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 Motion to Submit Supplemental Information Under 37 C.F.R. §
`42.123(a)
`
`
`
`
`
`
`
`
`
`
`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 Motion to Submit Supplemental Information Under 37 C.F.R. §
`42.123(a)
`
`
`
`
`
`
`
`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US [034855-2014] (RE42,368)
`Petitioner’s Motion to Submit Supplemental Information
`
`TABLE OF CONTENTS
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`
`Page
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`
`I.
`
`INTRODUCTION AND IDENTIFICATION OF REQUESTED
`EVIDENCE FOR SUBMISSION .................................................................. 1
`STATEMENT OF FACTS ............................................................................. 2
`II.
`III. ARGUMENT .................................................................................................. 3
`A.
`This Motion is procedurally proper ...................................................... 3
`B.
`Petitioner should be allowed to submit information regarding
`priority dates ......................................................................................... 3
`Petitioner should be allowed to submit information regarding
`claim construction ................................................................................ 6
`1.
`Patent Owner’s proposed claim constructions ........................... 6
`2.
`Patent Owner’s infringement contentions .................................. 7
`IV. CONCLUSION ............................................................................................... 8
`
`C.
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`
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`
`
`i
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`
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`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US [034855-2014] (RE42,368)
`Petitioner’s Motion to Submit Supplemental Information
`
`I.
`
`INTRODUCTION AND IDENTIFICATION OF REQUESTED EVIDENCE FOR
`SUBMISSION
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`Petitioner Cisco Systems, Inc., moves
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`to submit
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`the supplemental
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`information identified below, all of which is relevant to a claim for which the
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`IPR2014-01166 trial1 has been instituted.
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`1. Patent Owner’s (PO’s) interrogatory responses and documents on
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`alleged conception, diligence and reduction to practice. PO served its
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`responses and documents in the related District Court litigation, Capella
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`Photonics, Inc. v. Cisco Systems, Inc., Case Nos. 3:14-cv-03348, -3349, -
`
`3350, -3351-EMC (N.D. Cal., 2014) (the “Related Litigation”).2 The
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`interrogatory responses cover 22 pages in relevant part. The PO identified
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`only 5 sets of documents in its interrogatory responses, and separately
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`produced only a handful of additional documents on these issues.
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`2. The parties’ Joint Claim Construction and Prehearing Statement in the
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`Related Litigation (the “Joint Claim Construction”). (D.I. 151; 100 pages.)
`
`
`1 The issues presented in this Motion are identical to those in co-pending IPR2014-
`01276. Thus, for efficiency, Petitioner requests that the Board consider whether
`the evidence requested for submission here may also be submitted in IPR2014-
`01276.
`2 Petitioner cites to, but does not submit copies of the various exhibits it moves to
`submit. The Board requested that “the information [Petitioners] seek to submit
`should not be included as an exhibit” in this Motion. (Rough Tr. of March 5, 2015,
`Initial Conference with the Board for IPR2014-01166 (“Initial Conf. Tr.”).)
`1
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`
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`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US [034855-2014] (RE42,368)
`Petitioner’s Motion to Submit Supplemental Information
`
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`3. PO’s infringement contentions in the Related Litigation. PO’s
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`contentions consist of a cover pleading and two appendices, together totaling
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`138 pages.
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`II.
`STATEMENT OF FACTS
`1. The information Petitioner proposes to submit, above, was either not
`
`available when the ‘368 Petition was filed, or—in the case of PO’s
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`infringement contentions—was not relevant to this IPR at the time the IPR
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`was filed. For example, when PO served its infringement contentions, the
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`PO had not yet raised its argument regarding the “continuous” claim term to
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`which the infringement contentions are relevant.
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`2. The earliest provisional patent application to which U.S. Patent No.
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`6,798,941 (the “Smith Patent”) claims priority was filed September 22,
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`2000. In the Related Litigation, the PO claims that the ‘368 patent on which
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`the Board instituted this IPR is entitled to an August 31, 2000, priority date.
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`(Jan. 16, 2015, Capella Supplemental Response to Interrogatory No. 3
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`(“Capella currently contends that each claim of the patents in suit was
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`conceived at least by August 31, 2000”) (“Interrogatory Response”).)
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`2
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`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US [034855-2014] (RE42,368)
`Petitioner’s Motion to Submit Supplemental Information
`
`III. ARGUMENT
`Petitioner moves to submit two categories of supplemental information
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`related to (1) conception, diligence, and reduction to practice; and (2) claim
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`construction. Petitioner first addresses the procedural propriety of this motion, and
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`then addresses the reasons for submitting each category of information.
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`A. This Motion is procedurally proper
`37 C.F.R. § 42.123(a) provides that a motion to submit supplemental
`
`information is proper if (1) a request to file such a motion has been filed within one
`
`month of the date of institution of a trial; and (2) the supplemental information is
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`relevant to a claim for which a trial has been instituted. See 37 C.F.R. § 42.223(a).
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`Petitioner timely filed its request to submit this motion on February 26, 2015.
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`(Paper 10.) The Board granted that Request. (Paper 12.) As discussed below, each
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`of the requested pieces of supplemental information is relevant to, e.g., claim 1 of
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`U.S. Patent RE42,368, as each is relevant to at least one element of that claim.
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`B.
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`Petitioner should be allowed to submit information regarding
`priority dates
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`The Board should allow the Petitioner to submit evidence supporting the
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`prior-art status of the Smith Patent. The reasons for submitting this evidence are
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`summarized here and discussed in detail next. First, this evidence is relevant to the
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`PO’s claim in the District Court that the ‘368 patent deserves an earlier priority
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`3
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`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US [034855-2014] (RE42,368)
`Petitioner’s Motion to Submit Supplemental Information
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`date than that of the Smith Patent on which Petitioner’s IPR relies. The PO demurs
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`that it has not yet decided whether to re-raise that issue in this proceeding. (Trial
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`Conf. Tr. at 16.) However, Petitioner should be able to submit evidence now to
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`anticipate this challenge, especially given the potential importance of the issue and
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`the fact that PO has not disavowed raising it. Second, this motion is not premature.
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`The Board’s rules required Petitioner to request submission of supplemental
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`information within one month of institution (37 CFR § 42.123), and Petitioner was
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`ordered to so move by March 12. (Mar. 6, 2015 Order, Paper 12 at 5.) Third, the
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`evidence Petitioner seeks to submit consists of a small number of documents that
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`will not unduly burden the PO or this proceeding.
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`First, there is no question that Petitioner faces at least a potential challenge
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`to the prior art status of the Smith Patent and that the information Petitioner seeks
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`to submit is relevant to that challenge. The PO already challenged Smith’s priority
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`status in its Preliminary Response, though under a different, § 112-based theory.
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`(See, e.g., Paper No. 124, at 1.) In the now-stayed Related Litigation, PO claimed
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`that the ‘368 patent is entitled to a priority date several weeks earlier than Smith’s
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`date—August 31, 2000. (§ II, above.) PO has reserved its ability to bring this same
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`argument in this proceeding. (Trial Conf. Tr. at 16.) PO’s marquee argument
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`against a stay in the Related Litigation was that the IPRs would ultimately fail
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`4
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`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US [034855-2014] (RE42,368)
`Petitioner’s Motion to Submit Supplemental Information
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`because the Smith Patent was not prior art. (Related Litigation, D.I. 124 at 1.) PO
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`also produced documents in the District Court that it alleged show a pre-Smith
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`priority date for the ‘368 patent. (Capella Interrogatory Response No. 3.) Given
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`those representations, the prior-art status of Smith is likely to be an important
`
`issue.
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`The information from the Related Litigation is presumably the most relevant
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`evidence that the PO has on the priority date issue. Patent Local Rule 3-2(b)
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`required the PO to submit any priority-date information that PO planned to rely
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`upon. Under the Federal Rules, the interrogatories in the Related Litigation also
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`required the PO to explain and identify all of its priority-date evidence.
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`Presumably, PO answered fully and did not withhold any evidence.
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`Second, this Motion is not premature. The PTAB’s rules required Petitioner
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`to file its request for authorization within one month of institution, and the Board
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`ordered this motion be filed by March 12, 2015.
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`Finally, there is no potential harm from allowing Petitioner to begin the
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`process of submitting its requested evidence now. The PO’s interrogatory
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`response is a single document, and the response references only a handful of other
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`documents. It will require no real effort and work no prejudice on PO to produce
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`these documents for submission.
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`5
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`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US [034855-2014] (RE42,368)
`Petitioner’s Motion to Submit Supplemental Information
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`C.
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`Petitioner should be allowed to submit information regarding
`claim construction
`
`For the reasons discussed below, Petitioner should be allowed to submit the
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`PO’s claim constructions and infringement contentions from the District Court.
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`Patent Owner’s proposed claim constructions
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`1.
`The claim construction positions that PO takes in this proceeding are far
`
`different from those it has taken in the Related Litigation. In the Related
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`Litigation, PO served over 100 pages of proposed claim constructions and
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`allegedly-supporting evidence. This information constitutes admissions by the PO
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`on how it believes the claims should be construed and the evidence that is relevant
`
`to those constructions. These admissions are relevant to how those elements
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`should be interpreted in these proceedings. See In re Zletz, 893 F.2d 319, 321 (Fed.
`
`Cir. 1989) (“When the applicant states the meaning that the claim terms are
`
`intended to have, the claims are examined with that meaning, in order to achieve a
`
`complete exploration of the applicant’s invention and its relation to the prior art.”)
`
`The PO’s claim construction positions in the District Court are far broader
`
`and/or very different than those it takes in this proceeding. For example, in PO’s
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`preliminary IPR response, the PO indicated that mirrors that are “controllable” in
`
`two dimensions must be ‘rotatable.’ (Paper 7 at 3 (“the ’683 provisional does not,
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`itself, disclose…such two-dimensional rotation”).) But in the Related Litigation,
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`
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`6
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`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US [034855-2014] (RE42,368)
`Petitioner’s Motion to Submit Supplemental Information
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`PO claimed that if the parties disagreed on the term, the term should simply mean
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`“controllable in two dimensions (e.g., x and y dimensions).” (Joint Claim
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`Construction at B-6; emphasis original.) In this IPR, PO argued that the term “to
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`control the power of the spectral channel reflected to the said selected port” had a
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`specific, narrow, technical meaning. That meaning is that the “control” must
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`allegedly “rely on angular displacement of the beam in relation to the output port.”
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`(Paper 7 at 11-12.) In the Related Litigation, however, PO claimed that the term
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`should have its “plain and ordinary meaning.” (Joint Claim Construction at A-1.)
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`The joint construction statement is also highly relevant because the PO
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`included with its constructions citations to various pieces of extrinsic evidence that
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`the PO said were relevant to the proper construction of those terms. That evidence
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`included patents and text books. The Petitioner and the Board should be able to
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`make reference to these alleged sources of evidence to inform any remaining
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`construction issues in this proceeding.
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`Patent Owner’s infringement contentions
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`2.
`Petitioner should be allowed to submit the PO’s infringement contentions
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`from the Related Litigation for the same reasons as provided above for Patent
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`Owner’s claim construction positions. The Board has previously allowed
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`submission of such contentions to show inconsistencies. (See IPR2012-00033,
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`
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`7
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`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US [034855-2014] (RE42,368)
`Petitioner’s Motion to Submit Supplemental Information
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`Paper 13 at 2-3 (allowing submission should the Board institute trial).) Like the
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`PO’s constructions, these contentions are indicative of the structures and processes
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`that the PO says are covered by the various claim elements of the petitioned claims
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`in this IPR. For example, in its preliminary responses, PO attempted to distinguish
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`the Smith Patent because it allegedly teaches only “step-wise control.” (Paper 7 at
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`45.)
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` However, PO’s
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`infringement contentions accuse devices
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`that PO
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`characterized as having step-wise control. (PO Infringement Contentions,
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`Appendix A at 14.) Specifically, PO pointed to accused “channel micromirrors”
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`that allegedly support “degree-8 reconfigurability” in which the light beams can be
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`angled (or stepped) to route light in 7 different directions. (Id.)
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`IV. CONCLUSION
`For the above reasons, Petitioner moves to submit the supplemental
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`information identified in Section, I, above. To facilitate the prompt submission of
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`this material, Petitioner also asks for the Board’s assistance in directing the Patent
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`Owner to reproduce the requested priority date documents in a form that will allow
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`Petitioner to submit that evidence before the Board.
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`Given that the issues in this Motion are also relevant to the co-pending
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`IPR2014-01276, Petitioner would appreciate the Board’s guidance on whether the
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`Board’s decision in this IPR can also be binding on IPR2014-01276.
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`8
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`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US [034855-2014] (RE42,368)
`Petitioner’s Motion to Submit Supplemental Information
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`Dated: March 12, 2015
`
`COOLEY LLP
`ATTN: Wayne O. Stacy
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (720) 566-4000
`Fax: (202) 842-7899
`
`
`
`Respectfully submitted,
`COOLEY LLP
`
`/ Matthew J. Leary /
`Matthew J. Leary
`Reg. No. 58,593
`Back-up Counsel
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`By:
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`9
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`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US [034855-2014] (RE42,368)
`Petitioner’s Motion to Submit Supplemental Information
`
`
`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies that on
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`March 12, 2015, a complete and entire electronic copy of this Motion to Submit
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`Supplemental Information Under 37 C.F.R. § 42.123(a), No. 2014-01166, was
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`served electronically via email in its entirety on the following counsel of record for
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`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
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