UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CISCO SYSTEMS, INC.
`Petitioner
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`v.
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`CAPELLA PHOTONICS, INC.
`Patent Owner
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`____________________
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`Case IPR2014-01166
`Patent RE42,368
`____________________
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`SUBMIT SUPPLEMENTAL INFORMATION
`
`Submitted by: /Jason D. Eisenberg/
`Jason D. Eisenberg, Reg. No. 43,447
`March 19, 2015
`Attorney for Patent Owner
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`
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`CISCO SYSTEMS, INC.
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`____________________
`
`Case IPR2014-01166
`Patent RE42,368
`____________________
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`SUBMIT SUPPLEMENTAL INFORMATION
`
`Submitted by: /Jason D. Eisenberg/
`Jason D. Eisenberg, Reg. No. 43,447
`March 19, 2015
`Attorney for Patent Owner
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
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`IPR2014-01166; U.S. Pat. No. RE42,368
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`
`Table of Contents
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`
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`INTRODUCTION ........................................................................................... 1
`
`ARGUMENT ................................................................................................... 1
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`A.
`
`B.
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`C.
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`D.
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`E.
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`Legal Standard ....................................................................................... 1
`
`The Board Should Deny Petitioner’s Request to Submit Supplemental
`Information as Improper ........................................................................ 3
`
`1.
`
`2.
`
`3.
`
`Petitioner should not be allowed to submit supplemental
`materials that anticipate only a potential challenge ................... 3
`
`The Patent Owner’s claim construction positions in the district
`court litigation is not relevant to the instant inter partes review 4
`
`The Patent Owner’s infringement contentions are neither
`relevant to nor proper in the instant inter partes review ............ 5
`
`Petitioner’s Motion Contains Improper Attorney Argument ................ 6
`
`Information Petitioner Seeks to Submit is Confidential and Covered
`Under a Protective Order ....................................................................... 7
`
`The Supplemental Information Petitioner Seeks to Submit is
`Voluminous and Not Narrowly Tailored .............................................. 8
`
`I.
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`II.
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`III. RELIEF REQUESTED ................................................................................. 10
`
`CERTIFICATION OF SERVICE............................................................................ 11
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`- i -
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`IPR2014-01166; U.S. Pat. No. RE42,368
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`
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`Table of Authorities
`
`Cases
`Greene’s Energy Group, LLC v. Oil States Energy Services, LLC,
`IPR2014-00216, Paper No. 15 (P.T.A.B., July 1, 2014) ................................. 2
`
`In re Baxter Travenol Labs,
`952 F.2d 388 (Fed. Cir. 1991) ......................................................................... 6
`
`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) ......................................................................... 5
`
`Medtronic, Inc. v. Endotach LLC,
`IPR2014-00100, Paper No. 18 (P.T.A.B., April 21, 2014) .................... 1, 3, 4
`
`Mentor Graphics Corp. v. Synopsys, Inc.,
`IPR2014-00287, Paper No. 17 (P.T.A.B., August 1, 2014) ................... 2, 4, 5
`
`SAP America, Inc. v. Pi-Net Int’l, Inc.,
`IPR2013-00194, Paper No. 24 (P.T.A.B., October 17, 2013) ......................... 2
`
`Sony Corp. v. Tessera, Inc.,
`IPR2012-00033, Paper No. 13 (P.T.A.B., January 22, 2013) ......................... 6
`
`Target Corp. v. Destination Maternity Corp., IPR2013-00530, Paper No.
`13 (P.T.A.B., February 14, 2014) .................................................................... 6
`
`Wireless Seismic, Inc. v. Fairfield Indus., Inc.,
`IPR2014-01113, Paper No. 8 (P.T.A.B., October 28, 2014) ........................... 6
`
`Rules
`
`Patent Local Rule 2-2 (N.D. Cal., Nov. 1, 2014)....................................................... 8
`
`Regulations
`
`37 C.F.R. § 42.100(b) ................................................................................................ 5
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`37 C.F.R. § 42.123(a) ...................................................................................... 1, 4, 10
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`37 C.F.R. § 42.23(b) .................................................................................................. 3
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`- ii -
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`IPR2014-01166; U.S. Pat. No. RE42,368
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`Ex. No.
`2001
`
`2002
`
`Exhibit List
`
`
`Description
`Provisional Patent Application No. 60/267,285
`Transcript of Patent Trial and Appeal Board Teleconference in Case
`IPR2014-01166, Thursday, March 5, 2015
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`- iii -
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`IPR2014-01166; U.S. Pat. No. RE42,368
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`I.
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`
`INTRODUCTION
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`The Board should deny Petitioner’s Motion to Submit Supplemental
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`Information Under 37 C.F.R. § 42.123(a) regarding priority dates and claim
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`construction, including the Patent Owner’s proposed claim constructions and
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`infringement contentions. Petitioner’s request is improper, premised on a guess as
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`to what the Patent Owner may argue in future proceedings. Petitioner’s request
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`contains improper attorney argument responding to the Patent Owner’s preliminary
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`response. Petitioner’s request is overly broad because Petitioner requests
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`submission of nearly 500 pages of material. And finally, Petitioner’s request fails
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`to address the confidentiality of the materials covered under the terms of a strict
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`protective order in the concurrent district court litigation. Given that the Petitioner
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`has failed to overcome preliminary obstacles to its motion, let alone meet its
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`burden for submission of supplemental information, the Patent Owner respectfully
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`requests that the Board deny Petitioner’s Motion to Submit Supplemental
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`Information Under 37 C.F.R. § 42.123(a).
`
`II. ARGUMENT
`A. Legal Standard
`“[S]ubmitting supplement information under 37 C.F.R. § 42.123(a) as a
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`
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`vehicle to respond to a possible position that another party may take in the future is
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`improper.” Medtronic, Inc. v. Endotach LLC, IPR2014-00100, p. 4 (Paper No. 18,
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`Apr. 21, 2014); see also, Mentor Graphics Corp. v. Synopsys, Inc., IPR2014-
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`IPR2014-01166; U.S. Pat. No. RE42,368
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`00287, Order, pp. 3-4 (Paper No. 17, Aug. 1, 2014) (denying authorization for a
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`petitioner to file a motion to submit district court infringement contentions because
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`the patent owner had not yet filed a response); Greene’s Energy Group, LLC v. Oil
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`States Energy Services, LLC, IPR2014-00216, Initial Conference Summary, pp. 3-
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`4 (Paper No. 15, July 1, 2014) (denying authorization for a petitioner to file a
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`motion to submit supplemental information directed to a reference’s publication
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`date because the patent owner had not yet filed a response); see also SAP America,
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`Inc. v. Pi-Net Int’l, Inc., IPR2013-00194, Initial Conference Summary and Order,
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`p. 4 (Paper No. 24, Oct. 17, 2013) (denying authorization for a patent owner to
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`submit a motion to submit supplemental information to swear behind a reference
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`because the patent owner could raise the issue in its patent owner response).1
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`
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`Instead of introducing evidence through a motion to submit supplemental
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`information, the Board has previously held that a petitioner may bring additional
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`evidence to the Board’s attention in its reply, provided the evidence is responsive
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`1 The following Board decisions offer additional support for denial of the
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`instant motion as premature: Macronix Int’l Co. v. Spansion LLC, IPR2014-00104,
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`Order, pp. 3-4 (Paper No. 18, July 1, 2014); Wireless Seismic, Inc. v. Fairfield
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`Indus., Inc., IPR2014-01113, Order (Paper No. 8, Oct. 28, 2014); Sony Corp. v.
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`Yissum Research Dev’t Co., IPR2013-00218, Order, p. 2 (Paper No. 28, Nov. 22,
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`2013).
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`- 2 -
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`IPR2014-01166; U.S. Pat. No. RE42,368
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`to an argument made in a patent owner response. See Medtronic, IPR2014-00100
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`at 4. As the Board explained in Medtronic:
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`Petitioner will have an opportunity to respond to a Patent Owner
`Response in a Reply. Such a Reply, however, may respond only to
`arguments raised in the Patent Owner Response. 37 C.F.R. § 42.23(b).
`The Reply may cite new evidence, such as declarations, references,
`and other documents, as long as that evidence responds to Patent
`Owner’s arguments and is relevant to the grounds as instituted.
`
`Id.
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`B.
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`The Board Should Deny Petitioner’s Request to Submit
`Supplemental Information as Improper
`1.
`
` Petitioner should not be allowed to submit supplemental
`materials that anticipate only a potential challenge
`
`Petitioner acknowledges that the Patent Owner might not contest Smith’s
`
`prior art status in its response, and, as such, Petitioner implicitly admits that its
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`motion to submit supplemental information directed to Smith’s priority status is
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`improper. In Medtronic, Inc. v. Endotach LLC, just as the Petitioner has done
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`here,2 “Counsel for Petitioner confirmed that Petitioner wished to file such
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`2 For example, with regard to the interrogatory responses and documents that
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`Petitioner seeks to submit, Petitioner argues that “[t]he PO already challenged
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`Smith’s priority status in its Preliminary Response,” and as a result, “Petitioner
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`should be able to submit evidence now to anticipate this challenge [because]
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`IPR2014-01166; U.S. Pat. No. RE42,368
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`documents to preemptively address positions that Patent Owner may take in its
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`Patent Owner response regarding claim construction and patentability.” IPR20014-
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`00100 at 4 (Paper No. 18, Apr. 21, 2014) (emphasis added). And in Medtronic,
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`“[t]he Board explained that submitting supplemental information under 37 C.F.R. §
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`42.123(a) as a vehicle to respond to a possible position that another party may take
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`in the future is improper. ” Id. Because Petitioner admits only to facing a potential
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`challenge, the Board should deny Petitioner’s motion.
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`2.
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`The Patent Owner’s claim construction positions in the
`district court litigation is not relevant to the instant inter
`partes review
`
`The Patent Owner’s claim construction positions in district court are not
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`relevant to the instant inter partes review. In Mentor Graphics Corp. v. Synopsys,
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`Inc., the Board stated that “[a]lthough a district court’s construction may be
`
`informative, . . . the preliminary infringement contentions are too tenuous to be
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`relevant to the Board’s application of the broadest reasonable construction
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`standard.” IPR2014-00287, Order, p. 3 (Paper No. 17, Aug. 1, 2014). The Board
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`went on to state, “It is not uncommon for a patent owner to change their scope of
`
`claim interpretation during district court litigation, or take one position on claim
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`Petitioner faces at least a potential challenge to the prior art status of the Smith
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`Patent.” (Motion, Paper No. 13 at p. 4.) Petitioner also contends that “the prior-art
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`status of Smith is likely to be an important issue.” (Id. at 5.)
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`IPR2014-01166; U.S. Pat. No. RE42,368
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`scope before the Patent Office, because the Board applies the broadest reasonable
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`construction, which may not be the same standard adopted by the district court.”
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`Id. (citing 37 C.F.R. § 42.100(b)). The same reasoning applies here. The claim
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`construction material the Petitioner requests to submit is only preliminary claim
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`construction material filed in the district court case as part of the meet and confer
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`process employed by the Northern District of California. The parties did not reach
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`the Markman hearing, and no party filed a Markman brief. Accordingly, the Board
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`should deny Petitioner’s motion with respect to documents related to the Patent
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`Owner’s district court claim construction positions.
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`Furthermore, the only case cited by Petitioner to support its proposition, In
`
`re Zletz, is easily distinguishable from the present case. In re Zletz is an old Federal
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`Circuit decision from an ex parte appeal where the Federal Circuit determined that
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`the Board erred when using the district court claim construction standard. 893 F.2d
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`319, 321 (Fed. Cir. 1989). Therefore, In re Zletz is not persuasive to the present
`
`case.
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`3.
`
`The Patent Owner’s infringement contentions are neither
`relevant to nor proper in the instant inter partes review
`
`The Patent Owner’s infringement contentions are not relevant to the instant
`
`inter partes review. The Board need not review a patent owner’s infringement
`
`contentions to try to glean a claim construction from them. See Target Corp. v.
`
`Destination Maternity Corp., IPR2013-00530, Decision, p. 6 (Paper No. 13, Feb.
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`- 5 -
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`IPR2014-01166; U.S. Pat. No. RE42,368
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`14, 2014) (“Petitioner requests that we review the Patent Owner’s district court
`
`infringement contentions claim chart, . . . the claim constructions implicit therein,
`
`and apply those constructions here . . . . We decline to do so.”). At best, the Patent
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`Owner’s infringement contentions are only extrinsic evidence of the proper
`
`meaning of the claims. See Sensio, Inc. v. Select Brands, Inc., IPR2013-00580, p. 7
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`(Paper No. 6, Feb. 11, 2014) (holding that demand letters would be at best extrinsic
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`evidence). And extrinsic evidence may not be relied on to contradict an otherwise
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`ambiguous claim. Id. (citing In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed.
`
`Cir. 1991).
`
`Furthermore, the only case cited by the Petitioner, Sony Corp. v. Tessera,
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`Inc., is substantively and procedurally distinguishable because Sony involved an
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`unopposed request to submit supplemental information before institution. See Sony
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`Corp. v. Tessera, Inc., IPR2012-00033, Order, p. 2 (Paper No. 13, Jan. 22, 2013).
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`Petitioner’s Motion Contains Improper Attorney Argument
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`C.
`Petitioners have no right to respond to the Patent Owner Preliminary
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`Response because the Board’s procedures for inter partes review do not provide
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`for a reply to address content in the Patent Owner Preliminary Response. See, e.g.,
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`Wireless Seismic, Inc. v. Fairfield Indus., Inc., IPR2014-01113, Order, p. 2 (Paper
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`No. 8, Oct. 28, 2014). As Judge Tartal directed during the March 5, 2015
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`teleconference with the Board, “[Petitioner’s motion to submit supplemental
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`IPR2014-01166; U.S. Pat. No. RE42,368
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`information] should be narrowly tailored to the information in [the] documents.”
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`(Ex. 2002, Mar. 5, 2015 Telecon. Tr., p. 14, ll. 19-21.) Petitioner’s motion,
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`however, is replete with attorney argument and, as such, is an improper attempt to
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`challenge arguments made in the Patent Owner Preliminary Response. (See, e.g.,
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`Motion, Paper No. 13 at pp. 6-8 (re-arguing claim construction).) Attorney
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`argument within the motion to submit supplemental information is improper and
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`should be ignored by the Board.
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`D.
`
`Information Petitioner Seeks to Submit is Confidential and
`Covered Under a Protective Order
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`The Board should also deny Petitioner’s motion because much of the
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`supplemental information Petitioner seeks to submit is confidential,3 was produced
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`in the concurrent district court proceeding under a protective order,4 and Petitioner
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`failed to address any confidentiality issues in its motion.
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`3 As an example, documents bearing bates range Capella 000640–000735,
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`cited in the Patent Owner’s Supplemental Response to Interrogatory No. 3 and
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`requested by Petitioner, were produced with a “Confidential” designation and are
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`covered by the parties’ protective order.
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`4 For patent cases, Patent Local Rule 2-2 provides that the "Protective Order
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`authorized by the Northern District of California shall govern discovery unless the
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`- 7 -
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`IPR2014-01166; U.S. Pat. No. RE42,368
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`Because the Patent Owner designated this information as confidential,
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`Petitioner cannot submit the evidence in this proceeding. See Interim Model Patent
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`Protective Order Revised, http://www.cand.uscourts.gov/model-protective-orders,
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`Section 7.2 (last revision Aug. 20, 2014) (Confidential information may not be
`
`disclosed, “unless otherwise ordered by the court or permitted in writing by the
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`Designating Party” to anyone other than those listed in Section 7.2.). Indeed,
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`during the March 5, 2015 teleconference with the Board, Petitioner admitted that it
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`is not able to submit this information even under seal due to the district court
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`protective order. (Ex. 2002, Mar. 5, 2015 Telecon. Tr., p. 8, ll. 5-7.) Because much
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`of the information sought by the Petitioner is confidential, covered under the
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`protective order, and Petitioner failed to address this issue in its motion, the Board
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`should not allow Petitioner to submit the requested supplemental information.
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`E.
`
`The Supplemental Information Petitioner Seeks to Submit is
`Voluminous and Not Narrowly Tailored
`
`Even if Petitioner’s request is somehow not improper, Petitioner has done
`
`little to narrow or limit the information it seeks to submit. Petitioner, by its motion,
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`hopes to do nothing more than needlessly pad the record by seeking to submit a
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`voluminous set of documents, thus, placing an undue and unnecessary burden on
`
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`Court enters a different protective order." Patent Local Rule 2-2 (N.D. Cal., Nov.
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`1, 2014).
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`IPR2014-01166; U.S. Pat. No. RE42,368
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`the Board. The supplemental information Petitioner seeks to submit comprises
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`nearly 500 pages of material. This material is summarized as follows:
`
` Confidential interrogatory responses totaling 22 pages in relevant part.
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`(Motion, Paper No. 13 at p. 1.)
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` 5 sets of confidential documents identified in the Patent Owner’s
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`interrogatory response plus an unidentified “handful of additional
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`documents,” totaling at least 220 pages.5 (See id.)
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` Joint claim construction and the prehearing statement from the related
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`district court litigation totaling 100 pages. (Id.)
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` The Patent Owner’s infringement contentions totaling 138 pages. (Id.
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`at 2.)
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`Given that Petitioner requests nearly 500 pages of material that would
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`burden the Board, Petitioner’s motion should be denied.
`
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`5 Petitioner failed to specifically identify the “handful of additional
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`documents” it seeks to submit or to provide a total page count for the “only 5 sets
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`of documents” allegedly identified in the Patent Owner’s interrogatory responses.
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`(See Motion, Paper No. 13, p. 1.)
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`- 9 -
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`IPR2014-01166; U.S. Pat. No. RE42,368
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`III. RELIEF REQUESTED
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`Petitioner’s motion to submit supplemental information is improper under 37
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`C.F.R. § 42.123(a). The supplemental information Petitioner seeks to submit is
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`certainly not relevant now—and, in fact, may never be relevant to these
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`proceedings—because the Patent Owner has not yet submitted its response.
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`Moreover, Petitioner will have the opportunity to respond to the actual arguments
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`made by the Patent Owner in a Reply to a Patent Owner Response, should the
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`opportunity arise. Thus, for the reasons discussed, the Patent Owner respectfully
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`requests that the Board deny Petitioner’s Motion to Submit Supplemental
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`Information Under 37 C.F.R. § 42.123(a).
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`IPR2014-01166; U.S. Pat. No. RE42,368
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`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`OPPOSITION TO PETITIONER’S MOTION TO SUBMIT
`
`SUPPLEMENTAL INFORMATION and Exhibit 2002 were served via email on
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`March 19, 2015, in their entirety on the following:
`
`
`
`
`Lead Counsel
`
`Wayne O. Stacy
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, CO 80021
`wstacy@cooley.com
`
`
`
`
`
`Back-up Counsel
`
`Matthew J. Leary
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, CO 80021
`CapellaCisco@cooley.com
`
`
`Respectfully submitted,
`/Jason D. Eisenberg/
`Jason D. Eisenberg, Registration No. 43,447
`Attorney for the Patent Owner
`
`
`Date: March 19, 2015
`
`1100 New York Avenue, N.W.
`Washington, D.C.20005
`(202) 371-2600
`
`
`
`
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`- 11 -
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