Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 46
`Entered: June 28, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`CISCO SYSTEMS, INC., CIENA CORPORATION,
`CORIANT OPERATIONS, INC., CORIANT (USA) INC., and
`FUJITSU NETWORK COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-011661
`Patent RE42,368
`____________
`
`
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`1 IPR2015-00816 was joined with IPR2014-01166 on September 4, 2015, by
`Order in IPR2015-00816, Paper 12 (IPR2014-01166, Paper 26).
`
`

`
`IPR2014-01166
`Patent RE42,368
`
`
`INTRODUCTION
`I.
`In the Final Written Decision concerning U.S. Patent No. RE42,368
`(“the ’368 patent”), we determined Petitioner Cisco Systems, Inc., Ciena
`Corporation, Coriant Operations, Inc., Coriant (USA) Inc., and Fujitsu
`Network Communications, Inc., had shown by a preponderance of the
`evidence that, under 35 U.S.C. § 103(a), claims 1–6, 9–11, 13, and 15–22
`would have been obvious over Bouevitch,2 Smith,3 and Lin;4 and, claim 12
`would have been obvious over Bouevitch, Smith, Lin, and Dueck.5 (Paper
`44, “Final Decision” or “Dec.”). Patent Owner, Capella Photonics, Inc.,
`requests rehearing of the Final Written Decision. Paper 45 (“Request” or
`“Req. Reh’g.”). For the reasons discussed below, Patent Owner’s Request is
`denied.
`
`II. DISCUSSION
`“When rehearing a decision on petition, a panel will review the
`decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). The requirements
`for a request for rehearing are set forth in 37 C.F.R. § 42.71(d), which
`provides in relevant part:
`A party dissatisfied with a decision may file a request for
`rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify all matters the party believes the Board misapprehended
`
`
`2 U.S. Patent No. 6,498,872 B2, issued December 24, 2002 (Ex. 1003,
`“Bouevitch”)
`3 U.S. Patent No. 6,798,941 B2, issued September 28, 2004 (Ex. 1004,
`“Smith”).
`4 U.S. Patent No. 5,661,591, issued August 26, 1997 (Ex. 1010, “Lin”)
`5 U.S. Patent No. 6,011,884, issued January 4, 2000 (Ex. 1021, “Dueck”)
`2
`
`

`
`IPR2014-01166
`Patent RE42,368
`
`
`or overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.
`Patent Owner’s Contention that Bouevitch Teaches Away from
`A.
`Misalignment to Control Power
`In its Request, Patent Owner first argues that “the facts prove that
`Bouevitch teaches away from misalignment and angular displacement to
`control power.” Req. Reh’g. 2. We are not persuaded that we
`misapprehended or overlooked this argument. The Final Decision states:
`As explained by Dr. Marom, Bouevitch discloses the use of
`variable attenuation for power control, and a person of ordinary
`skill in the art would understand that the necessary level of
`control required to balance the optical power differentials among
`the wavelength channels is achieved in Bouevitch with
`continuous control over the mirror tilt via analog voltage control.
`See Ex. 1028 ¶ 58, see also Ex. 1003, 7:35–37 (“The degree of
`attenuation is based on the degree of deflection provided by the
`reflector (i.e., the angle of reflection).”
`Dec. 23. Patent Owner’s “teaching away” argument was further addressed
`at length in the Final Decision:
`Next, Patent Owner argues that a person of ordinary skill in the
`art would not have been motivated to combine Smith’s tiltable
`mirrors with Bouevitch because it would disrupt Bouevitch’s
`explicit
`teaching of parallel alignment,” and “Bouevitch
`discourages, if not teaches away from, misalignment to control
`power.” PO Resp. 26–30. “The prior art’s mere disclosure of
`more than one alternative does not constitute a teaching away
`from any of these alternatives because such disclosure does not
`criticize, discredit, or otherwise discourage the solution claimed
`in the … application.” In re Fulton, 391 F.3d 1195, 1201 (Fed.
`Cir. 2004). While Bouevitch discusses how angular displacement
`is disadvantageous in certain respects (see Ex. [1003], 2:1–7), we
`are not persuaded such discussion is sufficient to constitute a
`teaching away.
` To
`the contrary, Petitioner has shown
`persuasively that Bouevitch uses angular misalignment to control
`3
`
`

`
`IPR2014-01166
`Patent RE42,368
`
`
`power in at least some embodiments of Bouevitch. Pet. Reply 3–
`5; see also Ex. 1028 ¶ 71.
`Dec. 32. Patent Owner directs us to no additional expert testimony in
`support of its argument that we overlooked, and cites no testimony from its
`expert, Dr. Sergienko, in support of its attorney argument. To the extent
`Dr. Sergienko’s testimony “that Bouevitch could control power using
`misalignment” failed to support Patent Owner’s argument, Patent Owner
`instead argues that it was “mischaracterized” by Petitioner. Req. Reh’g. 7.
`Thus, we determine that Patent Owner fails to identify any matter that we
`misapprehended or overlooked. Req. Reh’g. 2
`Furthermore, Patent Owner fails to address in its Request Bouevitch’s
`disclosure, as quoted in the Final Decision, that the “degree of attenuation is
`based on the degree of deflection provided by the reflector (i.e., the angle of
`reflection).” Dec. 23 (quoting Ex. 1003, 7:35–37). Instead, Patent Owner
`argues that “Bouevitch’s embodiments comprising MEMS do not
`necessarily control power using misalignment.” Req. Reh’g. 9. Patent
`Owner’s focus on whether a disclosed feature was “necessarily” used is
`misplaced. The challenged claims were found to have been obvious over the
`asserted prior art, and even if we were to consider Patent Owner’s argument,
`Patent Owner fails to address what would have been understood by one of
`ordinary skill in the art at the time of the invention. Patent Owner has not
`established that we overlooked an argument or evidence regarding “teaching
`away,” and has not shown that we erred in determining that Bouevitch does
`not teach away from the power-control method taught in Smith.
`
`4
`
`

`
`IPR2014-01166
`Patent RE42,368
`
`
`B.
`
`Patent Owner’s Contention that Combining Bouevitch with a
`Two-Axis Mirror Would Change Its Basic Principle of Operation
`In its Request, Patent Owner argues second that we misinterpreted its
`argument that a person of ordinary skill “would not have combined
`Bouevitch and a two-axis mirror because the combination would disrupt
`Bouevitch’s polarization-based switch.” Req. Reh’g. 10.
`The Final Decision states:
`Patent Owner also argues that a person of ordinary skill in
`the art would not have combined Bouevitch and Smith for
`various reasons. PO Resp. 22–31. Patent Owner argues that
`Petitioner has not reconciled “the technical differences between
`the references,” or explained whether the components “would
`continue to operate as desired.” Id. at 23. Patent Owner lists
`many considerations an optical system architect would have to
`take into account purportedly not addressed in the Petition. Id.
`at 23–24. Patent Owner further asserts that Dr. Marom has
`designed a two-axis mirror to replace a two-axis mirror, and that
`“[r]e-designing micromirrors is not a simple substitution because
`the redesign is complex.” Id. at 24–25. In this proceeding,
`however, Dr. Sergienko was asked whether such technical
`considerations presented problems that could not be overcome
`by one of skill in the art, and indicated “no.” Ex. 1039, 266:16–
`267:25. Moreover, “[t]he test for obviousness is not whether the
`features of a secondary reference may be bodily incorporated
`into the structure of the primary reference. . . . Rather, the test
`is what the combined teachings of those references would have
`suggested to those of ordinary skill in the art.” In re Keller, 642
`F.2d 413, 425 (CCPA 1981).
`Dec. 30–31. Patent Owner asserts that it “did not argue that Bouevitch and
`Smith are not combinable because Smith’s mirrors cannot be bodily
`incorporated into Bouevitch.” Req. Reh’g. 9. Patent Owner’s argument
`misrepresents the thrust of Patent Owner’s Response. Patent Owner argued
`that replacing a single axis mirror with a two-axis mirror was not a simple
`5
`
`

`
`IPR2014-01166
`Patent RE42,368
`
`substitution for various reasons including “temperature issues” and
`“moisture,” and further argued that “two-axis gimbal mirrors were not
`suitable because a gap between adjacent gimbal mirrors limited perimeter-
`to-perimeter spacing.” Paper 19 (“PO Resp.”) 23–24. Patent Owner’s
`arguments were properly addressed as disputing whether certain features
`could be bodily incorporated, rather than adequately addressing what the
`combined teachings of those references would have suggested to those of
`ordinary skill in the art. Accordingly, Patent Owner has not shown that we
`misapprehended or overlooked this argument.
`
`Patent Owner also mischaracterizes the argument it raised in its
`Response concerning the motivation to combine Smith and Bouevitch. In
`the Response, Patent Owner argued a person of ordinary skill “would not
`have been motivated to use Smith’s mirrors in the Figure 5 embodiment in
`Bouevitch because the combination would disrupt Bouevitch’s polarization-
`based switch. PO Resp. 25 (emphasis added). The Final Decision states that
`“Patent Owner’s argument is not persuasive because, as discussed above,
`Petitioner does not rely on the Figure 5 embodiment in Bouevitch.” Dec. 31.
`Contrary to the Request, Patent Owner has not shown where it previously
`raised the argument that a person of ordinary skill “would not have
`combined Bouevitch and a two-axis mirror because the combination would
`disrupt Bouevitch’s polarization-based switch” outside of the context of an
`embodiment not relied upon by Petitioner. Patent Owner’s omission of “in
`the Figure 5 embodiment” from its argument in the Request is a
`
`6
`
`

`
`IPR2014-01166
`Patent RE42,368
`
`misrepresentation of the record. Thus, Patent Owner has not established that
`we overlooked its argument or evidence.
`III. CONCLUSION
`We have considered Patent Owner’s Request, but find no point of law
`or fact which we overlooked or misapprehended in arriving at our Final
`Decision.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Request is denied.
`
`
`
`
`
`
`7
`
`

`
`IPR2014-01166
`Patent RE42,368
`
`Wayne O. Stacy
`Sarah Guske
`COOLEY LLP
`wstacy@cooley.com
`CapellaCisco@cooley.com
`
`For PATENT OWNER:
`
`Jason D. Eisenberg
`Jon E. Wright
`Robert Greene Sterne
`Jonathan Tuminaro
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-PTAB@skgf.com
`jwright-PTAB@skgf.com
`rsterne-PTAB@skgf.com
`jtuminar-PTAB@skgf.com
`
`8