicular
Technology Conference (VTC), Rhodes, Greece, May 2001.
30. “Inserting turbo code technology in the DVB satellite broadcasting system,” Military Communications
International Symposium (MILCOM), Los Angeles, CA, Nov. 2000.
31. “Iterative channel estimation and decoding of turbo codes over flat-fading channels,” Wireless
Communications and Networking Conference (WCNC), Chicago, IL, Sept. 2000, invited presentation.
32. “An optimal soft-output multiuser detection algorithm and its applications,” Second International
Symposium of Turbo Codes and Related Topics, Brest, France, Sept. 2000.
33. “An ARQ technique using related parallel and serial concatenated convolutional codes,” Int. Conf. on
Commun. (ICC), New Orleans, LA, June 2000.
34. “A bandwidth efficient pilot symbol technique for coherent detection of turbo codes over fading
channels,” Military Communications International Symp. (MILCOM), Atlantic City, NJ, Nov. 1999.
Poster Presentations
1. “Multibiometric secure system based on deep learning,” poster presentation, IEEE Global Conf. on
Signal and Information Processing (GlobalSIP), (Montreal, Canada), Nov. 2017
2. “Interference correlation in fixed and finite networks,” poster presentation, 2015 Communication
Theory Workshop, (Laguna Beach, CA), May 11, 2015.
3. “The role of computational outage in dense cloud-based centralized radio access networks,” poster
presentation, IEEE Global Commun. Conf. (GLOBECOM), (Austin, TX), Dec. 2014

15
Exhibit 4
Page 98
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60295 Page 30 of
43
MATTHEW C. VALENTI

4. “A direct approach to spatial averaging: Revisiting Baccelli's Result,” poster presentation, 2014 IEEE
Communication Theory Workshop, (Curacao), May 26, 2014.
5. “An information-theoretic approach to accelerated simulation of hybrid-ARQ systems,” poster
presentation, IEEE Int. Conf. on Commun. (ICC), (Kyoto, Japan), June 2011.
6. “Optimum frame synchronization for preamble-less packet transmission of turbo codes,” poster
presentation, Asilomar Conference on Signals, Systems, and Computers, (Pacific Grove, CA), Nov.
2004.
7. “Scaling cooperative diversity to large networks,” poster presentation, NATO Workshop on Cross-
Layer Issues in the Design of Tactical Mobile Ad Hoc Wireless Networks, (US Naval Research
Laboratory, Washington, DC), June 2-3, 2004.
8. “Iterative demodulation and decoding of DPSK modulated turbo codes over Rayleigh fading
channels,” poster presentation, Virginia Tech Symposium on Wireless Personal Communications,
(Virginia Tech, Blacksburg, VA), June 2001.

C. RESEARCH FUNDING
Research Title Granting Agency Dates of Agency Role
Award Funding
I/UCRC Phase II:I/UCRC for National Science 3/15/2017 to $564,458 PI
Identification Technology Foundation (and 2/28/2022
Research Industrial Affiliates)
Collaborative Research: National Science 3/15/2011 to $3,363,384 PI
I/UCRC for Identification Foundation (and 2/29/2017
Technology (CITeR) Industrial Afiliates)
Iris Liveness Detection MorphoTrak 9/1/2016 to $50,000 PI
8/31/2017
A Forensic Approach to Iris Center for Identification 8/16/2015 $34,400 PI
Analysis Technology Research to
(CITeR) 8/15/2016
an NSF I/UCRC
A Cloud-based Biometric Center for Identification 1/2/2015 $29,000 Co-PI
Service Model for Iris and Technology Research to
Ocular Recognition Using a (CITeR) 1/1/2016
Smartphone an NSF I/UCRC
I/UCRC FRP: Collaborative National Science 8/1/2013 to $65,000 Co-PI
Research: Enabling Biometrics Foundation 7/31/2014
Research in the Cloud: Design
and Demonstration
Cloud-Empowered Mobile Center for Identification 4/15/2013 to $34,400 PI
Biometrics Technology Research 5/15/2014
(CITeR)
an NSF I/UCRC
Intelligent Camera Networks for Office of Naval Research 9/3/2009 to $604,505 Co-PI
the Recognition of Human 9/2/2013
Activities in Urban
Environments
CRI: CRD: A Web-Accessible National Science 5/01/2008 to $578,351 PI (Sole)
Grid-Computing Resource for Foundation 4/30/2013
the Telecommunications
Research Community
Advanced Communications for US Army Research 9/29/2010 to $2,720,000 Investigator
Wireless Sensor Networks Laboratory 12/31/2012
Radiation Hardened Interceptor Welkin Sciences, LLC 6/15/2009 to $225,000 PI (sole)

16
Exhibit 4
Page 99
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60296 Page 31 of
43
MATTHEW C. VALENTI

Communications, Phase II. (Subcontract of phase II 5/31/2011
STTR award from MDA)
Initiatives in Computational- WVU Research 1/7/2009 to $28,784 PI
Based Discovery Corporation 12/31/2009
(PSCoR)
Evolutionary Design of Near- Parabon Computation 2/12/2007 to $59,177 PI (Sole)
Optimal Space Links (Subcontract of a NASA 2/28/2008
award)
Phase II of Development of a Augusta Systems 9/1/2005 to $277,498 PI
Concept for Swarmed mini- (Subcontract of phase II 8/31/2007
UAVs for Automatic Target STTR award from US
Recognition Navy)
Retrieval and Reconstruction of Federal Government 8/31/2004 to $683,168 Co-PI
Magnetic Data Using Scanning (classified agency) 8/30/2007
Probe Microscopy
Multiterminal Relaying Welkin Sciences, LLC 10/1/2007 to $30,000 PI (Sole)
Strategies (Subcontract of phase I 3/28/2007
STTR award from MDA)
Proximity Based Protocols for Augusta Systems 2/1/2006 to $75,000 PI
Highly Mobile Large Scale Ad (Subcontract of US Navy 12/31/2006
Hoc Networks award)
Improved Code and Receiver Xenotran 4/15/2005 to $87,585 PI (Sole)
Design for IFICS (Subcontract of phase II 8/15/2006
SBIR award from MDA)
Efficient and Reusable NASA 7/1/2005 to $20,000 PI (Sole)
Framework for Deep Space 6/30/2006
Mission Communication
Applications
Development of a Concept for Augusta Systems 7/1/2004 to $42,000 PI
Swarmed mini-UAVs for (Subcontract of phase I 9/15/2005
Automatic Target Recognition STTR award from ONR)
Software Radio Architectures NASA 7/1/2004 to $20,000 PI (Sole)
for Deep Space 6/30/2005
Communications
Advanced Packet-Based Office of Naval Research 4/1/2000 to $345,000 PI (Sole)
Communications: Turbo 6/30/2004
Coding, Synchronization, and
Automatic Repeat Request
Macrodiversity-Reception for Cisco Systems 1/1/2003 to $39,900 PI (Sole)
the Wireless LAN Uplink: (University Research 12/31/2003 no
Feasibility Study and Program) overhead
Application to IEEE 802.11a
Integrated Computing, Department of Energy 10/1/2000 to $900,000 Co-PI
Communication and Distributed (DOE EPSCoR) 9/30/2003
Control of Deregulated Electric
Power Systems
Development of Modules for Eritek, Inc. 5/15/2001 to $9,216 PI (Sole)
VisSim/Comm 12/31/2001
Turbo Space-Time Codes for NASA 5/15/2000 to $13,333 PI (Sole)
High Data Rate Wireless 5/14/2001
Communications
Turbo Code Consulting Coleman Research 2/1/2000 to $14,475 PI (Sole)
Corporation (now L3) 7/31/2000

17
Exhibit 4
Page 100
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60297 Page 32 of
43
MATTHEW C. VALENTI

IV SERVICE
A. SERVICE TO THE PROFESSION
1. Journal Editorship
Editor-in-Chief, IEEE Communications Society Best Readings, 2015-present.
Best Readings is an online repository of curated content. It publishes four issues per year, with each issue
devoted to a particular technology. Examples include Massive MIMO, Nanoscale Communication
Networks, and Cloud Communications and Networking.
Executive Editorial Committee, IEEE Transactions on Wireless Communications, 2014-2017.
This committee assists the Editor-in-Chief with the screening of submissions, providing early reject
decisions and assignment to Area Editors. (Committee Chair: 2016-2017)
Editor, IEEE Transactions on Communications, 2013-2016.
Editor, IEEE Wireless Communications Letters, 2011-2014.
Editor, IEEE Transactions on Wireless Communications, 2007-2011.
Editor, IEEE Transactions on Vehicular Technology, 2003-2007.
2. Conference Organizer or Member of Technical Program Committee (TPC)
IEEE Globecom/ICC Technical Content (GITC) Committee
Chair, 2018-2019
Vice Chair, 2016-2017
Member, 2015-2019
This is the (technical) steering committee for Globecom and ICC, the flagship conferences on
communication technology sponsored by the IEEE Communications Society.
IEEE Military Communications Conference (MILCOM) Board
Member, 2014-2017
This is the steering committee for MILCOM, the flagship IEEE/AFCEA conference on military conference.
Technical Program Chair, IEEE Military Communications Conference (Milcom) 2017, Baltimore, MD,
Oct. 2017
Unclassified Technical Program Chair, IEEE Military Communications Conference (Milcom) 2016,
Baltimore, MD, Oct. 2016
Technical Program Vice Chair, IEEE Military Communications Conference (Milcom) 2015, Tampa, FL,
Oct. 2015
Technical Program Vice Chair, IEEE Global Communications Conference (Globecom) 2013, Atlanta,
GA, Dec. 2013
Workshop Co-Chair, 4th International Workshop on 5G Architecture, 2017 International Conference on
Communications (ICC) Workshops, Paris, France, May 2017.
Symposium Co-Chair, Wireless Communications Symposium, IEEE Global Communications Conference
(Globecom) 2015, San Diego, CA, Dec. 2015.
Track Chair, Waveforms and Signal Processing Track, IEEE Military Communications Conference
(Milcom) 2014, San Diego, CA, Oct. 2014.
Track Co-Chair, Waveforms and Signal Processing Track, IEEE Military Communications Conference
(Milcom) 2012, Orlando, FL, Oct./Nov. 2012.
Symposium Co-Chair, Communication Theory Symposium, IEEE International Conference on
Communications (ICC) 2011, Kyoto, Japan, June 2011.
Track Co-Chair, Waveforms and Signal Processing Track, IEEE Military Communications Conference
(Milcom) 2010, San Jose, California, Oct./Nov. 2010.

18
Exhibit 4
Page 101
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60298 Page 33 of
43
MATTHEW C. VALENTI

Symposium Co-Chair, Wireless Communications Symposium, IEEE International Conference on
Communications (ICC) 2009, Dresden, Germany, May 2009.
Track Co-Chair, Transmission Technologies, IEEE Vehicular Technology Conference (VTC) Fall-2007,
Baltimore, MD, Oct. 2007.
Member, Technical Program Committee, IEEE Global Telecommunications Conference (Globecom) for
the following symposia and years:
 Communication Theory Symposium 2017, Singapore, Dec. 2017.
 Communication Theory Symposium 2016, Washington, DC, Dec. 2016.
 Communication Theory Symposium 2014, Austin, TX, Dec. 2014.
 Communication Theory Symposium 2012, Anaheim, CA, Dec. 2012.
 Communication Theory Symposium 2011, Houston, TX, Dec. 2011.
 Wireless Communications Symposium 2010, Miami, FL, Dec. 2010.
 Wireless Communications Symposium 2009, Honolulu, HI, Nov/Dec. 2009.
 Wireless Communications Symposium 2008, New Orleans, LA, Dec. 2008.
 Communication Theory Symposium 2007, Washington, DC, Nov. 2007.
 Next Generation Networks Symposium 2006, San Francisco, Dec. 2006.
 Wireless Communications Symposium 2005, St. Louis, Nov.-Dec. 2005.
Member, Technical Program Committee, IEEE International Conference on Communications (ICC) for
the following symposia and years:
 Communication Theory Symposium 2018, Kansas City, MO, May 2018.
 Communication Theory Symposium 2017, Paris, France, May 2017.
 Communication Theory Symposium 2016, Koala Lumpur, May 2016.
Also Member of ICC-2016 Best Paper Award Committee
 Wireless Communications Symposium 2016, Koala Lumpur, May 2016.
 Communication Theory Symposium 2015, London, England, June 2015.
 Communication Theory Symposium 2014, Sydney, Australia, June 2014.
 Communication Theory Symposium 2013, Budapest, Hungary, June 2013.
Also Member of ICC-2013 Best Paper Award Committee
 Communication Theory Symposium 2012, Ottawa, Canada, June 2012.
 Wireless Communications Symposium 2008, Beijing, China, May 2008.
 Wireless Communications Symposium 2007, Glasgow, Scotland, May 2007.
 General Conference 2005, Seoul, Korea, May 2005.
Member, Technical Program Committee, IEEE Wireless Communications & Networking Conference
(WCNC) for the following years:
 2018, Barcelona, Spain, Mar. 2018.
 2017, San Francisco, CA, Mar. 2017.
 2015, New Orleans, LA, Mar. 2015.
 2014, Istanbul, Turkey, Apr. 2014.
 2010, Sydney, Australia, Apr. 2010.
 2009, Budapest, hungary, Apr. 2009.
 2008, Las Vegas (NV), Mar.-Apr. 2008.
 2007, Hong Kong, Mar. 2007.
 2006, Las Vegas (NV), Apr. 2006.
Member, Technical Program Committee, IEEE Vehicular Technology Conference (VTC) for the
following tracks and years:
 Satellite Networks, Positioning Technologies, Localization and Navigation, Fall 2014,
Vancouver, Sept. 2014.
 Cooperative Communication, Distributed MIMO and Relaying Track, Spring 2013, Dresden,
Germany, June 2013.
 Transmission Technologies Track, Spring 2012, Yokohama, Japan, May 2012.

19
Exhibit 4
Page 102
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60299 Page 34 of
43
MATTHEW C. VALENTI

Member, Technical Program Committee, IEEE Military Communications Conference (Milcom) for the
following tracks and years:
 Waveforms and Signal Processing Track 2013, San Diego, CA, Nov. 2013.
 Waveforms and Signal Processing Track 2011, Baltimore, MD, Nov. 2011.
Member, Technical Program Committee, Wireless Telecommunications Symposium (WTS) 2015, New
York, NY, Apr. 2015.
Member, Technical Program Committee, Member, Technical Program Committee, Wireless
Telecommunications Symposium (WTS) 2015, New York, NY, Apr. 2015.
Member, Technical Program Committee, 7th International Symposium on Turbo Codes & Iterative
Processing, Gothenburg, Sweden, Aug. 2012.
Member, Technical Program Committee, European Wireless Conference 2008, Prague, Czech Republic,
June 2008.
Member of Technical Program Committee, Symposium on Cooperative Networks, IEEE WirelessCom,
Maui, Hawaii, June 2005.
Session Organizer, IEEE Military Communications Conference (Milcom) for the following years:
 “Interference and Fading I,” Boston, MA, Oct. 2009.
 “Coding and Modulation for Noncoherent Channels,” Atlantic City, NJ, Nov. 2005.
 “Advanced Coding Techniques,” Monterey, CA, Nov. 2004.
Workshop Co-chair, “Infrastructure and Applications for the Mobile Internet,” IEEE Int. Workshops on
Enabling Technologies: Infrastructure for Collaborative Enterprises (WETICE), Cambridge, MA, June
2001.
3. Session Chair
Session Organizer and Chair, “5G Cellular Networks,” Asilomar Conference on Signals, Systems, and
Computers, (Pacific Grove, CA), Nov. 2015.
Session Chair, “Cooperative Communications,” IEEE Global Communications Conference (Globecom),
Austin, TX, Dec. 11, 2014.
Session Chair, “Cooperative Communications (session 1),” IEEE Military Communications Conference
(Milcom), (San Diego, CA), Nov. 18, 2013.
Session Chair, “Relay Channels II (session CT-11),” IEEE International Conference on Communications
(ICC), (Budapest, Hungary), June 12, 2013.
Session Chair, “Cooperative Networks (session WSP-20),” IEEE Military Communications Conference
(Milcom), (San Jose, CA), Nov. 3, 2010.
Session Chair, “Interference and Fading I (session U116),” IEEE Military Communications Conference
(Milcom), (Boston, MA), Oct. 20, 2009.
Session Chair, “CDMA (session WCS-19),” IEEE International Conference on Communications (ICC),
(Dresden, Germany), June 16, 2009.
Session Chair, “Topics in Networking (session FA2),” Conf. on Info. Sci. and Sys. (CISS), (Baltimore,
MD), Mar. 2007.
Session Chair, “Modulation and Coding (session 4C),” IEEE Vehicular Tech. Conf. (VTC), (Baltimore,
MD), Oct. 2, 2007.
Session Chair, “Space-time Communication (session MCS-10)”, IEEE Military Communications
Symposium (MILCOM), (Orlando, FL), Oct. 31 2007.
Session Chair, “Phy 22: Space Time Codes I,” IEEE Wireless Communications & Networking Conference
(WCNC) 2005, (New Orleans, LA), Mar. 2005.

20
Exhibit 4
Page 103
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60300 Page 35 of
43
MATTHEW C. VALENTI

Session Chair, “Phy 23: Space Time Codes II,” IEEE Wireless Communications & Networking Conference
(WCNC) 2005, (New Orleans, LA), Mar. 2005.
Session Chair, “FEC,” Asilomar Conference on Signals, Systems, and Computers, (Pacific Grove, CA),
Nov. 2004.
Session Chair: “Performance Analysis 8,” IEEE Vehicular Tech. Conf. (VTC), (Vancouver, BC), Sept.
2002.
Session Chair: “High Data Rate Modulation and Coding Techniques,” IEEE Midwest Symposium on
Circuits and Systems (MWSCAS), (Tulsa, OK), Aug. 2002.
4. Reviewer/Panelist: Funding Agencies
National Research Foundation, Panelist and Reviewer for Enhanced Access to the Radio Spectrum
(EARS) Program (2016), BigData Program (2015), CyberSEES Program (2014), Communications
Research Program (2002 and 2005), Integrative, Hybrid and Complex Systems (IHCS) Program (2007),
Communications and Information Foundations (CIF) Program (2010 and 2012), Accelerating Innovation
Research (AIR) Program (2011), Spectrum Efficiency, Energy Efficiency, and Security (SpecEES) Program
(2017), and Industry & University Cooperative Research Program (I/UCRC) Program (2012 and 2016).
Air Force Office of Scientific Research, Proposal reviewer for Dynamics & Controls Program, 2007
Army Research Office, Proposal reviewer for Wireless Communications and Networks program, 2004,
2005, 2008, 2011, 2013, 2014, and 2017.
Tennessee EPSCoR State Committee, Reviewed Pre-Proposal for DoD EPSCoR Competition, 2004.
5. Reviewer: Journals
ACM Mobile Communications Review, 1 paper (2004).
Arabian Journal of Science and Engineering, 1 paper (2005).
EURASIP Journal on Applied Signal Processing, 1 paper (2003).
IASTED International Journal of Computers and Applications (IASTED), 1 paper (2004).
IEE Electronics Letters, 16 papers (2000-2003).
IEEE Trans. on Aerospace and Electronic Systems, 1 paper (2007-2008).
IEEE Communications Letters, 26 papers (2000-2016).
IEEE Journal on Selected Areas of Communications, 19 papers (1999-2017).
IEEE Signal Processing Letters, 3 papers (2009-2012).
IEEE Trans. on Broadcasting, 1 paper (2017).
IEEE Trans. on Circuits and Systems, 1 paper (2002).
IEEE Trans. on Communications, 58 papers (1998-2016).
IEEE Trans. on Education, 3 papers (1999-2010).
IEEE Trans. on Information Theory, 1 paper (2005-2007).
IEEE Trans. on Networking, 2 papers (2005-2006, 2013).
IEEE Trans. on Mobile Computing, 1 paper (2012).
IEEE Trans. on Signal Processing, 3 papers (2001-2005).
IEEE Trans. on Vehicular Tech., 12 papers (2002-2017).
IEEE Trans. on Wireless Communications, 32 papers (2001-2017).
IEEE Vehicular Technology Magazine, 1 paper (2016).

21
Exhibit 4
Page 104
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60301 Page 36 of
43
MATTHEW C. VALENTI

IEEE Wireless Communications Magazine, 1 paper (2011).
IEE Communications, 1 paper (2010).
Wireless Communications & Mobile Computing (Wiley), 1 paper (2001).
6. Reviewer: Books and Book Proposals
Cambridge University Press, 1 book proposal (2010).
Springer, 3 books (2011, 2014, 2017).
Wiley & Sons, 13 book proposals (1999-2014).
Kluwer, 1 book proposal (2003).
7. Reviewer: Conferences
IEEE Global Communications Conference (Globecom), 2000-2017.
IEEE Int. Conf. on Communications (ICC), 2001-2018.
IEEE Int. Symp. on Information Theory (ISIT), 2003-2017.
IEEE Int. Symp. on Information Theory and its Applications (ISITA), 2004.
IEEE Int. Symp. on Personal, Indoor and Mobile Radio Communications (PIMRC), 2008-2013.
IEEE Int. Symp. on Spread Spectrum Techniques and Applications (ISSSTA), 2004.
IEEE Int. Symp. on Wireless Communication Systems (ISWCS), 2008.
IEEE Int. Workshop on Computational Advances in Multi-Sensor Adaptive Processing (CAMSAP), 2015.
IEEE Int. Workshop on Signal Processing Advances in Wireless Communications (SPAWC), 2005.
IEEE Military Communications Conf. (MILCOM), 2003-2017.
IEEE Vehicular Tech. Conf. (VTC), 2002-2014.
IEEE Wireless Commun. & Networking Conf. (WCNC), 2004-2018.
Int. Conf. on Commun. Systems (ICCS), 2004.
Int. Symp. on Turbo Codes & Iterative Processing, 2012.
Int. Symp. on Modeling & Optimization in Mobile, Ad Hoc, and Wireless Networks, 2017.
8. Professional Offices
Chair, Communication Theory Technical Committee (IEEE Communications Society), 2015-2016.
Vice Chair, Communication Theory Technical Committee (IEEE Communications Society), 2013-2014.
President, IEEE Upper Monongahela Subsection (under Pittsburgh Section), 2003.
Treasurer, IEEE Upper Monongahela Subsection, 2002.
Delegate at Large, IEEE Upper Monongahela Subsection, 1999-2001.
9. Professional membership
Fellow, Institute of Electrical and Electronics Engineers
Student Member 1992, Member 1999, Senior Member 2007, Fellow 2018.
Member, Radio Club of America, 1999-present.
Member, Phi Beta Phi, 1991-present.
Member, Eta Kappa Nu, 1990-present.

22
Exhibit 4
Page 105
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60302 Page 37 of
43
MATTHEW C. VALENTI

B. SERVICE TO THE UNIVERSITY
Governor, WVU Board of Governors, 2017-2019.
Senator, WVU Faculty Senate, 2006-2009, 2012-2018.
Chair, 2017-2018.
Chair-elect, 2016-2017.
Member, WVU Faculty Senate Executive Committee, 2015-2019.
Chair, 2017-2018.
Member, Faculty Senate Curriculum Committee, 2012-2017.
Chair, 2015-2017.
Chair-elect, 2014-2015.
Member, Faculty Senate Committee on Committees, 2016-2018.
Member, Faculty Senate Faculty Welfare Committee, 2016-2018.
Member, Faculty Senate General Education Committee, 2016-2017
Member, Presidential Search Committee, 2014.
One of the three faculty members selected to participate in the search for the 24th president of WVU
Member, Faculty Senate Library Committee, 2005-2008.
Chair, 2007-2008.
Member, WVU Educational Responsibility Roundtable, 2012-2014.
Roundtable charged with developing a plan for meeting Goal 1 of WVU’s Strategic Plan: “Engage
undergraduate, graduate, and professional students in a challenging academic environment.”
Member, Heebink Award Selection Committee, 2014-2016.
Member, Committee to Conduct 5-year Review of the Dean of Libraries, 2008-2009.
Member, Wireless Task Force, 2001-2002.
An Ad Hoc University Committee charged to study the impact and implementation of a campus-wide
wireless network.
Associate Member, Mountain, 2004-present.
Faculty Co-Advisor, WVU Amateur Radio Club, 1999-present.

C. SERVICE TO THE COLLEGE
Member, Statler Promotion and Tenure Committee, 2015-2018.
Chair, 2017-2018.
Member, Undergraduate Academic Affairs Committee, Statler College, 2010-2018.
Chair, 2011-2014.
Member, ABET Leadership Team, Statler College of Eng. & Mineral Res., 2012-2015.
Committee charged with preparing for 2015 ABET visit.
Member, Freshman Engineering Faculty Promotion Committee, 2013.
Charged with evaluating a teaching assistant professor up for a 3-year renewal.
Member, Outstanding Advisor Selection Committee, College of Engineering and Mineral Resources, 2010
and 2012.
Member, Library Committee, College of Engineering and Mineral Resources, 2004-2008.
Chair, 2006-2007.
Member, Teaching Award Committee, College of Engineering and Mineral Resources, 2008.

23
Exhibit 4
Page 106
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60303 Page 38 of
43
MATTHEW C. VALENTI

D. SERVICE TO THE DEPARTMENT
Faculty Advisor, WVU chapter of Eta Kappa Nu (HKN), the EE honor society, 2002-2017.
Member, CSEE Promotion and Tenure Committee, 2000-2002, 2005-2007, 2010-2012, and 2013-2015.
Chair, 2014-2015.
Member, CSEE Faculty Search Committee, 2001-2002, 2002-2003, and 2014-2015.
Chair, 2013-2015.
Member, EE Curriculum Committee, 1999-present.
Chair, 2010-present.
Chair, EE Graduate Curriculum Committee, 2007-2010.
Chair, CSEE Computer Systems Committee, 2004-2006.
Chair, Lane Fellowship Committee, 2000-2003.
Member, CSEE Graduate Affairs Committee, 2010-present.
Member, CSEE Computer Systems Committee, 2004-2015.
Chair, 2004-2006.

24
Exhibit 4
Page 107
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60304 Page 39 of
43
MATTHEW C. VALENTI

V. INSTRUCTION
A. COURSES TAUGHT
UNDERGRADUATE COURSES

Course Title Semester Number of Students
Number
EE 329 Signals & Systems II Spring 2005 43
Spring 2004 63
Spring 2002 38
EE 461 Introduction to Communication Systems Fall 2002 44
(was 264) Fall 2001 36
Fall 2000 14
Fall 1999 16
EE 463 Digital Signal Processing Fundamentals Spring 2010 25
Spring 2009 34
Spring 2008 35
Spring 2007 44
Spring 2006 36
CPE 462 Wireless Networking Fall 2017 6
(was 493g) Fall 2016 13
Fall 2015 10
Fall 2013 24
Fall 2012 30
Fall 2010 15
Fall 2008 22
Fall 2005 30
Fall 2004 43
Fall 2003 34
EE/CPE Independent Study: Wireless Networking Spring 2003 4
495

GRADUATE COURSES
Course Title Semester Number of Students
Number
EE 513 Stochastic Systems Theory Fall 2014 33
Fall 2011 27
Fall 2009 35
Fall 2006 63
Fall 2004 51
Fall 2002 39
Fall 2001 27
EE 561 Communication Theory Spring 2017 11
Spring 2015 24
Spring 2013 18
Spring 2011 25
Spring 2009 27
EE 562 Wireless Communication Systems Fall 2007 8
Fall 2000 14

25
Exhibit 4
Page 108
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60305 Page 40 of
43
MATTHEW C. VALENTI

EE 567 Coding Theory Spring 2016 19
Spring 2014 28
Spring 2012 16
Spring 2010 29
Spring 2008 24
Spring 2006 19
Spring 2004 27
EE/CPE 695 Independent Study: Wireless Networking Fall 2004 1
Independent Study: Wireless Application Summer II 1
Protocol 2000
Independent Study: DSP Implementation of Spring 2001 4
Communication Systems
Independent Study: Wireless Summer II 4
Communication Systems 2001
CS/EE/CPE 796 Graduate Seminar Fall 2016 CS 796: 25 / CPE 796: 1 / EE 796: 18
Spring 2016 CS 796: 12 / CPE 796: 0 / EE 796: 25
Fall 2015 CS 796: 28 / CPE 796: 2 / EE 796: 35
Spring 2015 CS 796: 11 / CPE 796: 5 / EE 796: 27
Fall 2014 CS 796: 23 / CPE 796: 5 / EE 796: 31
Spring 2014 CS 796: 20 / CPE 796: 1 / EE 796: 35
Fall 2013 CS 796: 17 / CPE 796: 1 / EE 796: 42
Spring 2013 CS 796: 18 / CPE 796: 3 / EE 796: 37
Fall 2012 CS 796: 31 / CPE 796: 2 / EE 796: 40
Spring 2012 CS 796: 18 / CPE 796: 3 / EE 796: 30
Fall 2011 CS 796: 29 / CPE 796: 4 / EE 796: 32
Spring 2011 CS 796: 11 / CPE 796: 2 / EE 796: 32
Fall 2010 CS 796: 18 / CPE 796: 1 / EE 796: 27
Spring 2010 CS 796: 17 / CPE 796: 3 / EE 796: 19
Fall 2009 CS 796: 25 / CPE 796: 2 / EE 796: 37
Spring 2009 CS 796: 8 / CPE 796: 1 / EE 796: 39
Fall 2008 CS 796: 9 / EE 796: 48
Spring 2008 EE 796: 38
Fall 2007 EE/CPE 796: 40
Spring 2007 EE/CPE 796: 66
Fall 2006 EE/CPE 796: 67
Spring 2006 CPE 796: 4 / EE 796: 48
Fall 2005 CPE 796: 1 / EE 796: 47 / CS 696: 2
Spring 2004 CPE 796: 6 / EE 796: 80
Fall 2003 CPE 796: 14 / EE 796: 36
Spring 2003 CPE 796: 10 / EE 796: 70

26
Exhibit 4
Page 109
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60306 Page 41 of
43
MATTHEW C. VALENTI

B. GRADUATE STUDENTS
1. Major Professor
Completed Ph.D. Students
1. Shi Cheng, Coded Continuous-phase FSK: Information Theoretic Limits and Receiver Design, Nov.
12, 2007.
2. Mohammad Fanaei, Distributed Detection and Estimation in Wireless Sensor Networks, July 22,
2016.
3. Terry Ferrett, Receiver Design for Physical-Layer Network Coding in the Two-Way Relay Channel,
July 21, 2017.
4. Rohit Iyer Seshadri, Capacity-Based Parameter Optimization of Bandwidth Constrained CPM, Aug.
31, 2007.
5. Jian Sun, Synchronization for Capacity-Approaching Coded Systems, Oct. 25, 2004.
6. Salvatore Talarico, Role of Interference and Computational Complexity in Modern Wireless
Networks: Analysis, Optimization and Design, Sept. 10, 2015.
7. Xingyu Xiang, Optimization of a Coded-Modulation System with Shaped Constellation, Apr. 12,
2013.
8. Bin Zhao, Multiterminal Relay Networks: Performance Bounds, Protocol Design, and Channel
Coding Strategies, Apr. 19, 2004.
Completed M.S. Students (Thesis or Problem Report students only)
1. Syed Amaar Ahmad, A Robust Hybrid-ARQ Protocol for Relay Networks, Apr. 4, 2007.
2. Naga Gopi Krishna Alapati, Green Cellular Networks: When Should a Base Station Be Turned Off?,
Dec. 2, 2015.
3. Deepthi Ancha, Implementation of Tail-Biting Convolutional Codes, Nov. 7, 2008.
4. Geetanjalee Athavale, Enabling Wireless Data Applications on Mobile Devices, Oct. 28, 2002.
5. Dirk Baker, Space-Time Block Coding with Imperfect Channel Estimates, Apr. 10, 2001.
6. Sri Lakshmi Balineni, Stochastic Geometry Analysis of a Class of Cooperative Relaying Protocols,
Apr. 18, 2017.
7. Anupama Battula, Implementation of Extrinsic Information Transfer Charts, Oct. 24, 2008.
8. Aruna Sri Bommagani, Distributed Monte Carlo Simulation, Nov. 3, 2011.
9. David Buckingham, Information Outage Analysis of Finite-Length Codes, Apr. 7, 2008.
10. Naveen Chandran, Hybrid ARQ with Parallel and Serial Concatenated Convolutional Codes for Next
Generation Wireless Communications, June 19, 2001.
11. Sheetu Dasari, Implementation & Analysis of a Hybrid-ARQ Based Cooperative Diversity Protocol
Using Reed-Solomon Codes, Nov. 14, 2005.
12. John Deal, Fractal Analysis of Fingerprints, Nov. 12, 2007.
13. Raghu Doppalapudi, Optimization of Bit Interleaved Coded Modulation Using Genetic Algorithms,
Oct. 20, 2008.
14. Terry Ferrett, Data Recovery from Magnetic Media Using Magnetic Force Microscopy, Apr. 25,
2008.
15. Ramesh Gali, A Tool for the Statistical Analysis and Post-Processing of Distributed Sensor Network
Data, Mar. 31, 2003.
16. Anusha Gangadi, Object-Oriented Implementation of LTE Turbo Codes, Nov. 5, 2010.

27
Exhibit 4
Page 110
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60307 Page 42 of
43
MATTHEW C. VALENTI

17. Timothy Gerkin, Implementation of LDPC Codes Using the IEEE 802.16e Standard, Apr. 9, 2008.
18. Tarik Ghanim, Analysis of Hybrid-ARQ Based Relaying Protocols under Modulation Constraints,
Apr. 26, 2006.
19. Ruthika Gunda, Simulation of the Physical Link Layer of GSM, July 8, 2004.
20. Sai Deepthi Katragunta, Simulation of the Performance of IEEE 802.16-2004 Fixed Broadband
Wireless Access Technology, Jan. 17, 2007.
21. Raja Katuri, Efficient Simulation of Communication Systems on a Desktop Grid, Aug. 25, 2006.
22. Haranath Madineni, A Diagnostic Tool for Performance Assessment of Bluetooth Data
Transmissions, Dec. 4, 2003.
23. Sushma Mamidipaka, Implementation of Block Turbo Codes from IEEE 802.16 Standard, Oct. 27,
2008.
24. Gopal Manchikanti, A Framework for Developing Wireless Applications, May 1, 2001.
25. Mamatha Mannava, Simulation of the Performance of IEEE 802.16-2004 Wireless MAN-OFDM
PHY Layer, Apr. 11, 2008.
26. Sundara Ram Matta, Visualizing Outage Performance in Wireless Networks in the Presence of
Rayleigh Fading, Dec. 4, 2015.
27. Brianna Maze, Analysis of Hamming and Bernard’s Patent and the Bluetooth Standard, Apr. 25,
2016.
28. John Mazzie, Relay Communications Over Frequency-Selective Fading Channels, Apr. 11, 2008.
29. Lokesh Merupula, Simulation of IEEE 802.11a PHY Layer, Sept. 9, 2004.
30. Biju Naduvathuparambil, Telecommunications for a Deregulated Power Industry, July 12, 2002.
31. Chandana Nannapaneni, Constellation Shaping for Communication Channels with Quantized
Outputs, Nov. 11, 2010.
32. Nisha Narasimhan, Data Synchronization for Bluetooth Networks, Dec. 4, 2003.
33. Senthil Ramamurthy, Multiple Quantum Filtered Localized Spectroscopy at 3T, Apr. 14, 2004.
34. Vasavi Rangammagari, Optical-Based ATR Algorithms for Applications in Swarmed UAVs, Aug. 4,
2006.
35. Guillaume Raux, Telecommunication of Stabilizing Signals in Power Systems, Apr. 18, 2003.
36. Sumit Sharma, Optimization of an iDEN Cellular Network, Feb. 18, 2005.
37. Yipeng Tang, DSP Implementation of Trellis Coded Modulation and Distributed Space Time Coding,
Jan. 25, 2001.
38. Sujay Telang, Wireless Streaming Multimedia Applications, Oct. 2, 2000.
39. Srinivas Vemury, Comparison of Decoding Algorithms for LDPC Codes, April 16, 2004.
40. Kyle Whetzel, Complexity Aware C-RAN Scheduling for LDPC Codes over BEC, Dec. 21, 2016.
2. Member of Research and Advisory Committees
Served on the committee of 59 completed M.S. students (thesis or problem report), and 16 completed Ph.D.
students. Additionally, served as an external examiner or dissertation committee member for 8 students
outside of WVU.

28
Exhibit 4
Page 111
Case 3:17-cv-00108-GPC-MDD Document 661-7 Filed 10/12/18 PageID.60308 Page 43 of
43
MATTHEW C. VALENTI

UNDERGRADUATE STUDENTS
Faculty advisor for 15 completed senior design projects.
Supervised and supported undergrad researchers during summers of 2002, 2003, 2006, 2010, and 2013.
Academic advisor to approximately 25 EE, CPE, and dual (CPE/EE and CPE/BIOM) majors per semester.
C. INSTRUCTIONAL ACTIVITIES
1. Course Development
Developed the following courses, which were new to WVU (permanent course numbers indicated):
Wireless Networking (CPE 462)
Wireless Communication Systems (EE 562)
Coding Theory (EE 567)
2. Independent Study
Led undergraduate and graduate students in the following asynchronous learning experiences:
DSP Implementation of Communication Systems
Wireless Application Protocol
Wireless Networking
Wireless Communication Systems
3. Preparation of General Pedagogical Material
 M.C. Valenti, The Wireless Networking Workbook, 2013.
A 33-page companion for CPE 462 (Wireless Networking) used during the Fall 2013 semester.
 M.C. Valenti, The Coding Theory Workbook, 2012.
A 56-page companion for EE 567 (Coding Theory) used during the Spring 2012 semester.
 M.C. Valenti, The DSP Workbook, 2011
A 113-page companion text for EE 463 used by Prof. Brian Woerner during the Spring 2011 semester
and Prof. Reynolds during the Spring 2012 and 2013 semesters. An “instructor edition” was also
created, which contains worked out exercises (which are blank in the student edition).
 M.C. Valenti, Solutions Manual for the DSP Workbook, 2011
A 63-page solutions manual for the end-of-chapter exercises.
 M.C. Valenti, The Signals and Systems Workbook, 2002, revised 2005.
A 75-page companion text for EE 329 developed during the Spring 2002 semester and used during
from Spring 2003 to Spring 2013 by myself, Prof. Jerabek, Prof. Reynolds, Prof. Woerner, and Prof.
Schmid.
 M.C. Valenti, Solutions Manual for the Signals and Systems Workbook, 2002, revised 2005.
A 75-page solutions manual for the end-of-chapter exercises.

29
Exhibit 4
Page 112
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60309 Page 1 of 71

Exhibit 5
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60310 Page 2 of 71

UNITED STAIBS p AIBNT AND TRADEMARK OFFICE
UNITED STA TES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

121197,993 08/25/2008 Michael G. Luby 091841Cl 3318

23696 7590 03/11/2010
EXAMINER
QUALCOMM INCORPORATED
5775 MOREHOUSE DR. CHASE, SHELLY A
SAN DIEGO, CA 92121
ART UNIT PAPER NUMBER

2112

NOTIFICATION DATE DELIVERY MODE

03/11/2010 ELECTRONIC

Please find below and/or attached an Office communication concerning this application or proceeding.

The time period for reply, if any, is set in the attached communication.

Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
us-docketing@qualcomm.com
kascanla@qualcomm.com
nanm@qualcomm.com

PTOL-90A (Rev. 04/07)

Exhibit 5
Page 113
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60311 Page 3 of 71

Application/Control Number: 12/197,993 Page 2
Art Unit: 2112

DETAILED ACTION

1. Claims 1 to 74 are presented for examination.

Information Disclosure Statement

2. The references listed in the information disclosure statement submitted on 10-23-

2009 have been considered by the examiner (see attached PT0-1449).

3. The description portion of this application contains a computer program listing

consisting of more than three hundred (300) lines. In accordance with 37 CFR 1.96(c),

a computer program listing of more than three hundred lines must be submitted as a

computer program listing appendix on compact disc conforming to the standards set

forth in 37 CFR 1.96(c)(2) and must be appropriately referenced in the specification

(see 37 CFR 1.77(b)(5)). Accordingly, applicant is required to cancel the computer

program listing appearing in the specification on pages 50 to 60, file a computer

program listing appendix on compact disc in compliance with 37 CFR 1.96(c) and insert

an appropriate reference to the newly added computer program listing appendix on

compact disc at the beginning of the specification.

Claim Rejections - 35 USC § 112

4. The following is a quotation of the second paragraph of 35 U.S.C. 112:

The specification shall conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.

Exhibit 5
Page 114
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60312 Page 4 of 71

Application/Control Number: 12/197,993 Page 3
Art Unit: 2112

5. Claims 1 to 74 are rejected under 35 U.S.C. 112, second paragraph, as being

indefinite for failing to particularly point out and distinctly claim the subject matter which

applicant regards as the invention.

Claim 1 is indefinite for the following reasons: the limitation "one or more

symbols" recited on lines 6 and 8 is unclear since the application introduces "repair

symbols" and "source symbol". There is insufficient antecedent basis for the limitation

"the regeneration of source symbol" recited on line 10. The limitation "according to a

function of values of the K source symbol and the K symbol associated symbol

relations associated with K source symbol" recited on lines 13 to 15 is unclear, Please

consider revising.

Claims 2, 4 to 16, 19 to 28, 57, 59 to 61 and 65 to 71 are directly or indirectly

dependent on claim 1 and thus are rejected due to their dependency on a base claim.

Claim 3 recites the limitation "as provided in appendix A" on line 2, which creates
an incomplete claim. The claim refers to something outside of the claim scope.

Claims 17, 18, 31, 45 and 46 have a similar problem.

Claim 29 recites the limitation "wherein each symbol" on line 8, there is

insufficient antecedent basis for the Iimitation. Lines 10 to 12 seem to be a mere copy

of lines 18 and 19. This limitation creates a vague and unclear claim. Dependent

claims 30, 32 to 44, 47 to 56, 58, 62 to 64 and 72 to 74 are also rejected due to their

dependency on a rejected base claim.

Exhibit 5
Page 115
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60313 Page 5 of 71

Application/Control Number: 12/197,993 Page 4
Art Unit: 2112

Allowable Subject Matter

6. Claims 1 to 74 would be allowable once the 112 second paragraph rejection is

overcome.

7. The following is a statement of reasons for the indication of allowable subject

matter: the prior art made of record teaches a method and an apparatus for encoding

data transmitted from a source to a destination using an encoder; however, the prior art

made of record, fails to teach or fairly suggest or render obvious the novel element of

the instant invention as directed to a method of encoding comprising the limitation of

"wherein the encoding is such that the plurality of source symbols can be regenerated to

the desired degree of accuracy from any predetermined number, N, of a combination of

the transmitted source symbols and transmitted repair symbols."

Conclusion

8. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Shelly A. Chase whose telephone number is 571-272-

3816. The examiner can normally be reached on Mon-Fri from 8:00 am to 5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Scott Baderman can be reached on 571-272-3644. The fax phone number

for the organization where this application or proceeding is assigned is 571-273-8300.

Exhibit 5
Page 116
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60314 Page 6 of 71

PATENT
Attorney Docket No.: 091841C1

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Application No.: 12/197993
I hereby certify that this correspondence is being
Applicant: Michael G. Luby transmitted to the U.S.P.T.0., transmitted via the US
Postal Service addressed to: Commissioner for Patents,
P.O. Box 1450, Alexandria, VA 223 I3-1450, on the date
Filed: August 25, 2008 shown below:

Examiner: Shelly A. Chase ·1l12lnlo
Date Gina Golia
\~~
ArtUnit: 2112

Customer No.: 23696

Confirmation No. 3318

Docket No. 091841Cl

AMENDMENT
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Commissioner:

In response to the Office Action of March 11, 2010, please enter the following
amendments and remarks:

Amendments to the Specification begin on page 2 of this paper.

Amendments to the Claims are reflected in the listing of claims which begins on
page 3 of this paper.

Remarks/Arguments begin on page 17 of this paper.

Page 1of19

Exhibit 5
Page 117
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60315 Page 7 of 71

Docket No.: 091841Cl
Customer No.: 23696

Amendments to the Claims:

This listing of claims will replace all prior versions, and listings of claims in the application:

Listing of Claims:

1. (Currently Amended) A method of encoding data for transmission from a
source to a destination over a communications channel, wherein the data is represented at least
by a plurality, K, of source symbols, K being the number of source symbols and the source
symbols being in an ordered set, the method comprising:
generating one or more repair symbols from the plurality of source symbols;
transmitting one or more output symbols over the communications channel, wherein the
communication channel is a channel that can introduce errors in transmissions, v1herein
the one or more s~·mbols are seleeted from the gFOl:lf> eonsisting of sol:lree s~·mbols and
repair symbols wherein an output symbol corresponds to either a source symbol or a
repair symbol;
determining a desired degree of accuracy for the-!!._regeneration of source symbols;
determining, for each of a plurality of source symbols, an associated symbol relation that is a
function of a systematic index, J(K), where J(K) is a function ofK;
determining L intermediate symbol values aeeording to using a function ef.the-that takes as
its input. at least in part, (1) values of at least some of the K source symbols and filthe
K symbol associated symbol relations assoeiated with of those at least some of the K
source symbols.,,_and .Ql_a set of L-K pre-coding relations, wherein L is at least K; and
determining a value for each repair symbol using the associated symbol relation for that
repair symbol and the plurality of L intermediate symbol values;
wherein the encoding is such that the plurality of source symbols can be regenerated to the
desired degree of accuracy from any-!!._Predetermined number, N, of a eombination of
the transmitted sol:lree symbols and transmitted repair output symbols.

2. (Original) The method of claim 1, further comprising precalculating and
storing the systematic index J(K) in a table for each value of K.

Page 3of19

Exhibit 5
Page 118
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60316 Page 8 of 71

Docket No.: 091841Cl
Customer No.: 23696

3. (Currently Amended) The method of claim 1, wherein the systematic index
J(K) is equal to 18. 14. 43. 55, 41. 88, 213, 415. and 2665 for values of K between 4 and 8192 is
as flFeviaea ia Aflfleaaix A equal to 4. 8. 16. 64. 128, 512. 1024, 4096. and 8192. respectively.

4. (Currently Amended) The method of claim 1, wherein the symbol relations
impose linear constraints on sets of source symbols.

5. (Original) The method of claim 4, wherein the linear constraints are exclusive-
or constraints.

6. (Currently Amended) The method of claim 1, wherein each source symbol has
an associated encoding symbol identifier C"ESI") [ESI] that identifies the symbol, wherein the
systematic index J(K) and a value X, wherein X is a valid ESI, determines the symbol relation
for the source symbol identified by ESI X.

7. (Currently Amended) The method of claim 6, wherein the systematic index
J(K) and the ESI X can be used to generate a triple (a[X],b[X],d[X]) that defines the source
symbol relation for the symbol identified by ESI X.

8. (Original) The method of claim 6, wherein each source symbol can be
identified by an integer ESI in the range 0 to K-1, inclusive.

9. (Original) The method of claim 6, wherein each repair symbol can be
identified by an integer ESI that is at least K.

10. (Currently Amended) The method of claim 7, wherein the triple
(a[X],b[X],d[X]) that defines the source symbol relation associated with the source symbol with
ESI X places a linear constraint on the value C' [X] for source symbol with ESI X and the values
C[O], C[l], ... , C[L-1] of the L intermediate symbols, the linear constraint defined by the method
comprising:
defining an array of positive integer values B[O], ... , B[J-1], wherein J is the minimum of
d[X] and L, wherein L' is the smallest integer that is prime that is at least the value of L,

Page 4of19

Exhibit 5
Page 119
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60317 Page 9 of 71

Docket No.: 091841Cl
Customer No.: 23696

and wherein the values of the array of positive integer values B[O], ... ,B[J-1] are set
using the method comprising:
{fil setting the initial value of B[O] to b(X];
{Q} while B[O] is at least L, recalculating B[O] as the previous value of B[O] plus
a[X] modulo L';
(£}. for values of j starting at 1 and going up to J-1 in increments of one,
@ initializing the value ofB[j] to BLi-1] plus a[X]; and
(sU while BU] is at least L, recalculating B[j] as the previous value of BLi] plus
a[X] modulo L'.

11. (Currently Amended) The method of claim 7, further comprising:
calculating a value A as (53591+J(K)*997)%65521, wherein* is the multiplication
operator and % is the modulo operator;
calculating a value B as 10267*(J(K)+ 1) % 65521;
calculating a value Y as (B+ X* A) % 65521 ;and
determining a value v, wherein vis in the ranges range from 0 and 1048575, inclusive,
where v is calculated as the output of a random generator applied to the inputs Y, 0, and
1048575.

12. (Original) The method of claim 11 further comprising:
determining d[X] based on a degree function applied to the input v.

13. (Original) The method of claim 11 further comprising:
determining a[X], wherein a[X] is in the range between 0 and L'-1, inclusive, wherein L' is
the smallest prime number greater than or equal to L, wherein L' is calculated as one
plus the output of the random generator applied to the inputs Y, 1 and L' -1.

14. (Original) The method of claim 11 further comprising:
determining b[X], wherein b[X] is in the range between 0 and L', inclusive, wherein b[X] is
calculated as the output of the random generator applied to the input Y, 2 and L'.

Page 5of19

Exhibit 5
Page 120
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60318 Page 10 of
71

Docket No.: 091841Cl
Customer No.: 23696

15. (Original) The method of claim 11, wherein the value of d[X] is determined
based on v as follows:
if the value of v is between 0 and 10240, inclusive, then the value of d[X] is 1,
if the value of v is between 10241 and 4911581, inclusive, then the value of d(X] is 2,
ifthe value ofv is between 4911582 and 712793, inclusive, then the value of d[X] is 3,
if the value of v is between 712794 and 831694, inclusive, then the value of d[X] is 4,
if the value of v is between 831695 and 948445, inclusive, then the value of d[X] is 10,
if the value of v is between 948446 and 1032188, inclusive, then the value of d[X] is 11,
if the value of v is between 1032189 and 1048575, inclusive, then the value of d[X] is 40.

16. (Original) The method of claim 11, wherein the random generator on inputs
Y, i, and mis calculated as (VO[(Y+i) % 256] "(VI [(floor(Y/256)+i) % 256]) % m, where% is
the modulo operator, " is the exclusive-or operator, I is the division operator, floor calculates the
largest integer that is at most the input value, and VO and VI are each tables of256 integers
chosen randomly or pseudo-randomly.

17. (Currently Amended) The method of claim 16, wherein the 256 values fer
table VQ is as deseribecl ia AppeadhE B. l table VQ has values, in decimal representation. of
3067016507.689605112.4005368743,4048876515, 778296777,2669179716,3457502702,
4291353919,2687243553.2068983570,616452097,3272161958.234652930, 179350258.
2054995199. and 1358307511 for table indices of 16, 32, 48, 64, 80, 96, 112, 128, 144. 160. 176,
192, 208, 224, 240, and 256, respectively, when a first entry of table V0 has a table index of 1.

18. (Currently Amended) The method of claim 16, wherein the 256 values fer
table VI is as deseribecl ia AppeadiM B.2 table V1 has values. in decimal representation, of
4114760273.3302235057,640417429,852173610.4071072948,3904109414,3123492423,
3870972145,2712821515.4267074718,4259411376, 1351086955,4187322100.2822905141,
3762994475, and 4135048896 for table indices of 16, 32, 48, 64. 80, 96, 112, 128. 144. 160, 176,
192. 208. 224, 240, and 256. respectively, when a first entry of table V 1 has a table index of 1.

Page 6of19

Exhibit 5
Page 121
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60319 Page 11 of
71

Docket No.: 091841Cl
Customer No.: 23696

19. (Original) The method of claim 1, wherein the number L-K of pre-coding
relations comprises a first set of S pre-coding relations and a second set of H pre-coding
relations, and wherein the L intermediate symbols comprises a first set of K intermediate
symbols, a second set of S intermediate symbols, and a third set of H intermediate symbols.

20. (Original) The method of claim 19, wherein each pre-coding relation in the
first set of pre-coding relations is uniquely associated with an intermediate symbol in the second
set of intermediate symbols and is associated with a specified set of intermediate symbols among
the first set of intermediate symbols, wherein each pre-coding relation is a linear constraint on
the value of the associated intermediate symbol and the values of the intermediate symbols in the
specified set.

21. (Currently Amended) The method of claim 20, wherein [a] the linear
constraint is an exclusive-or constraint.

22. (Original) The method of claim 20, wherein for each first pre-coding relation
among the first set of pre-coding relations and for each second pre-coding relation among the
first set of pre-coding relations, the number of intermediate symbols that are both in the specified
set associated with the first pre-coding relation and in the specified set associated with the
second pre-coding relation is at most 3.

23. (Original) The method of claim 20, wherein each of the intermediate
symbols in the first set of intermediate symbols is in the specified set of exactly three of the pre-
ceding relations in the first set of pre-coding relations.

24. (Original) The method of claim 19,
wherein Sis the smallest prime integer that is at least as large as 0.01 *K+X, wherein Xis
the smallest positive integer such that X*(X-1) is at least 2*K,
wherein His the smallest integer such that fact[H] I (fact[H-H'] * fact[H']) is at least K+2,
wherein fact is the factorial operator, wherein H' is the smallest integer that is at least
H/2.

Page 7of19

Exhibit 5
Page 122
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60320 Page 12 of
71

Docket No.: 091841Cl
Customer No.: 23696

25. (Original) The method of claim 19, wherein each pre-coding relation in the
second set of pre-coding relations is uniquely associated with an intermediate symbol in the third
set of intermediate symbols and is associated with a specified set of intermediate symbols among
the first set and second set of intermediate symbols, wherein the pre-coding relation is a linear
constraint on the associated intermediate symbol and the intermediate symbols in the specified
set.

26. (Currently Amended) The method of claim 25, wherein [a] the linear
constraint is an exclusive-or constraint.

27. (Original) The method of claim 25, wherein each of the intermediate
symbols in the first set or the second set of intermediate symbols is in the specified set of
approximately one-half of the pre-coding relations in the second set of pre-coding relations.

28. (Original) The method of claim 25, wherein for each first intermediate
symbol in the first set or second set of intermediate symbols and for each second intermediate
symbol in the first set or second set of intermediate symbols that is the next consecutive
intermediate symbol following the first intermediate symbol, the symmetric difference of pre-
coding relations in the second set of pre-coding relations of which the first intermediate symbol
is a member of the specified set and of which the second intermediate symbol is a member of the
specified set is exactly two.

29. (Currently Amended) A method of decoding encoded data received over a
communications channel transmitted from a source to a destination, the method comprising:
receiving a predetermined number, N, of symbols, wherein the received symbols comprise a
combination of received source symbols and received repair symbols generated from a
plurality of an ordered set of K source symbols,
generating to a desired degree of accuracy one or more of the aot reeeived unreceived source
symbols w:n.oag of the ordered set of K source symbols,
wherein each received symbol has an associated symbol relation that is determined by a
systematic index, J(K), where J(K) is determined by K,

Page 8of19

Exhibit 5
Page 123
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60321 Page 13 of
71

Docket No.: 091841Cl
Customer No.: 23696

wherein the value of each aot reeeived unreceived source symbol is determined by the
associated symbol relation and a plurality of L intermediate symbol values, wherein L is
at least K,
wherein the L intermediate symbol values are determined by the K source symbol values
and by the K symbol relations associated with the K source symbols and by a set of L-K
pre-coding relations,
wherein the L intermediate symbol values can be generated to a desired degree of accuracy
from the N received source and repair symbols[,]
·.¥herein the value of eaeh not reeeived sol:lfee symbol is determined by the assoeiated
symbol relation aad the plurality of L intermediate symbol values.

30. (Original) The method of claim 29, further comprising precalculating and
storing the systematic index J(K) in a table for each relevant value of K.

31. (Currently Amended) The method of claim 29, wherein the systematic index
J(K) is equal to 18. 14, 43, 55. 41, 88, 213, 415. and 2665 for values ofK betvvceen 4 and 8192 is
as proviaea in AppenElh£ A equal to 4, 8, 16, 64, 128, 512. 1024. 4096, and 8192, respectively.

32. (Currently Amended) The method of claim 29, wherein the symbol relations
impose linear constraints on sets of received source symbols.

33. (Original) The method of claim 32, wherein the linear constraints are
exclusive-or constraints.

34. (Currently Amended) The method of claim 29, wherein each source symbol
has an associated encoding symbol identifier ("ESI") [ESI] that identifies the source symbol,
wherein the systematic index J(K) and a value X, wherein Xis a valid ESI, determines the
symbol relation for the source symbol identified by ESI X.

35. (Currently Amended) The method of claim 34, wherein the systematic index
J(K) and the ESI X can be used to generate a triple (a[X],b[X],d[X]) that defines the symbol
relation for the source symbol identified by ESI X.

Page 9of19

Exhibit 5
Page 124
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60322 Page 14 of
71

Docket No.: 091841Cl
Customer No.: 23696

36. (Original) The method of claim 34, wherein each source symbol can be
identified by an integer ESI in the range 0 to K-1, inclusive.

37. (Original) The method of claim 34, wherein each repair symbol can be
identified by an integer ESI that is at least K.

38. (Currently Amended) The method of claim 35, wherein the triple
(a[X],b[X],d[X]) that defines the source symbol relation associated with the source symbol with
ESI X places the following linear constraint on the value C' [X] for source symbol with ESI X
and the values C[O], C[ 1], ... , C[L-1] of the L intermediate symbols:
defining an array of positive integer values B[O], ... , B[J-1], wherein J is the minimum of
d[X] and L, wherein L' is the smallest integer that is prime that is at least the value of L,
and wherein the values of the array of positive integer values B[O], ... ,B[J-1] are set
using the method comprising:
ill} setting the initial value of B[O] to b[X];
® while B[O] is at least L, recalculating B[O] as the previous value of B[O] plus
a[X] modulo L';
.(£1 for values of j starting at 1 and going up to J-1 in increments of one,
@ initializing the value ofBLi) to BO-I] plus a[X]; and
@} while BO] is at least L, recalculating BO] as the previous value of BO] plus
a[X] modulo L'.

39. (Currently Amended) The method of claim 35, wherein the generation of the
triple (a[X],b[X],d[X]) from an ESI X comprises the following steps:
calculating a value A as (53591 + J(K)*997) % 65521, wherein* is the multiplication
operator and % is the modulo operator;
calculating a value B as I 0267*(J(K)+ 1) % 65521;.
calculating a value Y as (B+X* A) % 65521; and

Page 10of19

Exhibit 5
Page 125
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60323 Page 15 of
71

Docket No.: 091841Cl
Customer No.: 23696

determining a value v, wherein vis in the ranges range from 0 and 1048575, inclusive,
where vis calculated as the output of a random generator applied to the inputs Y, 0, and
1048575 [[;JL

40. (Original) The method of claim 39 further comprising:
determining d[X] based on a degree function applied to the input v.

41. (Original) The method of claim 39 further comprising:
determining a[X], wherein a[X] is in the range between 0 and L'-1, inclusive, wherein L' is
the smallest prime number greater than or equal to L, wherein L' is calculated as one
plus the output of the random generator applied to the inputs Y, 1 and L' -1.

42. (Original) The method of claim 39 further comprising:
determining b[X], wherein b[X] is in the range between 0 and L', inclusive, wherein b[X] is
calculated as the output of the random generator applied to the input Y, 2 and L'.

43. (Original) The method of claim 39, wherein the value of d[X] is determined
based on v as follows:
if the value of v is between 0 and 10240, inclusive, then the value of d[X] is 1,
if the value of v is between 10241 and 4911581, inclusive, then the value of d[X] is 2,
ifthe value ofv is between 4911582 and 712793, inclusive, then the value of d[X] is 3,
if the value of v is between 712794 and 831694, inclusive, then the value of d[X] is 4,
if the value of v is between 831695 and 948445, inclusive, then the value of d[X] is 10,
if the value of v is between 948446 and 1032188, inclusive, then the value of d[X] is 11,
ifthe value ofv is between 1032189 and 1048575, inclusive, then the value ofd[X] is 40.

44. (Original) The method of claim 39, wherein the random generator on inputs
Y, i, and mis calculated as (VO[(Y+i) % 256] A (Vl[(floor(Y/256)+i) % 256]) % m, where% is
the modulo operator, A is the exclusive-or operator, I is the division operator, floor calculates the
largest integer that is at most the input value, and VO and V 1 are each tables of 256 integers
chosen randomly or pseudo-randomly.

Page 11of19

Exhibit 5
Page 126
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60324 Page 16 of
71

Docket No.: 091841Cl
Customer No.: 23696

45. (Currently Amended) The method of claim 44, wherein the 256 vah1es for
table VO is as deserieed ia Apf>eadbc B. l table Vo has values, in decimal representation, of
3067016507,689605112,4005368743,4048876515, 778296777.2669179716,3457502702,
4291353919,2687243553,2068983570,616452097,3272161958,234652930, 179350258,
2054995199. and 1358307511 for table indices of 16, 32, 48, 64, 80, 96, 112, 128, 144, 160. 176.
192, 208, 224, 240, and 256, respectively, when a first entry of table V0 has a table index of 1.

46. (Currently Amended) The method of claim 44, wherein the 256 va:laes for
table Vl is as deserieed ia Appeadix B.2tableV1 has values, in decimal representation, of
4114760273,3302235057,640417429,852173610,4071072948,3904109414,3123492423,
3870972145.2712821515,4267074718,4259411376, 1351086955,4187322100.2822905141,
3762994475, and 4135048896 for table indices of 16, 32, 48, 64, 80, 96, 112, 128, 144, 160, 176.
192, 208, 224, 240, and 256, respectively, when a first entry of table V 1 has a table index of 1.

47. (Original) The method of claim 29, wherein the number L-K of pre-coding
relations comprises a first set of S pre-coding relations and a second set of H pre-coding
relations, and wherein the L intermediate symbols comprises a first set of K intermediate
symbols, a second set of S intermediate symbols, and a third set of H intermediate symbols.

48. (Original) The method of claim 47, wherein each pre-coding relation in the
first set of pre-coding relations is uniquely associated with an intermediate symbol in the second
set of intermediate symbols and is associated with a specified set of intermediate symbols among
the first set of intermediate symbols, wherein each pre-coding relation is a linear constraint on
the value of the associated intermediate symbol and the values of the intermediate symbols in the
specified set.

49. (Currently Amended) The method of claim 48, wherein [a] the linear
constraint is an exclusive-or constraint.

Page 12of19

Exhibit 5
Page 127
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60325 Page 17 of
71

Docket No.: 091841C1
Customer No.: 23696

50. (Original) The method of claim 48, wherein for each first pre-coding relation
among the first set of pre-coding relations and for each second pre-coding relation among the
first set of pre-coding relations, the number of intermediate symbols that are both in the specified
set associated with the first pre-coding relation and in the specified set associated with the
second pre-coding relation is at most 3.

51. (Original) The method of claim 48, wherein each of the intermediate
symbols in the first set of intermediate symbols is in the specified set of exactly three of the pre-
coding relations in the first set of pre-coding relations.

52. (Original) The method of claim 47,
wherein Sis the smallest prime integer that is at least as large as 0.01 *K+X, wherein Xis
the smallest positive integer such that X*(X-1) is at least 2*K,
wherein H is the smallest integer such that fact[H] I (fact[H-H'] * fact[H']) is at least K+2,
wherein fact is the factorial operator, wherein H' is the smallest integer that is at least
H/2.

53. (Original) The method of claim 47, wherein each pre-coding relation in the
second set of pre-coding relations is uniquely associated with an intermediate symbol in the third
set of intermediate symbols and is associated with a specified set of intermediate symbols among
the first set and second set of intermediate symbols, wherein the pre-coding relation is a linear
constraint on the associated intermediate symbol and the intermediate symbols in the specified
set.

54. (Currently Amended) The method of claim 53, wherein [a] the linear
constraint is an exclusive-or constraint.

55. (Original) The method of claim 53, wherein each of the intermediate
symbols in the first set or the second set of intermediate symbols is in the specified set of
approximately one-half of the pre-coding relations in the second set of pre-coding relations.

Page 13of19

Exhibit 5
Page 128
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60326 Page 18 of
71

Docket No.: 091841Cl
Customer No.: 23696

56. (Original) The method of claim 53, wherein for each first intermediate
symbol in the first set or second set of intermediate symbols and for each second intermediate
symbol in the first set or second set of intermediate symbols that is the next consecutive
intermediate symbol following the first intermediate symbol, the symmetric difference of pre-
coding relations in the second set of pre-coding relations of which the first intermediate symbol
is a member of the specified set and of which the second intermediate symbol is a member of the
specified set is exactly two.

57. (Currently Amended) The method of claim 1, wherein the output symbols
are placed into one or more packets for transmission.

58. (Currently Amended) The method of claim 29, wherein more than one
SffiH'ee received symbol received in is plaeed iRto at least one packet.

59. (Currently Amended) The method of claim 6, wherein the output symbols
are placed into packets for transmission. wherein each output symbol has an associated ESI, and
wherein an ESI is included in each packet to identify [the] g first output symbol placed into the
packet.

60. (Currently Amended) The method of claim 59, wherein more than one output
symbol is placed into at least one packet and for packets that carry more than one output symbol.i
the ESis for the second and subsequent output symbols placed in the packet are determined by
the ESI for the first output symbol placed in the packet.

61. (Currently Amended) The method of claim 60, wherein the ESI determined
for the second output symbol placed in a packet is one greater than the ESI placed in the packet
that is associated with the first output symbol placed in the packet.

Page 14of19

Exhibit 5
Page 129
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60327 Page 19 of
71

Docket No.: 091841C1
Customer No.: 23696

62. (Currently Amended) The method of claim 34, wherein the output symbols
are received in one or more packets, wherein each output symbol has an associated ESI, and
wherein an ESI is received ineluded in each packet to identify [the]~ first output symbol in
plaeed into the packet.

63. (Currently Amended) The method of claim 62, wherein more than one output
symbol is received in plaeed into at least one packet, wherein the ESls for the second and
subsequent output symbols received plaeed in packets with more than one output symbol are
determined by the ESI for the first output symbol plaeed in the packet.

64. (Currently Amended) The method of claim 63, wherein the ESI determined
for the second output symbol plaeed in a received packet is one greater than the ESI plaeed in
the packet that is associated with the first output symbol plaeed in the packet.

65. (Currently Amended) The method of claim 1 wherein the K source symbols
correspond to a source block, wherein the source block is divided into N' subblocks sub-blocks,
wherein each of the N' subblocks sub-blocks is composed of K' sub-symbols, wherein one or
more source blocks can correspond to a source file, wherein each of the one or more source
blocks are encoded separately from the other source blocks.

66. (Currently Amended) The method of claim 65 wherein the source file is
partitioned into one or more source blocks of approximately equal size as a function of the
number of source symbols per source blocks and the number of source blocks, and wherein each
source block is partitioned into one or more subbloeks sub-blocks of approximately equal size as
a function of the size of a source symbol and the number of sebloeks sub-blocks per source
block.

67. (Currently Amended) The method of claim 66 wherein more than one output
symbol is placed into a packet that is used for transmission.

Page 15of19

Exhibit 5
Page 130
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60328 Page 20 of
71

Docket No.: 091841Cl
Customer No.: 23696

68. (Currently Amended) The method of claim 66 wherein one or more
parameters used to partition the source file into one or more source blocks and used to partition
the one or more source blocks into one or more subblocks are made known at the destination of
the output symbols.

69. (Original) The method of claim I wherein the K source symbols correspond
to a source block, wherein the source block is defined by a transport protocol for streaming data.

70. (Currently Amended) The method of claim 69 wherein one or more
parameters used to determine how the K source symbols correspond to the source block are
made known at the destination of the output symbols.

71. (Currently Amended) The method of claim 69 wherein more than one output
symbol is placed into a packet that is used for transmission.

72. (Original) The method of claim 29 wherein the K source symbols correspond
to a source block, wherein the source block is defined by a transport protocol for streaming data.

73. (Currently Amended) The method of claim 72 wherein one or more
parameters used to determine how the K source symbols correspond to the source block are
made known at the destination of the output symbols.

74. (Currently Amended) The method of claim 72 wherein more than one output
symbol is received in plaeeel iato a received packet that is usea for transmissioa.

Page 16of19

Exhibit 5
Page 131
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60329 Page 21 of
71

UNITED STAIBS p AIBNT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

NOTICE OF ALLOWANCE AND FEE(S) DUE

EXAMINER
23696 7590 0910912010
CHASE, SHELLY A
QUALCOMM INCORPORATED
S77S MOREHOUSE DR. ART UNIT PAPER NUMBER
SAN DIEGO, CA 92121 2112
DATE MAILED: 09/09/2010

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

12/197,993 08/25/2008 Michael G. Luby 091841Cl 3318
TITLE OF INVENTION: FILE DOWNLOAD AND STREAMING SYSTEM

APPLN. TYPE SMALL ENTITY ISSUE FEE DUE PUBLICATION FEE DUE PREV. PAID ISSUE FEE TOTAL FEE(S) DUE DATEDUE

nonprovisional NO $1510 $300 $0 $1810 12/09/2010

THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS
STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS
PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
DUE.

HOW TO REPLY TO THIS NOTICE:

I. Review the SMALL ENTITY status shown above.
If the SMALL ENTITY is shown as YES, verify your current If the SMALL ENTITY is shown as NO:
SMALL ENTITY status:
A. If the status is the same, pay the TOT AL FEE(S) DUE shown A. Pay TOT AL FEE(S) DUE shown above, or
above.
B. If the status above is to be removed, check box Sb on Part B - B. If applicant claimed SMALL ENTITY status before, or is now
Fee(s) Transmittal and pay the PUBLICATION FEE (if required) claiming SMALL ENTITY status, check box Sa on Part B - Fee(s)
and twice the amount of the ISSUE FEE shown above, or Transmittal and pay the PUBLICATION FEE (if required) and 1/2
the ISSUE FEE shown above.

IL PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
the paper as an equivalent of Part B.

III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
Mail Stop ISSUE FEE unless advised to the contrary.
IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.

Page 1of3
PTOL-85 (Rev. 08/07) Approved for use through 08/31/2010.

Exhibit 5
Page 132
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60330 Page 22 of
71

Application No. Applicant(s)

12/197,993 LUBY ET AL.
Notice of Allowability Examiner Art Unit

Shelly A. Chase 2112

-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
All claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application. If not included
herewith (or previously mailed), a Notice of Allowance (PTOL-85) or other appropriate communication will be mailed in due course. THIS
NOTICE OF ALLOWABILITY IS NOT A GRANT OF PATENT RIGHTS. This application is subject to withdrawal from issue at the initiative
of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.

1. IZI This communication is responsive to the amendment filed 7-16-2010.
2. IZI The allowed claim(s) is/are 1-74.

3. D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a) D All b) D Some* c) D None of the:
1. D Certified copies of the priority documents have been received.
2. D Certified copies of the priority documents have been received in Application No. _ _ .
3. D Copies of the certified copies of the priority documents have been received in this national stage application from the
International Bureau (PCT Rule 17.2(a)).
* Certified copies not received: _ _ .

Applicant has THREE MONTHS FROM THE "MAILING DATE" of this communication to file a reply complying with the requirements
noted below. Failure to timely comply will result in ABANDONMENT of this application.
THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.

4. 0 A SUBSTITUTE OATH OR DECLARATION must be submitted. Note the attached EXAMINER'S AMENDMENT or NOTICE OF
INFORMAL PATENT APPLICATION (PT0-152) which gives reason(s) why the oath or declaration is deficient.

5. D CORRECTED DRAWINGS (as "replacement sheets") must be submitted.
(a) D including changes required by the Notice of Draftsperson's Patent Drawing Review ( PT0-948) attached
1) D hereto or 2) D to Paper No./Mail Date _ _ .
(b) D including changes required by the attached Examiner's Amendment I Comment or in the Office action of
Paper No./Mail Date _ _ .
Identifying indicia such as the application number (see 37 CFR 1.84(c)) should be written on the drawings in the front (not the back) of
each sheet. Replacement sheet(s) should be labeled as such in the header according to 37 CFR 1.121(d).

6. 0 DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.

Attachment(s)
1. D Notice of References Cited (PT0-892) 5. D Notice of Informal Patent Application
2. D Notice of Draftperson's Patent Drawing Review (PT0-948) 6. D Interview Summary (PT0-413),
Paper No./Mail Date _ _ .
3. [gl Information Disclosure Statements (PTO/SB/08), 7. D Examiner's AmendmenUComment
Paper No./Mail Date 7-30-2010
4. D Examiner's Comment Regarding Requirement for Deposit 8. D Examiner's Statement of Reasons for Allowance
of Biological Material
9. D Other _ _ .
/Shelly A Chase/
Primary Examiner, Art Unit 2112

U.S. Patent and Trademark Office
PTOL-37 (Rev. 08-06) Notice of Allowability Part of Paper No./Mail Date 20100829

Exhibit 5
Page 133
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60331 Page 23 of
71

UNITED STAIBS p AIBNT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

NOTICE OF ALLOWANCE AND FEE(S) DUE

EXAMINER
23696 7590 12/29/2010
CHASE, SHELLY A
QUALCOMM INCORPORATED
S77S MOREHOUSE DR. ART UNIT PAPER NUMBER
SAN DIEGO, CA 92121 2112
DATE MAILED: 12/29/2010

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

12/197,993 08/25/2008 Michael G. Luby 091841Cl 3318
TITLE OF INVENTION: FILE DOWNLOAD AND STREAMING SYSTEM

APPLN. TYPE SMALL ENTITY ISSUE FEE DUE PUBLICATION FEE DUE PREV. PAID ISSUE FEE TOTAL FEE(S) DUE DATEDUE

nonprovisional NO $1510 $300 $0 $1810 03/29/2011

THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS
STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS
PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
DUE.

HOW TO REPLY TO THIS NOTICE:

I. Review the SMALL ENTITY status shown above.
If the SMALL ENTITY is shown as YES, verify your current If the SMALL ENTITY is shown as NO:
SMALL ENTITY status:
A. If the status is the same, pay the TOT AL FEE(S) DUE shown A. Pay TOT AL FEE(S) DUE shown above, or
above.
B. If the status above is to be removed, check box Sb on Part B - B. If applicant claimed SMALL ENTITY status before, or is now
Fee(s) Transmittal and pay the PUBLICATION FEE (if required) claiming SMALL ENTITY status, check box Sa on Part B - Fee(s)
and twice the amount of the ISSUE FEE shown above, or Transmittal and pay the PUBLICATION FEE (if required) and 1/2
the ISSUE FEE shown above.

IL PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
the paper as an equivalent of Part B.

III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
Mail Stop ISSUE FEE unless advised to the contrary.
IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.

Page 1of3
PTOL-85 (Rev. 08/07) Approved for use through 08/31/2010.

Exhibit 5
Page 134
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60332 Page 24 of
71

Application/Control Number: 12/197,993 Page 2
Art Unit: 2112

DETAILED ACTION

1. Claims 1 to 74 are presented for examination.

Continued Examination Under 37 CFR 1. 114

2. A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office

action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since

this application is eligible for continued examination under 37 CFR 1.114, and the fee

set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has

been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 12-9-2010

has been entered.

Information Disclosure Statement

3. The references listed in the information disclosure statement submitted on 12-9-

2010 have been considered by the examiner (see attached PT0-1449).

Allowable Subject Matter

4. Claims 1 to 74 are allowed.

5. The following is an examiner's statement of reasons for allowance: the prior art

provided by the IOS filed 12-9-2009 and made of record teaches numerous

methodologies for encoding data transmitted from a source to a destination using an

encoder; however, the prior art made of record, fails to teach or fairly suggest or render

obvious the novel element of the instant invention as directed to a method of encoding

Exhibit 5
Page 135
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60333 Page 25 of
71

Application/Control Number: 12/197,993 Page 3
Art Unit: 2112

comprising the limitation of "wherein the encoding is such that the plurality of source

symbols can be regenerated to the desired degree of accuracy from any predetermined

number, N, of a combination of the transmitted source symbols and transmitted repair

symbols.".

Any comments considered necessary by applicant must be submitted no later

than the payment of the issue fee and, to avoid processing delays, should preferably

accompany the issue fee. Such submissions should be clearly labeled "Comments on

Statement of Reasons for Allowance."

Conclusion

6. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Shelly A. Chase whose telephone number is 571-272-

3816. The examiner can normally be reached on Mon-Fri from 8:00 am to 5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Scott Baderman can be reached on 571-272-3644. The fax phone number

for the organization where this application or proceeding is assigned is 571-273-8300.

Exhibit 5
Page 136
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60334 Page 26 of
71

UNITED STAIBS p AIBNT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

NOTICE OF ALLOWANCE AND FEE(S) DUE

EXAMINER
23696 7590 04/11/2011
QUALCOMM INCORPORATED CHASE, SHELLY A
S77S MOREHOUSE DR.
SAN DIEGO, CA 92121 ART UNIT PAPER NUMBER

2112

DATE MAILED: 04/11/2011

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

12/197,993 08/25/2008 Michael G. Luby 091841Cl 3318
TITLE OF INVENTION: FILE DOWNLOAD AND STREAMING SYSTEM

APPLN. TYPE SMALL ENTITY ISSUE FEE DUE PUBLICATION FEE DUE PREV. PAID ISSUE FEE TOTAL FEE(S) DUE DATEDUE

nonprovisional NO $1510 $300 $0 $1810 07 /11/2011

THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS
STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS
PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
DUE.

HOW TO REPLY TO THIS NOTICE:

I. Review the SMALL ENTITY status shown above.
If the SMALL ENTITY is shown as YES, verify your current If the SMALL ENTITY is shown as NO:
SMALL ENTITY status:
A. If the status is the same, pay the TOTAL FEE(S) DUE shown A. Pay TOTAL FEE(S) DUE shown above, or
above.
B. If the status above is to be removed, check box Sb on Part B - B. If applicant claimed SMALL ENTITY status before, or is now
Fee(s) Transmittal and pay the PUBLICATION FEE (if required) claiming SMALL ENTITY status, check box Sa on Part B - Fee(s)
and twice the amount of the ISSUE FEE shown above, or Transmittal and pay the PUBLICATION FEE (if required) and 1/2
the ISSUE FEE shown above.

IL PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
the paper as an equivalent of Part B.
III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
Mail Stop ISSUE FEE unless advised to the contrary.
IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.

Page 1of3
PTOL-85 (Rev. 02/11)

Exhibit 5
Page 137
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60335 Page 27 of
71

Application/Control Number: 12/197,993 Page 2
Art Unit: 2112

DETAILED ACTION

1. Claims 1 to 74 are presented for examination.

Continued Examination Under 37 CFR 1.114

2. A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office

action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since

this application is eligible for continued examination under 37 CFR 1.114, and the fee

set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has

been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 3-28-2011

has been entered.

Information Disclosure Statement

3. The references listed in the information disclosure statement submitted on 3-28-

2011 have been considered by the examiner (see attached PT0-1449).

Allowable Subject Matter

4. Claims 1 to 74 are allowed.

5. The following is an examiner's statement of reasons for allowance: the prior art

provided by the IOS filed 3-28-2011 and made of record teaches numerous

methodologies for encoding data transmitted from a source to a destination using an

encoder; however, the prior art made of record, fails to teach or fairly suggest or render

Exhibit 5
Page 138
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60336 Page 28 of
71

Application/Control Number: 12/197,993 Page 3
Art Unit: 2112

obvious the novel element of the instant invention as directed to a method of encoding

and a method of decoding comprising the limitation of "wherein the encoding is such

that the plurality of source symbols can be regenerated to the desired degree of

accuracy from any predetermined number, N, of a combination of the transmitted

source symbols and transmitted repair symbols."

Any comments considered necessary by applicant must be submitted no later than the

payment of the issue fee and, to avoid processing delays, should preferably accompany

the issue fee. Such submissions should be clearly labeled "Comments on Statement of

Reasons for Allowance."

Conclusion

6. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Shelly A. Chase whose telephone number is 571-272-

3816. The examiner can normally be reached on Mon-Fri from 8:00 am to 5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Scott Baderman can be reached on 571-272-3644. The fax phone number

for the organization where this application or proceeding is assigned is 571-273-8300.

Exhibit 5
Page 139
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60337 Page 29 of
71

UNITED STAIBS p AIBNT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

NOTICE OF ALLOWANCE AND FEE(S) DUE

EXAMINER
23696 7590 08/08/2011
QUALCOMM INCORPORATED CHASE, SHELLY A
S77S MOREHOUSE DR.
SAN DIEGO, CA 92121 ART UNIT PAPER NUMBER

2112

DATE MAILED: 08/08/2011

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

12/197,993 08/25/2008 Michael G. Luby 091841Cl 3318
TITLE OF INVENTION: FILE DOWNLOAD AND STREAMING SYSTEM

APPLN. TYPE SMALL ENTITY ISSUE FEE DUE PUBLICATION FEE DUE PREV. PAID ISSUE FEE TOTAL FEE(S) DUE DATEDUE

nonprovisional NO $1510 $300 $0 $1810 11/08/2011

THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS
STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS
PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
DUE.

HOW TO REPLY TO THIS NOTICE:

I. Review the SMALL ENTITY status shown above.
If the SMALL ENTITY is shown as YES, verify your current If the SMALL ENTITY is shown as NO:
SMALL ENTITY status:
A. If the status is the same, pay the TOTAL FEE(S) DUE shown A. Pay TOTAL FEE(S) DUE shown above, or
above.
B. If the status above is to be removed, check box Sb on Part B - B. If applicant claimed SMALL ENTITY status before, or is now
Fee(s) Transmittal and pay the PUBLICATION FEE (if required) claiming SMALL ENTITY status, check box Sa on Part B - Fee(s)
and twice the amount of the ISSUE FEE shown above, or Transmittal and pay the PUBLICATION FEE (if required) and 1/2
the ISSUE FEE shown above.

IL PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
the paper as an equivalent of Part B.
III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
Mail Stop ISSUE FEE unless advised to the contrary.
IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.

Page 1of3
PTOL-85 (Rev. 02/11)

Exhibit 5
Page 140
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60338 Page 30 of
71

Application/Control Number: 12/197,993 Page 2
Art Unit: 2112

DETAILED ACTION

1. Claims 1 to 74 are presented for examination.

Continued Examination Under 37 CFR 1. 114

2. A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office

action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since

this application is eligible for continued examination under 37 CFR 1.114, and the fee

set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has

been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 7-11-2011

has been entered.

Information Disclosure Statement

3. The references listed in the information disclosure statement submitted on 7-11-

2011 have been considered by the examiner (see attached PT0-1449).

Allowable Subject Matter

4. Claims 1 to 74 are allowed.

5. The following is an examiner's statement of reasons for allowance: the prior art

provided by the IDS filed 7-11-2011 and made of record teaches numerous

methodologies for encoding data transmitted from a source to a destination using an

encoder; however, the prior art made of record, fails to teach or fairly suggest or render

obvious the novel element of the instant invention as directed to a method of encoding

and a method of decoding comprising the limitation of "wherein the encoding is such

Exhibit 5
Page 141
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60339 Page 31 of
71

Application/Control Number: 12/197,993 Page 3
Art Unit: 2112

that the plurality of source symbols can be regenerated to the desired degree of

accuracy from any predetermined number, N, of a combination of the transmitted

source symbols and transmitted repair symbols."

Any comments considered necessary by applicant must be submitted no later

than the payment of the issue fee and, to avoid processing delays, should preferably

accompany the issue fee. Such submissions should be clearly labeled "Comments on

Statement of Reasons for Allowance."

Conclusion

6. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to SHELLY A. CHASE whose telephone number is

(571 )272-3816. The examiner can normally be reached on Mon-Fri from 8:00 am to

5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Scott Baderman can be reached on 571-272-3644. The fax phone number

for the organization where this application or proceeding is assigned is 571-273-8300.

Exhibit 5
Page 142
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60340 Page 32 of
71

UNITED STAIBS p AIBNT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

NOTICE OF ALLOWANCE AND FEE(S) DUE

EXAMINER
23696 7590 12/07/2011
QUALCOMM INCORPORATED CHASE, SHELLY A
S77S MOREHOUSE DR.
SAN DIEGO, CA 92121 ART UNIT PAPER NUMBER

2112

DATE MAILED: 12/07/2011

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

12/197,993 08/25/2008 Michael G. Luby 091841Cl 3318
TITLE OF INVENTION: FILE DOWNLOAD AND STREAMING SYSTEM

APPLN. TYPE SMALL ENTITY ISSUE FEE DUE PUBLICATION FEE DUE PREV. PAID ISSUE FEE TOTAL FEE(S) DUE DATEDUE

nonprovisional NO $1740 $300 $0 $2040 03/07/2012

THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS
STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS
PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
DUE.

HOW TO REPLY TO THIS NOTICE:

I. Review the SMALL ENTITY status shown above.
If the SMALL ENTITY is shown as YES, verify your current If the SMALL ENTITY is shown as NO:
SMALL ENTITY status:
A. If the status is the same, pay the TOTAL FEE(S) DUE shown A. Pay TOTAL FEE(S) DUE shown above, or
above.
B. If the status above is to be removed, check box Sb on Part B - B. If applicant claimed SMALL ENTITY status before, or is now
Fee(s) Transmittal and pay the PUBLICATION FEE (if required) claiming SMALL ENTITY status, check box Sa on Part B - Fee(s)
and twice the amount of the ISSUE FEE shown above, or Transmittal and pay the PUBLICATION FEE (if required) and 1/2
the ISSUE FEE shown above.

IL PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
the paper as an equivalent of Part B.
III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
Mail Stop ISSUE FEE unless advised to the contrary.
IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.

Page 1of3
PTOL-85 (Rev. 02/11)

Exhibit 5
Page 143
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60341 Page 33 of
71

Application/Control Number: 12/197,993 Page 2
Art Unit: 2112

DETAILED ACTION

1. Claims 1 to74 are presented for examination.

Continued Examination Under 37 CFR 1.114

2. A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office

action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since

this application is eligible for continued examination under 37 CFR 1.114, and the fee

set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has

been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 11-3-2011

has been entered.

Information Disclosure Statement

3. The references listed in the information disclosure statement submitted on 11 -03-

2011 have been considered by the examiner (see attached PT0-1449).

Allowable Subject Matter

4. Claims 1 to 74 are allowed.

5. The following is an examiner's statement of reasons for allowance: the prior art

provided by the IDS filed 11-03-2011 and made of record teaches numerous

methodologies for encoding and decoding data transmitted from a source to a

destination using an various types of symbols; however, the prior art made of record,

Exhibit 5
Page 144
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60342 Page 34 of
71

Application/Control Number: 12/197,993 Page 3
Art Unit: 2112

fails to teach or fairly suggest or render obvious the novel element of the instant

invention as directed to a method of encoding and a method of decoding comprising the

limitation of "wherein the encoding is such that the plurality of source symbols can be

regenerated to the desired degree of accuracy from any predetermined number, N, of a

combination of the transmitted source symbols and transmitted repair symbols."

Any comments considered necessary by applicant must be submitted no later

than the payment of the issue fee and, to avoid processing delays, should preferably

accompany the issue fee. Such submissions should be clearly labeled "Comments on

Statement of Reasons for Allowance."

Conclusion

6. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to SHELLY A. CHASE whose telephone number is

(571 )272-3816. The examiner can normally be reached on Mon-Fri from 8:00 am to

5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Scott Baderman can be reached on 571-272-3644. The fax phone number

for the organization where this application or proceeding is assigned is 571 -273-8300.

Exhibit 5
Page 145
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60343 Page 35 of
71

UNITED STAIBS p AIBNT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

NOTICE OF ALLOWANCE AND FEE(S) DUE

EXAMINER
23696 7590 04/13/2012
QUALCOMM INCORPORATED CHASE, SHELLY A
S77S MOREHOUSE DR.
SAN DIEGO, CA 92121 ART UNIT PAPER NUMBER

2112

DATE MAILED: 04/13/2012

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

12/197,993 08/25/2008 Michael G. Luby 091841Cl 3318
TITLE OF INVENTION: FILE DOWNLOAD AND STREAMING SYSTEM

APPLN. TYPE SMALL ENTITY ISSUE FEE DUE PUBLICATION FEE DUE PREV. PAID ISSUE FEE TOTAL FEE(S) DUE DATEDUE

nonprovisional NO $1740 $300 $0 $2040 07 /13/2012

THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS
STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS
PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
DUE.

HOW TO REPLY TO THIS NOTICE:

I. Review the SMALL ENTITY status shown above.
If the SMALL ENTITY is shown as YES, verify your current If the SMALL ENTITY is shown as NO:
SMALL ENTITY status:
A. If the status is the same, pay the TOTAL FEE(S) DUE shown A. Pay TOTAL FEE(S) DUE shown above, or
above.
B. If the status above is to be removed, check box Sb on Part B - B. If applicant claimed SMALL ENTITY status before, or is now
Fee(s) Transmittal and pay the PUBLICATION FEE (if required) claiming SMALL ENTITY status, check box Sa on Part B - Fee(s)
and twice the amount of the ISSUE FEE shown above, or Transmittal and pay the PUBLICATION FEE (if required) and 1/2
the ISSUE FEE shown above.

IL PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
the paper as an equivalent of Part B.
III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
Mail Stop ISSUE FEE unless advised to the contrary.
IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.

Page 1of3
PTOL-85 (Rev. 02/11)

Exhibit 5
Page 146
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60344 Page 36 of
71

Application/Control Number: 12/197,993 Page 2
Art Unit: 2112

DETAILED ACTION

1. Claims 1 to 74 are presented for examination.

Continued Examination Under 37 CFR 1.114

2. A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office

action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since

this application is eligible for continued examination under 37 CFR 1.114, and the fee

set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has

been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 3-7-2012

has been entered.

Information Disclosure Statement

3. The references listed in the information disclosure statement submitted on 3-7-

2012 have been considered by the examiner (see attached PT0-1449).

Allowable Subject Matter

4. Claims 1 to 74 are allowed.

5. The following is an examiner's statement of reasons for allowance: the prior art

provided by the IDS filed 3-7-2012 and made of record teaches numerous

methodologies for encoding and decoding data transmitted from a source to a

destination using various types of symbols; however, the prior art made of record, fails

to teach or fairly suggest or render obvious the novel element of the instant invention as

Exhibit 5
Page 147
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60345 Page 37 of
71

Application/Control Number: 12/197,993 Page 3
Art Unit: 2112

directed to a method of encoding and a method of decoding comprising the limitation of

"wherein the encoding is such that the plurality of source symbols can be regenerated to

the desired degree of accuracy from any predetermined number, N, of a combination of

the transmitted source symbols and transmitted repair symbols."

Any comments considered necessary by applicant must be submitted no later

than the payment of the issue fee and, to avoid processing delays, should preferably

accompany the issue fee. Such submissions should be clearly labeled "Comments on

Statement of Reasons for Allowance."

Conclusion

6. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Shelly A. Chase whose telephone number is (571 )272-

3816. The examiner can normally be reached on Mon-Fri from 8:00 am to 5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Albert Decady can be reached on 571-272-3819. The fax phone number for

the organization where this application or proceeding is assigned is 571-273-8300.

Exhibit 5
Page 148
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60346 Page 38 of
71

UNITED STAIBS p AIBNT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

NOTICE OF ALLOWANCE AND FEE(S) DUE

EXAMINER
23696 7590 07/26/2012
QUALCOMM INCORPORATED CHASE, SHELLY A
S77S MOREHOUSE DR.
SAN DIEGO, CA 92121 ART UNIT PAPER NUMBER

2112

DATEMAILED: 07/26/2012

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

12/197,993 08/25/2008 Michael G. Luby 091841Cl 3318
TITLE OF INVENTION: FILE DOWNLOAD AND STREAMING SYSTEM

APPLN. TYPE SMALL ENTITY ISSUE FEE DUE PUBLICATION FEE DUE PREV. PAID ISSUE FEE TOTAL FEE(S) DUE DATEDUE

nonprovisional NO $1740 $300 $0 $2040 10/26/2012

THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS
STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS
PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
DUE.

HOW TO REPLY TO THIS NOTICE:

I. Review the SMALL ENTITY status shown above.
If the SMALL ENTITY is shown as YES, verify your current If the SMALL ENTITY is shown as NO:
SMALL ENTITY status:
A. If the status is the same, pay the TOTAL FEE(S) DUE shown A. Pay TOTAL FEE(S) DUE shown above, or
above.
B. If the status above is to be removed, check box Sb on Part B - B. If applicant claimed SMALL ENTITY status before, or is now
Fee(s) Transmittal and pay the PUBLICATION FEE (if required) claiming SMALL ENTITY status, check box Sa on Part B - Fee(s)
and twice the amount of the ISSUE FEE shown above, or Transmittal and pay the PUBLICATION FEE (if required) and 1/2
the ISSUE FEE shown above.

IL PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
the paper as an equivalent of Part B.
III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
Mail Stop ISSUE FEE unless advised to the contrary.
IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.

Page 1of3
PTOL-85 (Rev. 02/11)

Exhibit 5
Page 149
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60347 Page 39 of
71

Application/Control Number: 12/197,993 Page 2
Art Unit: 2112

DETAILED ACTION

1. Claims 1 to 74 are presented for examination.

Continued Examination Under 37 CFR 1.114

2. A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office

action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since

this application is eligible for continued examination under 37 CFR 1.114, and the fee

set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has

been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 7-12-2012

has been entered.

Information Disclosure Statement

3. The references listed in the information disclosure statement submitted on 7-12-

2012 have been considered by the examiner (see attached PT0-1449).

Allowable Subject Matter

4. Claims 1 to 74 are allowed.

5. The following is an examiner's statement of reasons for allowance: the prior art

provided by the IOS filed 7-12-2012 and made of record teaches numerous

methodologies for encoding and decoding data transmitted from a source to a

destination using various types of symbols; however, the prior art made of record, fails

to teach or fairly suggest or render obvious the novel element of the instant invention as

directed to a method of encoding and a method of decoding comprising the limitation of

"wherein the encoding is such that the plurality of source symbols can be regenerated to

Exhibit 5
Page 150
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60348 Page 40 of
71

Application/Control Number: 12/197,993 Page 3
Art Unit: 2112

the desired degree of accuracy from any predetermined number, N, of a combination of

the transmitted source symbols and transmitted repair symbols."

Any comments considered necessary by applicant must be submitted no later

than the payment of the issue fee and, to avoid processing delays, should preferably

accompany the issue fee. Such submissions should be clearly labeled "Comments on

Statement of Reasons for Allowance."

Conclusion

6. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Shelly A. Chase whose telephone number is (571 )272-

3816. The examiner can normally be reached on Mon-Fri from 8:00 am to 5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Albert Decady can be reached on 571-272-3819. The fax phone number for

the organization where this application or proceeding is assigned is 571-273-8300.

Exhibit 5
Page 151
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60349 Page 41 of
71

UNITED STAIBS p AIBNT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

NOTICE OF ALLOWANCE AND FEE(S) DUE

EXAMINER
23696 7590 02/28/2013
QUALCOMM INCORPORATED CHASE, SHELLY A
S77S MOREHOUSE DR.
SAN DIEGO, CA 92121 ART UNIT PAPER NUMBER

2112

DATE MAILED: 02/28/2013

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

12/197,993 08/25/2008 Michael G. Luby 091841Cl 3318
TITLE OF INVENTION: FILE DOWNLOAD AND STREAMING SYSTEM

APPLN. TYPE SMALL ENTITY ISSUE FEE DUE PUBLICATION FEE DUE PREV. PAID ISSUE FEE TOTAL FEE(S) DUE DATEDUE

nonprovisional NO $1770 $300 $0 $2070 05/28/2013

THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS
STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS
PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
DUE.

HOW TO REPLY TO THIS NOTICE:

I. Review the SMALL ENTITY status shown above.
If the SMALL ENTITY is shown as YES, verify your current If the SMALL ENTITY is shown as NO:
SMALL ENTITY status:
A. If the status is the same, pay the TOTAL FEE(S) DUE shown A. Pay TOTAL FEE(S) DUE shown above, or
above.
B. If the status above is to be removed, check box Sb on Part B - B. If applicant claimed SMALL ENTITY status before, or is now
Fee(s) Transmittal and pay the PUBLICATION FEE (if required) claiming SMALL ENTITY status, check box Sa on Part B - Fee(s)
and twice the amount of the ISSUE FEE shown above, or Transmittal and pay the PUBLICATION FEE (if required) and 1/2
the ISSUE FEE shown above.

IL PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
the paper as an equivalent of Part B.
III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
Mail Stop ISSUE FEE unless advised to the contrary.
IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.

Page 1of3
PTOL-85 (Rev. 02/11)

Exhibit 5
Page 152
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60350 Page 42 of
71

Application/Control Number: 12/197,993 Page 2
Art Unit: 2112

DETAILED ACTION

1. Claims 1 to 74 are presented for examination.

Continued Examination Under 37 CFR 1.114

2. A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office

action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since

this application is eligible for continued examination under 37 CFR 1.114, and the fee

set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has

been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 10-26-2012

has been entered.

Information Disclosure Statement

3. The references listed in the information disclosure statement submitted on 10-26-

2012 have been considered by the examiner (see attached PT0-1449).

Allowable Subject Matter

4. Claims 1to 74 are allowed.

5. The following is an examiner's statement of reasons for allowance: the prior art

provided by the IDS filed 10-26-2012 and made of record teaches numerous

methodologies for encoding and decoding data for transmission from a source to a

destination over a communications channel using a plurality of symbols, however, the

prior art made of record, taken alone or in combination fails to teach or fairly suggest or

Exhibit 5
Page 153
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60351 Page 43 of
71

Application/Control Number: 12/197,993 Page 3
Art Unit: 2112

render obvious the novel element of the instant invention as directed to a method of

encoding and a method of decoding data for transmission from a source to a destination

over a communications channel, wherein the data is represented at least by a plurality,

K, of source symbols, K being the number of source symbols and the source symbols

being in an order set, the method comprising the steps of "wherein the encoding is such

that the plurality of source symbols can be regenerated to the desired degree of

accuracy from any predetermined number, N, of a combination of the transmitted

source symbols and transmitted repair symbols."

Any comments considered necessary by applicant must be submitted no later

than the payment of the issue fee and, to avoid processing delays, should preferably

accompany the issue fee. Such submissions should be clearly labeled "Comments on

Statement of Reasons for Allowance."

Conclusion

6. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Shelly A. Chase whose telephone number is (571 )272-

3816. The examiner can normally be reached on Mon-Fri from 8:00 am to 5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Albert Decady can be reached on 571-272-3819. The fax phone number for

the organization where this application or proceeding is assigned is 571-273-8300.

Exhibit 5
Page 154
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60352 Page 44 of
71

UNITED STAIBS p AIBNT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

NOTICE OF ALLOWANCE AND FEE(S) DUE

EXAMINER
23696 7590 06/19/2013
QUALCOMM INCORPORATED CHASE, SHELLY A
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121 ART UNIT PAPER NUMBER

2112

DATE MAILED: 06/19/2013

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

12/197,993 08/25/2008 Michael G. Luby 091841Cl 3318
TITLE OF INVENTION: FILE DOWNLOAD AND STREAMING SYSTEM

APPLN. TYPE ENTITY STATUS ISSUE FEE DUE PUBLICATION FEE DUE PREV. PAID ISSUE FEE TOTAL FEE(S) DUE DATEDUE

nonprovisional UNDISCOUNTED $1780 $300 $0 $2080 09/19/2013

THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS
STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS
PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
DUE.

HOW TO REPLY TO THIS NOTICE:

I. Review the ENTITY STATUS shown above. If the ENTITY STATUS is shown as SMALL or MICRO, verify whether entitlement to that
entity status still applies.
If the ENTITY STATUS is the same as shown above, pay the TOTAL FEE(S) DUE shown above.
If the ENTITY STATUS is changed from that shown above, on PART B - FEE(S) TRANSMITTAL, complete section number 5 titled
"Change in Entity Status (from status indicated above)".
For purposes of this notice, small entity fees are 1/2 the amount of undiscounted fees, and micro entity fees are 1/2 the amount of small entity
fees.

IL PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
the paper as an equivalent of Part B.
III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
Mail Stop ISSUE FEE unless advised to the contrary.
IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.

Page 1of4
PTOL-85 (Rev. 02/11)

Exhibit 5
Page 155
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60353 Page 45 of
71

Application/Control Number: 12/197,993 Page 2
Art Unit: 2112

DETAILED ACTION

1. Claims 1 to 74 are presented for examination.

Continued Examination Under 37 CFR 1. 114

2. A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office

action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since

this application is eligible for continued examination under 37 CFR 1.114, and the fee

set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has

been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 5-28-2013

has been entered.

Information Disclosure Statement

3. The references listed in the information disclosure statement submitted on 5-28-

2013 have been considered by the examiner (see attached PT0-1449).

Allowable Subject Matter

4. Claims 1 to 74 are allowed.

5. The following is an examiner's statement of reasons for allowance: the prior art

provided by the IDS filed 5-28-2013 and made of record teaches numerous

methodologies for encoding and decoding data for transmission from a source to a

destination over a communications channel using a plurality of symbols; however, the

prior art made of record, taken alone or in combination fails to teach or fairly suggest or

render obvious the novel element of the instant invention as directed to a method of

encoding and a method of decoding data for transmission from a source to a destination

Exhibit 5
Page 156
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60354 Page 46 of
71

Application/Control Number: 12/197,993 Page 3
Art Unit: 2112

over a communications channel, wherein the data is represented at least by a plurality,

K, of source symbols, K being the number of source symbols and the source symbols

being in an order set, the method comprising the steps of "wherein the encoding is such

that the plurality of source symbols can be regenerated to the desired degree of

accuracy from any predetermined number, N, of a combination of the transmitted

source symbols and transmitted repair symbols."

Any comments considered necessary by applicant must be submitted no later

than the payment of the issue fee and, to avoid processing delays, should preferably

accompany the issue fee. Such submissions should be clearly labeled "Comments on

Statement of Reasons for Allowance."

Conclusion

6. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Shelly A. Chase whose telephone number is (571 )272-

3816. The examiner can normally be reached on Mon-Fri from 8:00 am to 5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Albert Decady can be reached on 571-272-3819. The fax phone number for

the organization where this application or proceeding is assigned is 571-273-8300.

Exhibit 5
Page 157
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60355 Page 47 of
71

UNITED STAIBS p AIBNT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

NOTICE OF ALLOWANCE AND FEE(S) DUE

EXAMINER
23696 7590 10/02/2013
QUALCOMM INCORPORATED CHASE, SHELLY A
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121 ART UNIT PAPER NUMBER

2112

DATE MAILED: 10/02/2013

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

12/197,993 08/25/2008 Michael G. Luby 091841Cl 3318
TITLE OF INVENTION: FILE DOWNLOAD AND STREAMING SYSTEM

APPLN. TYPE ENTITY STATUS ISSUE FEE DUE PUBLICATION FEE DUE PREV. PAID ISSUE FEE TOTAL FEE(S) DUE DATEDUE

nonprovisional UNDISCOUNTED $1780 $300 $0 $2080 01102/2014

THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS
STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS
PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
DUE.

HOW TO REPLY TO THIS NOTICE:

I. Review the ENTITY STATUS shown above. If the ENTITY STATUS is shown as SMALL or MICRO, verify whether entitlement to that
entity status still applies.
If the ENTITY STATUS is the same as shown above, pay the TOTAL FEE(S) DUE shown above.
If the ENTITY STATUS is changed from that shown above, on PART B - FEE(S) TRANSMITTAL, complete section number 5 titled
"Change in Entity Status (from status indicated above)".
For purposes of this notice, small entity fees are 1/2 the amount of undiscounted fees, and micro entity fees are 1/2 the amount of small entity
fees.

IL PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
the paper as an equivalent of Part B.
III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
Mail Stop ISSUE FEE unless advised to the contrary.
IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.

Page 1of4
PTOL-85 (Rev. 02/11)

Exhibit 5
Page 158
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60356 Page 48 of
71

Application/Control Number: 12/197,993 Page 2
Art Unit: 2112

DETAILED ACTION

1. The present application is being examined under the pre-AIA first to invent

provisions.

2. Claims 1 to 74 are presented for examination.

Continued Examination Under 37 CFR 1. 114

3. A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office

action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since

this application is eligible for continued examination under 37 CFR 1.114, and the fee

set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has

been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 9-19-2013

has been entered.

Information Disclosure Statement

4. The references listed in the information disclosure statement submitted on 9-19-

2013 have been considered by the examiner (see attached PT0-1449).

Allowable Subject Matter

5. Claims 1 to 74 are allowed.

6. The following is an examiner's statement of reasons for allowance: the prior art

provided by the IDS filed 9-19-2013 and made of record teaches numerous

methodologies for encoding and decoding data for transmission from a source to a

destination over a communications channel using a plurality of symbols; however, the

Exhibit 5
Page 159
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60357 Page 49 of
71

Application/Control Number: 12/197,993 Page 3
Art Unit: 2112

prior art made of record, taken alone or in combination fails to teach or fairly suggest or

render obvious the novel element of the instant invention as directed to a method of

encoding and a method of decoding data for transmission from a source to a destination

over a communications channel, wherein the data is represented at least by a plurality,

K, of source symbols, K being the number of source symbols and the source symbols

being in an order set, the method comprising the steps of "wherein the encoding is such

that the plurality of source symbols can be regenerated to the desired degree of

accuracy from any predetermined number, N, of a combination of the transmitted

source symbols and transmitted repair symbols."

Any comments considered necessary by applicant must be submitted no later

than the payment of the issue fee and, to avoid processing delays, should preferably

accompany the issue fee. Such submissions should be clearly labeled "Comments on

Statement of Reasons for Allowance."

Conclusion

7. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Shelly A. Chase whose telephone number is (571 )272-

3816. The examiner can normally be reached on Mon-Fri from 8:00 am to 5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Albert Decady can be reached on 571-272-3819. The fax phone number for

the organization where this application or proceeding is assigned is 571-273-8300.

Exhibit 5
Page 160
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60358 Page 50 of
71

UNITED STAIBS p AIBNT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

NOTICE OF ALLOWANCE AND FEE(S) DUE

EXAMINER
23696 7590 12/18/2013
QUALCOMM INCORPORATED CHASE, SHELLY A
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121 ART UNIT PAPER NUMBER

2112

DATE MAILED: 12/18/2013

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

12/197,993 08/25/2008 Michael G. Luby 091841Cl 3318
TITLE OF INVENTION: FILE DOWNLOAD AND STREAMING SYSTEM

APPLN. TYPE ENTITY STATUS ISSUE FEE DUE PUBLICATION FEE DUE PREV. PAID ISSUE FEE TOTAL FEE(S) DUE DATEDUE

nonprovisional UNDISCOUNTED $1780 $300 $0 $2080 03/18/2014

THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS
STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS
PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
DUE.

HOW TO REPLY TO THIS NOTICE:

I. Review the ENTITY STATUS shown above. If the ENTITY STATUS is shown as SMALL or MICRO, verify whether entitlement to that
entity status still applies.
If the ENTITY STATUS is the same as shown above, pay the TOTAL FEE(S) DUE shown above.
If the ENTITY STATUS is changed from that shown above, on PART B - FEE(S) TRANSMITTAL, complete section number 5 titled
"Change in Entity Status (from status indicated above)".
For purposes of this notice, small entity fees are 1/2 the amount of undiscounted fees, and micro entity fees are 1/2 the amount of small entity
fees.

IL PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
the paper as an equivalent of Part B.
III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
Mail Stop ISSUE FEE unless advised to the contrary.
IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.

Page 1of3
PTOL-85 (Rev. 02/11)

Exhibit 5
Page 161
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60359 Page 51 of
71

Application/Control Number: 12/197,993 Page 2
Art Unit: 2112

DETAILED ACTION

1. The present application is being examined under the pre-AIA first to invent

provisions.

2. Claims 1 to 74 are presented for examination.

Continued Examination Under 37 CFR 1. 114

3. A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office

action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since

this application is eligible for continued examination under 37 CFR 1.114, and the fee

set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has

been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 12-10-2013

has been entered.

Information Disclosure Statement

4. The references listed in the information disclosure statement submitted on 12-10-

2013 have been considered by the examiner (see attached PT0-1449).

Allowable Subject Matter

5. Claims 1 to 74 are allowed.

6. The following is an examiner's statement of reasons for allowance: the prior art

provided by the IDS filed 12-10-2013 and made of record teaches numerous

methodologies for encoding and decoding data for transmission from a source to a

destination over a communications channel using a plurality of symbols; however, the

prior art made of record, taken alone or in combination fails to teach or fairly suggest or

Exhibit 5
Page 162
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60360 Page 52 of
71

Application/Control Number: 12/197,993 Page 3
Art Unit: 2112

render obvious the novel element of the instant invention as directed to a method of

encoding and a method of decoding data for transmission from a source to a destination

over a communications channel, wherein the data is represented at least by a plurality,

K, of source symbols, K being the number of source symbols and the source symbols

being in an order set, the method comprising the steps of "wherein the encoding is such

that the plurality of source symbols can be regenerated to the desired degree of

accuracy from any predetermined number, N, of a combination of the transmitted

source symbols and transmitted repair symbols."

Any comments considered necessary by applicant must be submitted no later

than the payment of the issue fee and, to avoid processing delays, should preferably

accompany the issue fee. Such submissions should be clearly labeled "Comments on

Statement of Reasons for Allowance."

Conclusion

7. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Shelly A. Chase whose telephone number is (571 )272-

3816. The examiner can normally be reached on Mon-Fri from 8:00 am to 5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Albert Decady can be reached on 571-272-3819. The fax phone number for

the organization where this application or proceeding is assigned is 571-273-8300.

Exhibit 5
Page 163
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60361 Page 53 of
71

UNITED STAIBS p AIBNT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

NOTICE OF ALLOWANCE AND FEE(S) DUE

EXAMINER
23696 7590 04/14/2014
QUALCOMM INCORPORATED CHASE, SHELLY A
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121 ART UNIT PAPER NUMBER

2112

DATE MAILED: 04/14/2014

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

12/197,993 08/25/2008 Michael G. Luby 091841Cl 3318
TITLE OF INVENTION: FILE DOWNLOAD AND STREAMING SYSTEM

APPLN. TYPE ENTITY STATUS ISSUE FEE DUE PUBLICATION FEE DUE PREV. PAID ISSUE FEE TOTAL FEE(S) DUE DATEDUE

nonprovisional UNDISCOUNTED $960 $0 $0 $960 07/14/2014

THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS
STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS
PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
DUE.

HOW TO REPLY TO THIS NOTICE:

I. Review the ENTITY STATUS shown above. If the ENTITY STATUS is shown as SMALL or MICRO, verify whether entitlement to that
entity status still applies.
If the ENTITY STATUS is the same as shown above, pay the TOTAL FEE(S) DUE shown above.
If the ENTITY STATUS is changed from that shown above, on PART B - FEE(S) TRANSMITTAL, complete section number 5 titled
"Change in Entity Status (from status indicated above)".
For purposes of this notice, small entity fees are 1/2 the amount of undiscounted fees, and micro entity fees are 1/2 the amount of small entity
fees.

IL PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
the paper as an equivalent of Part B.
III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
Mail Stop ISSUE FEE unless advised to the contrary.
IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.

Page 1of3
PTOL-85 (Rev. 02/11)

Exhibit 5
Page 164
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60362 Page 54 of
71

Application/Control Number: 12/197,993 Page 2
Art Unit: 2112

DETAILED ACTION

1. The present application is being examined under the pre-AIA first to invent

provisions.

2. Claims 1 to 74 are presented for examination.

Continued Examination Under 37 CFR 1. 114

3. A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office

action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since

this application is eligible for continued examination under 37 CFR 1.114, and the fee

set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has

been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 3-12-2014

has been entered.

Information Disclosure Statement

4. The references listed in the information disclosure statement submitted on 3-12-

2014 have been considered by the examiner (see attached PT0-1449).

Allowable Subject Matter

5. Claims 1 to 74 are allowed.

6. The following is an examiner's statement of reasons for allowance: the prior art

provided by the IOS filed 3-12-2014 and made of record teaches numerous

methodologies for encoding and decoding data for transmission from a source to a

Exhibit 5
Page 165
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60363 Page 55 of
71

Application/Control Number: 12/197,993 Page 3
Art Unit: 2112

destination over a communications channel using a plurality of symbols; however, the

prior art made of record, taken alone or in combination fails to teach or fairly suggest or

render obvious the novel element of the instant invention as directed to a method of

encoding and a method of decoding data for transmission from a source to a destination

over a communications channel, wherein the data is represented at least by a plurality,

K, of source symbols, K being the number of source symbols and the source symbols

being in an order set, the method comprising the steps of "wherein the encoding is such

that the plurality of source symbols can be regenerated to the desired degree of

accuracy from any predetermined number, N, of a combination of the transmitted

source symbols and transmitted repair symbols."

Any comments considered necessary by applicant must be submitted no later

than the payment of the issue fee and, to avoid processing delays, should preferably

accompany the issue fee. Such submissions should be clearly labeled "Comments on

Statement of Reasons for Allowance."

Conclusion

7. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Shelly A. Chase whose telephone number is (571 )272-

3816. The examiner can normally be reached on Mon-Fri from 8:00 am to 5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Albert Decady can be reached on 571-272-3819. The fax phone number for

the organization where this application or proceeding is assigned is 571-273-8300.

Exhibit 5
Page 166
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60364 Page 56 of
71

UNITED STAIBS p AIBNT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

NOTICE OF ALLOWANCE AND FEE(S) DUE

EXAMINER
23696 7590 07/25/2014
QUALCOMM INCORPORATED CHASE, SHELLY A
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121 ART UNIT PAPER NUMBER

2112

DATEMAILED: 07/25/2014

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

12/197,993 08/25/2008 Michael G. Luby 091841Cl 3318
TITLE OF INVENTION: FILE DOWNLOAD AND STREAMING SYSTEM

APPLN. TYPE ENTITY STATUS ISSUE FEE DUE PUBLICATION FEE DUE PREV. PAID ISSUE FEE TOTAL FEE(S) DUE DATEDUE

nonprovisional UNDISCOUNTED $960 $0 $0 $960 10/27/2014

THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS
STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS
PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
DUE.

HOW TO REPLY TO THIS NOTICE:

I. Review the ENTITY STATUS shown above. If the ENTITY STATUS is shown as SMALL or MICRO, verify whether entitlement to that
entity status still applies.
If the ENTITY STATUS is the same as shown above, pay the TOTAL FEE(S) DUE shown above.
If the ENTITY STATUS is changed from that shown above, on PART B - FEE(S) TRANSMITTAL, complete section number 5 titled
"Change in Entity Status (from status indicated above)".
For purposes of this notice, small entity fees are 1/2 the amount of undiscounted fees, and micro entity fees are 1/2 the amount of small entity
fees.

IL PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
the paper as an equivalent of Part B.
III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
Mail Stop ISSUE FEE unless advised to the contrary.
IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.

Page 1of3
PTOL-85 (Rev. 02/11)

Exhibit 5
Page 167
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60365 Page 57 of
71

Application/Control Number: 12/197,993 Page 2
Art Unit: 2112

DETAILED ACTION

1. The present application is being examined under the pre-AIA first to invent

provisions.

2. Claims 1 to 74 are presented for examination.

Continued Examination Under 37 CFR 1.114

3. A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office

action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since

this application is eligible for continued examination under 37 CFR 1.114, and the fee

set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has

been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 7-10-2014

has been entered.

Information Disclosure Statement

4. The references listed in the information disclosure statement submitted on 7-10-

2014 have been considered by the examiner (see attached PT0-1449).

Allowable Subject Matter

5. Claims 1 to 74 are allowed.

6. The following is an examiner's statement of reasons for allowance: the prior art

provided by the IOS filed 7-10-2014 and made of record teaches numerous

methodologies for encoding and decoding data for transmission from a source to a

Exhibit 5
Page 168
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60366 Page 58 of
71

Application/Control Number: 12/197,993 Page 3
Art Unit: 2112

destination over a communications channel using a plurality of symbols; however, the

prior art made of record, taken alone or in combination fails to teach or fairly suggest or

render obvious the novel element of the instant invention as directed to a method of

encoding and a method of decoding data for transmission from a source to a destination

over a communications channel, wherein the data is represented at least by a plurality,

K, of source symbols, K being the number of source symbols and the source symbols

being in an order set, the method comprising the steps of "wherein the encoding is such

that the plurality of source symbols can be regenerated to the desired degree of

accuracy from any predetermined number, N, of a combination of the transmitted

source symbols and transmitted repair symbols."

Any comments considered necessary by applicant must be submitted no later

than the payment of the issue fee and, to avoid processing delays, should preferably

accompany the issue fee. Such submissions should be clearly labeled "Comments on

Statement of Reasons for Allowance."

Conclusion

7. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Shelly A. Chase whose telephone number is (571 )272-

3816. The examiner can normally be reached on Mon-Fri from 8:00 am to 5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Albert Decady can be reached on 571-272-3819. The fax phone number for

the organization where this application or proceeding is assigned is 571-273-8300.

Exhibit 5
Page 169
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60367 Page 59 of
71

UNITED STAIBS p AIBNT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

NOTICE OF ALLOWANCE AND FEE(S) DUE

EXAMINER
23696 7590 11/13/2014
QUALCOMM INCORPORATED CHASE, SHELLY A
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121 ART UNIT PAPER NUMBER

2112

DATE MAILED: 11/13/2014

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

12/197,993 08/25/2008 Michael G. Luby 091841Cl 3318
TITLE OF INVENTION: FILE DOWNLOAD AND STREAMING SYSTEM

APPLN. TYPE ENTITY STATUS ISSUE FEE DUE PUBLICATION FEE DUE PREV. PAID ISSUE FEE TOTAL FEE(S) DUE DATEDUE

nonprovisional UNDISCOUNTED $960 $0 $0 $960 02/13/2015

THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS
STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS
PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
DUE.

HOW TO REPLY TO THIS NOTICE:

I. Review the ENTITY STATUS shown above. If the ENTITY STATUS is shown as SMALL or MICRO, verify whether entitlement to that
entity status still applies.
If the ENTITY STATUS is the same as shown above, pay the TOTAL FEE(S) DUE shown above.
If the ENTITY STATUS is changed from that shown above, on PART B - FEE(S) TRANSMITTAL, complete section number 5 titled
"Change in Entity Status (from status indicated above)".
For purposes of this notice, small entity fees are 1/2 the amount of undiscounted fees, and micro entity fees are 1/2 the amount of small entity
fees.

IL PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
the paper as an equivalent of Part B.
III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
Mail Stop ISSUE FEE unless advised to the contrary.
IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.

Page 1of3
PTOL-85 (Rev. 02/11)

Exhibit 5
Page 170
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60368 Page 60 of
71

Application/Control Number: 12/197,993 Page 2
Art Unit: 2112

DETAILED ACTION

1. The present application is being examined under the pre-AIA first to invent

provisions.

2. Claims 1 to 74 are presented for examination.

Continued Examination Under 37 CFR 1. 114

3. A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office

action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since

this application is eligible for continued examination under 37 CFR 1.114, and the fee

set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has

been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 10-14-2014

has been entered.

Information Disclosure Statement

4. The references listed in the information disclosure statement submitted on 10-14-

2014 have been considered by the examiner (see attached PT0-1449).

Allowable Subject Matter

5. Claims 1 to 74 are allowed.

6. The following is an examiner's statement of reasons for allowance: the prior art

provided by the IOS filed 10-14-2014 and made of record teaches numerous

methodologies for encoding and decoding data for transmission from a source to a

Exhibit 5
Page 171
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60369 Page 61 of
71

Application/Control Number: 12/197,993 Page 3
Art Unit: 2112

destination over a communications channel using a plurality of symbols; however, the

prior art made of record, taken alone or in combination fails to teach or fairly suggest or

render obvious the novel element of the instant invention as directed to a method of

encoding and a method of decoding data for transmission from a source to a destination

over a communications channel, wherein the data is represented at least by a plurality,

K, of source symbols, K being the number of source symbols and the source symbols

being in an order set, the method comprising the steps of "wherein the encoding is such

that the plurality of source symbols can be regenerated to the desired degree of

accuracy from any predetermined number, N, of a combination of the transmitted

source symbols and transmitted repair symbols."

Any comments considered necessary by applicant must be submitted no later

than the payment of the issue fee and, to avoid processing delays, should preferably

accompany the issue fee. Such submissions should be clearly labeled "Comments on

Statement of Reasons for Allowance."

Conclusion

7. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Shelly A. Chase whose telephone number is (571 )272-

3816. The examiner can normally be reached on Mon-Fri from 8:00 am to 5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Albert Decady can be reached on 571-272-3819. The fax phone number for

the organization where this application or proceeding is assigned is 571-273-8300.

Exhibit 5
Page 172
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60370 Page 62 of
71

UNITED STAIBS p AIBNT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

NOTICE OF ALLOWANCE AND FEE(S) DUE

EXAMINER
23696 7590 02/27/2015
QUALCOMM INCORPORATED CHASE, SHELLY A
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121 ART UNIT PAPER NUMBER

2112

DATEMAILED: 02/27/2015

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

12/197,993 08/25/2008 Michael G. Luby 091841Cl 3318
TITLE OF INVENTION: FILE DOWNLOAD AND STREAMING SYSTEM

APPLN. TYPE ENTITY STATUS ISSUE FEE DUE PUBLICATION FEE DUE PREV. PAID ISSUE FEE TOTAL FEE(S) DUE DATEDUE

nonprovisional UNDISCOUNTED $960 $0 $0 $960 05/27/2015

THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS
STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS
PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
DUE.

HOW TO REPLY TO THIS NOTICE:

I. Review the ENTITY STATUS shown above. If the ENTITY STATUS is shown as SMALL or MICRO, verify whether entitlement to that
entity status still applies.
If the ENTITY STATUS is the same as shown above, pay the TOTAL FEE(S) DUE shown above.
If the ENTITY STATUS is changed from that shown above, on PART B - FEE(S) TRANSMITTAL, complete section number 5 titled
"Change in Entity Status (from status indicated above)".
For purposes of this notice, small entity fees are 1/2 the amount of undiscounted fees, and micro entity fees are 1/2 the amount of small entity
fees.

IL PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
the paper as an equivalent of Part B.
III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
Mail Stop ISSUE FEE unless advised to the contrary.
IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.

Page 1of3
PTOL-85 (Rev. 02/11)

Exhibit 5
Page 173
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60371 Page 63 of
71

Application/Control Number: 12/197,993 Page 2
Art Unit: 2112

DETAILED ACTION

1. The present application is being examined under the pre-AIA first to invent

provisions.

2. Claims 1 to 74 are presented for examination.

Continued Examination Under 37 CFR 1. 114

3. A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office

action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since

this application is eligible for continued examination under 37 CFR 1.114, and the fee

set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has

been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 2-11-2015

has been entered.

Information Disclosure Statement

4. The references listed in the information disclosure statement submitted on 2-11-

2015 have been considered by the examiner (see attached PT0-1449).

Allowable Subject Matter

5. Claims 1 to 74 are allowed.

6. The following is an examiner's statement of reasons for allowance: the prior art

provided by the IDS filed 2-11-2015 and made of record teaches numerous

methodologies for encoding and decoding data for transmission from a source to a

Exhibit 5
Page 174
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60372 Page 64 of
71

Application/Control Number: 12/197,993 Page 3
Art Unit: 2112

destination over a communications channel using a plurality of symbols; however, the

prior art made of record, taken alone or in combination fails to teach or fairly suggest or

render obvious the novel element of the instant invention as directed to a method of

encoding and a method of decoding data for transmission from a source to a destination

over a communications channel, wherein the data is represented at least by a plurality,

K, of source symbols, K being the number of source symbols and the source symbols

being in an order set, the method comprising the steps of "wherein the encoding is such

that the plurality of source symbols can be regenerated to the desired degree of

accuracy from any predetermined number, N, of a combination of the transmitted

source symbols and transmitted repair symbols."

Any comments considered necessary by applicant must be submitted no later

than the payment of the issue fee and, to avoid processing delays, should preferably

accompany the issue fee. Such submissions should be clearly labeled "Comments on

Statement of Reasons for Allowance."

Conclusion

7. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Shelly A. Chase whose telephone number is (571 )272-

3816. The examiner can normally be reached on Mon-Fri from 8:00 am to 5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Albert Decady can be reached on 571-272-3819. The fax phone number for

the organization where this application or proceeding is assigned is 571-273-8300.

Exhibit 5
Page 175
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60373 Page 65 of
71

UNITED STAIBS p AIBNT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov

NOTICE OF ALLOWANCE AND FEE(S) DUE

EXAMINER
23696 7590 07/07/2015
QUALCOMM INCORPORATED CHASE, SHELLY A
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121 ART UNIT PAPER NUMBER

2112

DATE MAILED: 07/07/2015

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

12/197,993 08/25/2008 Michael G. Luby 091841Cl 3318
TITLE OF INVENTION: FILE DOWNLOAD AND STREAMING SYSTEM

APPLN. TYPE ENTITY STATUS ISSUE FEE DUE PUBLICATION FEE DUE PREV. PAID ISSUE FEE TOTAL FEE(S) DUE DATEDUE

nonprovisional UNDISCOUNTED $960 $0 $0 $960 10/07/2015

THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS
STATUTORY PERIOD CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS
PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
DUE.

HOW TO REPLY TO THIS NOTICE:

I. Review the ENTITY STATUS shown above. If the ENTITY STATUS is shown as SMALL or MICRO, verify whether entitlement to that
entity status still applies.
If the ENTITY STATUS is the same as shown above, pay the TOTAL FEE(S) DUE shown above.
If the ENTITY STATUS is changed from that shown above, on PART B - FEE(S) TRANSMITTAL, complete section number 5 titled
"Change in Entity Status (from status indicated above)".
For purposes of this notice, small entity fees are 1/2 the amount of undiscounted fees, and micro entity fees are 1/2 the amount of small entity
fees.

IL PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
the paper as an equivalent of Part B.
III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
Mail Stop ISSUE FEE unless advised to the contrary.
IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.

Page 1of3
PTOL-85 (Rev. 02/11)

Exhibit 5
Page 176
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60374 Page 66 of
71

Application/Control Number: 12/197,993 Page 2
Art Unit: 2112

DETAILED ACTION

1. The present application is being examined under the pre-AIA first to invent

provisions.

2. Claims 1 to 74 are presented for examination.

Continued Examination Under 37 CFR 1. 114

3. A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office

action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since

this application is eligible for continued examination under 37 CFR 1.114, and the fee

set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has

been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 5-21-2015

has been entered.

Information Disclosure Statement

4. The references listed in the information disclosure statement submitted on 5-21-

2015 have been considered by the examiner (see attached PT0-1449).

Allowable Subject Matter

5. Claims 1 to 74 are allowed.

6. The following is an examiner's statement of reasons for allowance: the prior art

provided by the IDS filed 5-21-2015 and made of record teaches numerous

methodologies for processing data for transmission over a communications channel

Exhibit 5
Page 177
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60375 Page 67 of
71

Application/Control Number: 12/197,993 Page 3
Art Unit: 2112

using a plurality of symbols; however, the prior art made of record, taken alone or in

combination fails to teach or fairly suggest or render obvious the novel element of the

instant invention as directed to a method of encoding and a method of decoding data for

transmission from a source to a destination over a communications channel, wherein

the data is represented at least by a plurality, K, of source symbols, K being the number

of source symbols and the source symbols being in an order set, the method comprising

the steps of "wherein the encoding is such that the plurality of source symbols can be

regenerated to the desired degree of accuracy from any predetermined number, N, of a

combination of the transmitted source symbols and transmitted repair symbols."

Any comments considered necessary by applicant must be submitted no later

than the payment of the issue fee and, to avoid processing delays, should preferably

accompany the issue fee. Such submissions should be clearly labeled "Comments on

Statement of Reasons for Allowance."

Conclusion

7. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Shelly A. Chase whose telephone number is (571 )272-

3816. The examiner can normally be reached on Mon-Fri from 8:00 am to 5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Albert Decady can be reached on 571-272-3819. The fax phone number for

the organization where this application or proceeding is assigned is 571-273-8300.

Exhibit 5
Page 178
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60376 Page 68 of
71

UNITED STA TES p ATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

12/197,993 08/25/2008 Michael G. Luby 091841Cl 3318

23696 7590 07/29/2015
EXAMINER
QUALCOMM INCORPORATED
5775 MOREHOUSE DR. CHASE, SHELLY A

SAN DIEGO, CA 92121
ART UNIT PAPER NUMBER

2112

NOTIFICATION DATE DELIVERY MODE

07/29/2015 ELECTRONIC

Please find below and/or attached an Office communication concerning this application or proceeding.

The time period for reply, if any, is set in the attached communication.

Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
us-docketing@qualcomm.com

PTOL-90A (Rev. 04/07)

Exhibit 5
Page 179
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60377 Page 69 of
71

Application No. Applicant(s)
Supplemental 12/197,993 LUBY ET AL.
Examiner Art Unit AIA (First Inventor to
Notice of Allowability File) Status
Shelly A. Chase 2112
No

-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address--
All claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application. If not included
herewith (or previously mailed), a Notice of Allowance (PTOL-85) or other appropriate communication will be mailed in due course. THIS
NOTICE OF ALLOWABILITY IS NOT A GRANT OF PATENT RIGHTS. This application is subject to withdrawal from issue at the initiative
of the Office or upon petition by the applicant. See 37 CFR 1.313 and M PEP 1308.
1. [8J This communication is responsive to IDS filed 6-24-2015.
DA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on ___.

2. D An election was made by the applicant in response to a restriction requirement set forth during the interview on _ _ ; the restriction
requirement and election have been incorporated into this action.

3. [8J The allowed claim(s) is/are 1-74. As a result of the allowed claim(s), you may be eligible to benefit from the Patent Prosecution
Highway program at a participating intellectual property office for the corresponding application. For more information, please see
~1tl;Q://www.usnto.gov/gatents/init events/.Qgh/index.js.Q or send an inquiry to PPHfeedback@uS(Qto.aov .

4. D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
Certified copies:
a) D All b) D Some *c) D None of the:
1. D Certified copies of the priority documents have been received.
2. D Certified copies of the priority documents have been received in Application No. _ _ .
3. D Copies of the certified copies of the priority documents have been received in this national stage application from the
International Bureau (PCT Rule 17.2(a)).
* Certified copies not received: _ _ .

Applicant has THREE MONTHS FROM THE "MAILING DATE" of this communication to file a reply complying with the requirements
noted below. Failure to timely comply will result in ABANDONMENT of this application.
THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
5. D CORRECTED DRAWINGS (as "replacement sheets") must be submitted.
D including changes required by the attached Examiner's Amendment I Comment or in the Office action of
Paper No./Mail Date _ _ .
Identifying indicia such as the application number {see 37 CFR 1.84{c)) should be written on the drawings in the front {not the back) of
each sheet. Replacement sheet{s) should be labeled as such in the header according to 37 CFR 1.121{d).

6. 0 DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.

Attachment(s)
1. D Notice of References Cited (PT0-892) 5. D Examiner's Amendment/Comment
2. [8J Information Disclosure Statements (PTO/SB/08), 6. [8J Examiner's Statement of Reasons for Allowance
Paper No./Mail Date 6-24-2015
3. D Examiner's Comment Regarding Requirement for Deposit 7. D Other _ _ .
of Biological Material
4. D Interview Summary (PT0-413),
Paper No./Mail Date _ _ .
/Shelly A Chase/
Primary Examiner, Art Unit 2112

U.S. Patent and Trademark Office
PTOL-37 (Rev. 08·13) Notice of Allowability Part of Paper No./Mail Date 20150710

Exhibit 5
Page 180
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60378 Page 70 of
71

Application/Control Number: 12/197,993 Page 2
Art Unit: 2112

DETAILED ACTION

1. The present application is being examined under the pre-AIA first to invent

provisions.

2. Claims 1 to 74 are presented for examination.

Continued Examination Under 37 CFR 1. 114

3. A request for continued examination under 37 CFR 1.114, including the fee set

forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office

action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since

this application is eligible for continued examination under 37 CFR 1.114, and the fee

set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has

been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 6-24-2015

has been entered.

Information Disclosure Statement

4. The references listed in the information disclosure statement submitted on 6-24-

2015 have been considered by the examiner (see attached PT0-1449).

Allowable Subject Matter

5. Claims 1 to 74 are allowed.

6. The following is an examiner's statement of reasons for allowance: the prior art

provided by the IDS filed 6-24-2015 and made of record teaches numerous

methodologies for encoding and decoding data for transmission from a source to a

Exhibit 5
Page 181
Case 3:17-cv-00108-GPC-MDD Document 661-8 Filed 10/12/18 PageID.60379 Page 71 of
71

Application/Control Number: 12/197,993 Page 3
Art Unit: 2112

destination over a communications channel using a plurality of symbols; however, the

prior art made of record, taken alone or in combination fails to teach or fairly suggest or

render obvious the novel element of the instant invention as directed to a method of

encoding and a method of decoding data for transmission from a source to a destination

over a communications channel, wherein the data is represented at least by a plurality,

K, of source symbols, K being the number of source symbols and the source symbols

being in an order set, the method comprising the steps of "wherein the encoding is such

that the plurality of source symbols can be regenerated to the desired degree of

accuracy from any predetermined number, N, of a combination of the transmitted

source symbols and transmitted repair symbols."

Any comments considered necessary by applicant must be submitted no later

than the payment of the issue fee and, to avoid processing delays, should preferably

accompany the issue fee. Such submissions should be clearly labeled "Comments on

Statement of Reasons for Allowance."

Conclusion

7. Any inquiry concerning this communication or earlier communications from the

examiner should be directed to Shelly A. Chase whose telephone number is (571 )272-

3816. The examiner can normally be reached on Mon-Fri from 8:00 am to 5:00 pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's

supervisor, Albert Decady can be reached on 571-272-3819. The fax phone number for

the organization where this application or proceeding is assigned is 571-273-8300.

Exhibit 5
Page 182