Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 12
`Entered: March 6, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01166
`Patent RE42,368
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`ORDER
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 12
`Entered: March 6, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01166
`Patent RE42,368
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`ORDER
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2014-01166
`Patent RE42,368
`
`
`An initial conference call took place on March 5, 2015. The parties
`
`were represented by their respective counsel. Administrative Patent Judges
`
`Cocks, Deshpande, and Tartal participated.
`
`
`
`1. Petitioner’s Request for Authorization to File Motion to Submit
`Supplemental Information (Paper 10)
`
`Petitioner requested authorization to file a motion to submit
`
`supplemental information pursuant to 37 C.F.R. § 42.123(a). Petitioner
`
`identified the general nature of the information as (1) documents filed in the
`
`related district court proceeding, or referenced in those filings, and (2)
`
`“[e]xpected deposition testimony and documents of party and third-party
`
`witnesses.” Paper 10, 1–2. Patent Owner opposed the request for
`
`authorization to file a motion. Petitioner’s request concerning “expected”
`
`deposition testimony and documents was denied as premature and
`
`speculative because the information sought to be supplemented does not
`
`currently exist. Petitioners request for authorization to file a motion with
`
`respect to documents filed or referenced in district court proceedings is
`
`granted, as set forth in the Order below.
`
`2. Petitioner’s Request for Authorization to File a Motion for Additional
`Discovery
`
`Petitioner’s List of Proposed Motions includes a motion for additional
`
`discovery pursuant to 37 C.F.R. § 42.51(b)(2). Paper 11, 1–2. Petitioner
`
`states in its list of proposed motions that any motion for additional discovery
`
`“would be contingent on the arguments PO makes.” Id. at 2. During the
`
`March 5th teleconference, Petitioner stated it sought additional discovery at
`
`2
`
`
`
`IPR2014-01166
`Patent RE42,368
`
`this time concerning the priority date of the challenged patent, U.S. Patent
`
`No. RE42,368 (“the’368 patent”). Patent Owner opposed the request for
`
`various reasons, including that it was premature and speculative since Patent
`
`Owner had not yet taken a position in this proceeding on the priority date of
`
`the ’368 patent. Patent Owner’s Response to the Petition is not due until
`
`April 30, 2015.
`
`At this stage of the proceeding a request for additional discovery
`
`regarding the priority date of the ’368 patent is premature. Petitioner has no
`
`present knowledge of the positions Patent Owner will adopt in this
`
`proceeding, and, therefore, cannot conclusively anticipate what information
`
`may be in dispute or where additional, contrary information is most likely to
`
`be found. The proceeding is structured with the expectation that Petitioner
`
`will have an opportunity to pursue discovery regarding Patent Owner’s
`
`positions after Patent Owner has provided a Response to the Petition. In the
`
`absence of extraordinary circumstances, we are not persuaded that
`
`Petitioner’s request for additional discovery is warranted in this case at this
`
`time.
`
`We further remind the parties that rule 42.51(b)(2) provides that “[t]he
`
`parties may agree to additional discovery between themselves,” and
`
`encourage the parties to make every reasonable effort to resolve discovery
`
`disputes prior to raising the dispute with the Board. To the extent that a
`
`dispute arises between the parties relating to discovery, the parties shall meet
`
`and confer to resolve such a dispute before contacting the Board. If attempts
`
`to resolve the dispute fail, a party may request a conference call with the
`
`Board and the other party in order to seek authorization to move for relief.
`
`3
`
`
`
`IPR2014-01166
`Patent RE42,368
`
`In any request for a conference call with the Board to resolve a discovery
`
`dispute, the requesting party shall: (a) certify that it has conferred with the
`
`other party in an effort to resolve the dispute; (b) identify with specificity the
`
`issues for which agreement has not been reached; (c) identify the precise
`
`relief to be sought; and (d) propose specific dates and times at which both
`
`parties are available for the conference call.
`
`3. Other Proposed Motions
`
`
`
`Petitioner’s “List of Proposed Motions” (Paper 11) includes various
`
`other listed items, beyond those motions discussed above, and advanced
`
`generally as “proposed” in order “to preserve its right to file them.” Paper
`
`11, 1. During the conference call, Petitioner indicated that, at this time, it
`
`did not contemplate actively the filing of any of the additional “proposed”
`
`motions, and that they were essentially “place-holder” motions. It is not
`
`necessary to include such “place-holder” motions as a part of a proposed
`
`motions list, nor can a party “preserve” any rights in filing such motions.
`
`The parties are reminded that, except as otherwise provided in the
`
`Rules, Board authorization is required before filing a motion. 37 C.F.R.
`
`§ 42.20(b). A party seeking to file a motion should request a conference to
`
`obtain authorization to file the motion, with the exception of motions for
`
`which prior authorization is not practical (see Office Trial Practice Guide at
`
`77 Fed. Reg. at 48,762).
`
`4. Depositions
`
`With respect to depositions in this proceeding, the duration provided
`
`for under 37 C.F.R. § 42.53(c) applies to each separate inter partes review
`
`proceeding absent a stipulation among the parties. The parties are advised
`
`that the Testimony Guidelines appended to the Office Patent Trial Practice
`4
`
`
`
`IPR2014-01166
`Patent RE42,368
`
`Guide, 77 Fed. Reg. 48,756, 48,772 (Aug. 14, 2012) (Appendix D), apply to
`
`this proceeding. The Board may impose an appropriate sanction for failure
`
`to adhere to the Testimony Guidelines. 37 C.F.R. § 42.12. For example,
`
`reasonable expenses and attorneys’ fees incurred by any party may be levied
`
`on a person who impedes, delays, or frustrates the fair examination of a
`
`witness.
`
`Whenever a party submits a deposition transcript as an exhibit in this
`
`proceeding, the submitting party shall file the full transcript of the deposition
`
`rather than excerpts of only those portions being cited. After a deposition
`
`transcript has been submitted as an exhibit, all parties who subsequently cite
`
`to portions of the transcript shall cite to the first-filed exhibit rather than
`
`submitting another copy of the same transcript.
`
`
`
`
`In consideration of the foregoing, it is hereby:
`
`ORDER
`
`
`
`ORDERED that Petitioner’s Request for Authorization to File a
`
`Motion to Submit Supplemental Information (Paper 10) is GRANTED-IN-
`
`PART;
`
`
`
`FURTHER ORDERED that Petitioner is authorized to file a Motion
`
`to Submit Supplemental Information of no more than 10 pages no later than
`
`March 12, 2015, and shall address only the documents filed or referenced in
`
`district court proceedings identified in its request (Paper 10) as items 1–4;
`
`
`
`FURTHER ORDERED that Petitioner is not authorized to file a
`
`Motion to Submit Supplemental Information concerning expected deposition
`
`testimony and documents;
`
`5
`
`
`
`IPR2014-01166
`Patent RE42,368
`
`
`
`FURTHER ORDERED that Patent Owner is authorized to file an
`
`Opposition to Petitioner’s Motion to Submit Supplemental Information of no
`
`more than 10 pages no later than March 19, 2015,
`
`
`
`FURTHER ORDERED that no Reply to the Opposition to Petitioner’s
`
`Motion to Submit Supplemental Information is authorized; and,
`
`
`
`FURTHER ORDERED that Petitioner’s Request for Authorization to
`
`File a Motion for Additional Discovery is DENIED.
`
`
`
`
`
`
`
`
`6
`
`
`
`IPR2014-01166
`Patent RE42,368
`
`For PETITIONER:
`
`Wayne O. Stacy
`Matthew J. Leary
`COOLEY LLP
`wstacy@cooley.com
`CapellaCisco@cooley.com
`
`For PATENT OWNER:
`
`Robert Greene Sterne
`Jon E. Wright
`Jason D. Eisenberg
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rsterne-PTAB@skgf.com
`jwright-PTAB@skgf.com
`jasone-PTAB@skgf.com
`
`
`7
`
`
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