`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`CISCO SYSTEMS, INC., CIENA CORPORATION,
`CORIANT OPERATIONS, INC., CORIANT (USA) INC., and
`FUJITSU NETWORK COMMUNICATIONS, 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 IPR2014-011661
`Patent No. RE42,368
`_____________________
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`PATENT OWNER CAPELLA PHOTONICS INC.’S NOTICE OF APPEAL
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`via PTAB E2E
`Patent Trial and Appeal Board
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`via Hand Carry
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel, 10B20
`Madison Building East
`600 Dulany Street
`Alexandria, VA 22314
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`via CM/ECF
`United States Court of Appeals for the Federal Circuit
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`1 Case IPR2015-00816 has been joined with this proceeding.
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`IPR2014-01166
`U.S. Pat. No. RE42,368
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`INTRODUCTION
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`Capella Photonics, Inc.’s appeal stems from the Patent Trial and Appeal
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`Board’s Final Written Decision entered on January 28, 2016 (Paper 44) (the “Final
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`Written Decision”) and the Board’s decision on the Patent Owner’s Request for
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`Rehearing entered on June 28, 2016 (Paper 46) (the “Rehearing Decision”) in the
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`above-captioned inter partes review of United States Patent No. RE42,368. This
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`notice is timely filed within 63 days of the Rehearing Decision. 37 C.F.R. §
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`90.3(b)(1).
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`CAPELLA PHOTONICS, INC.’S APPEAL
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`Please take notice that under 35 U.S.C. §§ 141(c), 142, 319; 37 C.F.R. §§
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`90.2(a), 90.3(a), and Federal Rules of Appellate Procedure/Federal Circuit Rule
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`4(3)(a), Patent Owner Capella Photonics, Inc. hereby appeals to the United States
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`Court of Appeals for the Federal Circuit from the Final Written Decision and the
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`Rehearing Decision based on the “Decision, Institution of Inter Partes Review”
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`entered on January 30, 2015 (Paper 8) (the “Institution Decision”).
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`CAPELLA PHOTONICS, INC.’S ISSUES ON APPEAL
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Capella Photonics, Inc.’s
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`issues on appeal include at least: (i) the Board’s finding that claims 1–6, 9-11, 13,
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`and 15-22 would have been obvious over Bouevitch, Smith, and Lin; (ii) the
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`Board’s finding that claim 12 would have been obvious over Bouevitch, Smith,
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`IPR2014-01166
`U.S. Pat. No. RE42,368
`Lin, and Dueck; (iii) the Board’s claim construction; (iv) the Board’s
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`determination that Smith was prior art; (v) the undecided issues steming from the
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`Board's Order (Paper 28) requesting additional briefing on (1) what a party must
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`show to establish that a patent is prior art as of the date of its provisional
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`application when relied upon to challenge claims in an inter partes review
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`proceeding alleging obviousness under 35 U.S.C. § 103(a), particularly with
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`respect to whether Dynamic Drinkware altered the required showing; (2) whether
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`Dynamic Drinkware is consistent with, or conflicts with, In re Giacomini, 612 F.3d
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`1380, 1383 (Fed. Cir. 2010) or Ex parte Yamaguchi, 88 U.S.P.Q.2d 1606 (B.P.A.I.
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`2008); (3) whether the Smith ’683 Provisional provides written description support
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`for the claims of Smith, which Order was never decided on its merits, (vi)
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`improperly shifting the burden to disprove obviousness to the Patent Owner; and
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`(vii) any findings or determinations supporting or related to the aforementioned
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`issues as well as all other issues decided adversely to Capella Photonics, Inc. in
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`any orders, decisions, rulings, phone conference decisions, and/or opinions.
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`Simultaneously with this submission, Capella Photonics, Inc. is filing a true
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`and correct copy of this Notice of Appeal with the Director of the United States
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`Patent and Trademark Office and a true and correct copy of the same, along with
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`the required docketing fee, with the Clerk of the United States Court of Appeals for
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`the Federal Circuit as set forth in the accompanying Certificate of Filing.
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`IPR2014-01166
`U.S. Pat. No. RE42,368
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Jason D. Eisenberg/
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`Robert Greene Sterne (Reg. No. 28,912)
`Jason D. Eisenberg (Reg. No. 43,447)
`Attorneys for Patent Owner
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`Date: July 26, 2016
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
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`IPR2014-01166
`U.S. Pat. No. RE42,368
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`CERTIFICATE OF FILING
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`The undersigned hereby certifies that, in addition to being electronically
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`filed through PTAB E2E, a true and correct copy of the above-captioned PATENT
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`OWNER CAPELLA PHOTONICS, INC.’S NOTICE OF APPEAL is being
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`filed by hand with the Director on July 26, 2016, at the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel, 10B20
`Madison Building East
`600 Dulany Street
`Alexandria, VA 22314
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`The undersigned also hereby certifies that a true and correct copy of the
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`above-captioned PATENT OWNER CAPELLA PHOTONICS, INC.’S
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`NOTICE OF APPEAL and the filing fee is being filed via CM/ECF with the
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`Clerk’s Office of the United States Court of Appeals for the Federal Circuit on July
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`Respectfully submitted,
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`/Jason D. Eisenberg/
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`Jason D. Eisenberg (Reg. No. 43,447)
`Attorney for Patent Owner
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`26, 2016.
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`Date: July 26, 2016
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`IPR2014-01166
`U.S. Pat. No. RE42,368
`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that the foregoing PATENT OWNER
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`CAPELLA PHOTONICS, INC.’S NOTICE OF APPEAL was served
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`electronically via e-mail on July 26, 2016, in its entirety on the following counsel
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`for Petitioner:
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`Wayne O. Stacy
`Matthew J. Leary
`Matthew J. Moore
`Robert Steinberg
`Christopher Chalsen
`Nathaniel Browand
`Lawrence T. Kass
`Suraj Balusu
`Thomas K. Pratt
`J. Pieter van Es
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`wstacy@cooley.com
`CapellaCisco@cooley.com
`Matthew.Moore@lw.com
`Bob.Steinberg@lw.com
`CChalsen@milbank.com
`NBrowand@milbank.com
`LKass@milbank.com
`SBalusu@milbank.com
`TPratt@bannerwitcoff.com
`PvanEs@bannerwitcoff.com
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Jason D. Eisenberg/
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`Jason D. Eisenberg
`Attorney for Patent Owner
`Registration No. 43,447
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`Date: July 26, 2016
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
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`2792094_1.DOCX