UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Cisco Systems, Inc.
`Petitioner
`
`v.
`
`Capella Photonics, Inc.
`Patent Owner
`
`Patent No. RE42,368
`Filing Date: June 15, 2010
`Reissue Date: May 17, 2011
`
`Title: RECONFIGURABLE OPTICAL ADD-DROP MULTIPLEXERS WITH
`SERVO CONTROL AND DYNAMIC SPECTRAL POWER MANAGEMENT
`CAPABILITIES
`
`
`
`Inter Partes Review No. 2014-01166
`
`Petitioner’s Request for Authorization to File Motion to Submit Supplemental
`Information Under 37 C.F.R. § 42.123(a)
`
`
`
`1
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Cisco Systems, Inc.
`Petitioner
`
`v.
`
`Capella Photonics, Inc.
`Patent Owner
`
`Patent No. RE42,368
`Filing Date: June 15, 2010
`Reissue Date: May 17, 2011
`
`Title: RECONFIGURABLE OPTICAL ADD-DROP MULTIPLEXERS WITH
`SERVO CONTROL AND DYNAMIC SPECTRAL POWER MANAGEMENT
`CAPABILITIES
`
`
`
`Inter Partes Review No. 2014-01166
`
`Petitioner’s Request for Authorization to File Motion to Submit Supplemental
`Information Under 37 C.F.R. § 42.123(a)
`
`
`
`1
`
`
`
`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US-[034855.2014] (RE42,368)
`Petitioner’s Request for Authorization for Motion to Submit Suppl. Info.
`
`
`
`Petitioner requests authorization under 37 C.F.R. § 42.123(a) to file a motion
`
`to submit supplemental information relevant to a claim for which the trial has been
`
`instituted. Because the date to request authorization is prior to the initial
`
`conference call with the Board, Petitioner makes this motion here instead of during
`
`that call. Petitioner expects shortly to jointly request a call with the Board.
`
`Petitioner requests authorization to file a motion to submit the following
`
`supplementation information, the need for which is outlined briefly below:
`
`1. Patent Owner’s (“PO”) interrogatory responses on alleged conception,
`
`diligence and reduction to practice. PO served these responses as part of the
`
`related District Court litigation, Capella Photonics, Inc. v. Cisco Systems,
`
`Inc., Case Nos. 3:14-cv-03348, -3349, -3350, -3351-EMC (N.D. Cal., 2014)
`
`(the “Related Cases”). This information is relevant to the PO’s expected
`
`attempt to swear behind the currently-asserted prior art in this IPR.
`
`2. Documents referenced in PO’s interrogatory responses regarding priority
`
`dates. This information is also relevant to the issues of alleged conception
`
`and reduction to practice.
`
`
`
`1
`
`
`
`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US-[034855.2014] (RE42,368)
`Petitioner’s Request for Authorization for Motion to Submit Suppl. Info.
`
`
`3. The parties’ Joint Claim Construction and Prehearing Statement in the
`
`Related Cases. This information is relevant to the BRIs that the PO indicated
`
`it will pursue in its Preliminary response.
`
`4. PO’s infringement contentions in the Related Cases. This information is
`
`also relevant to the BRIs in this IPR.
`
`5. Expected deposition testimony and documents of party and third-party
`
`witnesses regarding alleged conception, diligence and reduction to practice.
`
`These witnesses are expected to include the named inventors on the
`
`RE42,368 patent at issue in this IPR.1 This information is relevant to the
`
`priority date of the patent at issue in this IPR.
`
`This request meets the requirements of 37 C.F.R. § 42.123(a) – specifically:
`
`(1) this request is being made within one month of the trial institution date of
`
`January 30, 2015; and (2) the supplemental information is relevant to a claim (i.e.,
`
`claim 1) for which the trial has been instituted.
`
`Petitioner’s request for authorization to file a motion to submit supplemental
`
`information should be granted because:
`
`
`1 As discussed below, Petitioner plans to separately request the Board’s permission
`to take discovery of the named inventors of the RE42,368 patent to refute Patent
`Owner’s expected claims to an earlier priority date for that patent.
`2
`
`
`
`
`
`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US-[034855.2014] (RE42,368)
`Petitioner’s Request for Authorization for Motion to Submit Suppl. Info.
`
`
`1. The information that Petitioner proposes to submit, above, was not available
`
`to Petitioner when the Petition was filed.
`
`2. PO’s interrogatory responses were not served until January 16, 2015. Those
`
`responses for the first time revealed PO’s intent to claim an August 31,
`
`2000, priority date for the ‘368 patent. PO contends that this date is earlier
`
`than the currently-asserted prior art. The allegedly-supporting evidence for
`
`this date is uniquely in the possession of PO and prior PO employees. In the
`
`interests of justice, Petitioner must be able to explore and test these
`
`allegations and the evidence behind them.
`
`3. The District Court’s schedule has not yet opened up discovery on the issues
`
`of alleged conception and reduction to practice. And Petitioner expects that
`
`the Related Cases will soon be stayed in favor of this proceeding. Thus, this
`
`proceeding is the sole opportunity for Petitioner to take this discovery prior
`
`to the IPR trial.
`
`4. Third party discovery will be especially important in this IPR. This
`
`discovery is important because the only independent individuals of whom
`
`Petitioner is aware who could refute PO’s priority claims are people such as
`
`the named inventors of the ‘368 patent who no longer work for PO. There
`
`may also be a need for discovery from other third parties depending on what
`
`
`
`3
`
`
`
`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US-[034855.2014] (RE42,368)
`Petitioner’s Request for Authorization for Motion to Submit Suppl. Info.
`
`
`the PO relies upon. For example, PO indicated previously that information
`
`relevant to priority dates may be in the sole possession of the named
`
`inventor’s prior employers.
`
`5. Petitioner appreciates that the need for information regarding priority date
`
`issues is contingent on the positions that PO eventually takes in its response.
`
`However, it appears that PO will attempt to back-date the prior art. Thus,
`
`given the short time-to-trial and the time it takes to obtain and enforce third-
`
`party subpoenas, starting the discovery process now will help prevent
`
`scheduling delays in this IPR and prejudice to the Petitioner.
`
`6. PO produced documents regarding priority date issues after the Petition was
`
`filed. Petitioner requested on February 4, 2015, that PO de-designate (under
`
`the Protective Order in the Related Cases) those documents. PO referenced
`
`those documents in its interrogatory responses regarding alleged conception,
`
`diligence and reduction to practice in the Related Cases. Petitioner made its
`
`request in order to allow Petitioner to submit those documents in this
`
`proceeding. As of the filing of this motion, PO still had not provided a
`
`response as to whether it would de-designate the documents.
`
`7. Although PO served its Infringement Contentions prior to the filing of the
`
`Petition, it was not until after the Petition that PO said that it was accusing
`
`
`
`4
`
`
`
`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US-[034855.2014] (RE42,368)
`Petitioner’s Request for Authorization for Motion to Submit Suppl. Info.
`
`
`devices using non-movable mirrors. This late accusation of such devices
`
`may affect the scope of discovery and claim construction.
`
`8. PO served its claim construction positions well after the Petition was filed.
`
`While Petitioner appreciates that the rules for claim interpretation used in
`
`district court litigation are different than the “broadest reasonable
`
`interpretation in light of the specification” used for these IPR proceedings,
`
`Petitioner expects that PO’s earlier statements regarding claim construction
`
`will be relevant to these proceedings.
`
`Accordingly, Petitioner requests authorization for Petitioner to file a motion
`
`to submit supplemental information under 37 C.F.R. § 42.123.
`
`
`Dated: February 26, 2015
`
`COOLEY LLP
`ATTN: Wayne O. Stacy
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (202) 842-7800
`Fax: (202) 842-7899
`
`
`
`
`
`
`By:
`
`
`
`
`
`Respectfully submitted,
`COOLEY LLP
`
`/ Matthew J. Leary /
`Matthew J. Leary
`Reg. No. 58,593
`Back-up Counsel
`
`
`
`5
`
`
`
`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US-[034855.2014] (RE42,368)
`Petitioner’s Request for Authorization for Motion to Submit Suppl. Info.
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies that on
`
`February 26, 2015, a complete and entire electronic copy of this Request for
`
`Authorization to File Motion to Submit Supplemental Information Under 37
`
`C.F.R. § 42.123(a), No. 2014-01166, was served electronically via email in its
`
`entirety on the following counsel of record for Patent Owners:
`
`Robert Greene Sterne (Lead Counsel)
`Jon E. Wright (Backup Counsel)
`Jason D. Eisenberg (Backup Counsel)
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`1100 New York Avenue, N. W.
`Washington, D.C. 20005
`E-mails:
`rsterne-PTAB@skgf.com
`jwright-PTAB@skgf.com
`jasone-PTAB@skgf.com
`
`By: / Matthew J. Leary /
`
`Matthew J. Leary
`
`Reg. No. 58,593
`
`Back-up Counsel
`
`
`1
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`
`
`
`
`114392210 v3
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