`
`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 List of Proposed Motions
`
`
`
`1
`
`
`
`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US-[034855.2014] (RE42,368)
`Petitioner’s List of Proposed Motions
`
`
`
`Pursuant to the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756,
`
`
`
`48765-66 (August 14, 2012), Petitioner Cisco Systems, Inc., hereby submits the
`
`following list of proposed motions it is currently contemplating filing. Although
`
`motions to exclude evidence and motions for observations on cross-examination
`
`have been authorized by the Board, Cisco identifies such motions here to preserve
`
`its right to file them. This list is provided without prejudice to Petitioner’s right to
`
`seek authorization to file additional motions pursuant to the Board's authorization
`
`or to refrain from filing the motions listed herein.
`
`1. Motion to submit supplemental information pursuant to 37 CFR § 42.123
`
`(e.g., Patent Owner’s (“PO”)’s
`
`interrogatory responses and related
`
`discovery regarding alleged conception, diligence and reduction
`
`to
`
`practice).1
`
`2. Motion for additional discovery pursuant to 37 CFR § 42.51(b)(2) (e.g.,
`
`regarding (1) alleged conception, diligence and reduction to practice,
`
`
`1 Petitioner is concurrently filing a Request for Authorization to Move to Submit
`Supplemental Information. As explained in that Request, PO indicated in the
`associated District Court litigation that it will attempt to swear behind the prior art
`at issue in this IPR. PO also indicated it will may on alleged priority date evidence
`including documents that are solely in PO’s and in third parties’ possession. Thus,
`if PO pursues this argument, then in the interests of justice, Petitioner must be able
`to explore and test PO’s claims and the evidence behind them.
`1
`
`
`
`
`
`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US-[034855.2014] (RE42,368)
`Petitioner’s List of Proposed Motions
`
`
`including such evidence in PO’s or third parties’ control; and/or (2) lack of
`
`indicia of non-obviousness). Some of this discovery is likely to involve
`
`third-party subpoenas to, e.g., the named inventors of the RE42,368 patent
`
`at issue. Again, such motion(s) would be contingent on the arguments PO
`
`makes.
`
`3. Motion for extension of the hearing date and/or Petitioner’s Opposition.
`
`This may be necessary to accommodate the time to issue and achieve
`
`compliance with subpoenas that may be required depending on PO’s
`
`priority date arguments.
`
`4. Motion to Seal (and for Protective Orders).
`
`5. Motion to Compel Testimony and/or Motion for Live Testimony at oral
`
`argument (contingent again on PO’s arguments).
`
`6. Motion for observations on cross-examination as provided for in the
`
`Scheduling Order.
`
`7. Motion to exclude evidence pursuant to 37 CFR § 42.64(c).
`
`8. Motion to enlarge trial to include grounds denied as redundant.
`
`
`
`2
`
`
`
`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US-[034855.2014] (RE42,368)
`Petitioner’s List of Proposed Motions
`
`
`9. Motion pursuant to 37 C.F.R. § 42.222 to join a newly filed petition to this
`
`instituted IPR (Petition to be filed before February 28, 2015).
`
`These proposed motions have been timely filed within one month of the date
`
`the trial was instituted, and at least two business days before any expected
`
`conference call with the Board.
`
`
`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
`
`
`
`3
`
`
`
`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US-[034855.2014] (RE42,368)
`Petitioner’s List of Proposed Motions
`
`
`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 Petitioner’s List
`
`of Proposed Motions for Inter Partes Review No. 2014-01166, was served
`
`electronically via email in its entirety on the following counsel of record for Patent
`
`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
`
`Owners:
`
`
`
`
`
`114253164 v5
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