UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC.
`Petitioner
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`Case IPR2014-01 166
`Patent RE42,368
`
`CAPELLA PHOTONICS, INC.’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. §42.8(a)(2)
`
`Mail Stop "PA TENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC.
`Petitioner
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`Case IPR2014-01 166
`Patent RE42,368
`
`CAPELLA PHOTONICS, INC.’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. §42.8(a)(2)
`
`Mail Stop "PA TENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Case 1PR2014-01 166 for
`U.S. Patent No. RE42,368
`
`Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner, Capella Photonics, Inc.,
`
`hereby files its Mandatory Notices.
`
`I.
`
`II.
`
`37 C.F.R. § 42.8(b)(1) - REAL PARTY-IN-INTEREST
`The patent owner and real party-in-interest is Capella Photonics, Inc.
`
`37 C.F.R. § 42.8(b)(2) - RELATED MATTERS
`Proceedings Before the USPTO Involving the Patent-at-Issue
`
`A. (cid:9)
`
`Patent Owner notifies the Board of the following proceeding that may affect
`
`or be affected by a decision in this proceeding:
`
`(cid:149) Case 1PR2014-01276 - On August 12, 2014, Petitioner Cisco Systems,
`
`Inc. filed a Petition for Inter Partes Review against Capella’s U.S. Patent
`
`No. RE42,678. The ’678 patent stems from the same patent application(s)
`
`that resulted in the ’368 patent.
`
`A. (cid:9)
`
`Litigations Involving the Patent-at-Issue
`
`Patent Owner notifies the Board of the following litigation proceedings that
`
`may affect or be affected by a decision in this proceeding:
`
`(cid:149) Capella Photonics, Inc. v. Cisco Systems, Inc., Case No. 1:14-cv-20529,
`
`filed in the U.S. District Court for the Southern District of Florida on
`
`February 12, 2014 (transferred to the Northern District of California on
`
`July 24, 2014, now Case No. 3:14-cv-03348).
`
`1
`
`
`
`Case 1PR2014-01 166 for
`U.S. Patent No. RE42,368
`
`(cid:149) Capella Photon ics, Inc. v. Fujitsu Network Communications, Inc., Case
`
`No. 1:14-cv-20531, filed in the U.S. District Court for the Southern
`
`District of Florida on February 12, 2014 (transferred to the Northern
`
`District of California on July 24, 2014, now Case No. 3:14-cv-03349).
`
`(cid:149) Capella Photonics, Inc. v. Tellabs, Inc., Case No. 0:14-cv-60350, filed in
`
`the U.S. District Court for the Southern District of Florida on February
`
`12, 2014 (transferred to the Northern District of California on July 24,
`
`2014, now Case No. 3:14-cv-03350).
`
`Capella Photonics, Inc. v. Ciena Corporation et al., Case No. 1:14-cv-
`
`20530, filed in the U.S. District Court for the Southern District of Florida
`
`on February 12, 2014 (transferred to the Northern District of California
`
`on July 25, 2014, now Case No. 5:14-cv-03351)
`
`(cid:149) Capella Photonics, Inc. v. Columbus Networks USA, Inc., Case No. 0:14-
`
`cv-61629, filed in the U.S. District Court for the Southern District of
`
`Florida on July 15, 2014 (currently stayed).
`
`(cid:149) Capella Photonics, Inc. v. Telefonica International Wholesale Services
`
`USA, Case No. 1:14-cv-22701, filed in the U.S. District Court for the
`
`Southern District of Florida on July 21, 2014 (currently stayed).
`
`2
`
`
`
`Case 1PR2014-01 166 for
`U.S. Patent No. RE42,368
`
`B. (cid:9)
`
`U.S. Patents and Applications Related to the Patent-at-Issue
`
`Out of an abundance of caution and in accordance with the Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012), Patent Owner
`
`notifies the Board of related patents that may affect or be affected by a decision in
`
`this proceeding:
`
`. U.S. Patent Application No. 09/938,426, filed August 23, 2001 (now
`
`U.S. Patent No. 6,625,346, issued September 23, 2003); and
`
`(cid:149) U.S. Patent Application No. 10/005,714, filed November 7, 2001 (now
`
`U.S. Patent No. 6,687,431, issued February 3, 2004).
`
`III. 37 C.F.R. § 42.8(b)(3) - LEAD AND BACK-UP COUNSEL
`Patent Owner hereby designates lead and back-up counsel.
`
`Lead Counsel Robert Greene Sterne, Reg. No. 28,912
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`1100 New York Avenue, N. W.
`Washington, D.C. 20005
`E-mail: rsteme-PTAB(skgf.com
`Tel.: 202-772-8555
`Fax: 202-371-2540
`
`Back-up Counsel Jon E. Wright, Reg. No. 50,720
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`1100 New York Avenue, N. W.
`Washington, D.C. 20005
`E-mail: jwright-PTAB(skgf.com
`Tel.: 202-772-8651
`Fax: 202-371-2540
`
`3
`
`
`
`Case 1PR2014-01 166 for
`U.S. Patent No. RE42,368
`
`Back-up Counsel Jason D. Eisenberg, Reg. No. 43,447
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`1100 New York Avenue, N. W.
`Washington, D.C. 20005
`E-mail: j asone-PTAB (skgf. corn
`Tel.: 202-371-8645
`Fax: 202-371-2540
`
`IV.
`
`37 C.F .R. § 42.8(b)(4) - SERVICE INFORMATION
`Please address all correspondence to the lead and back-up counsel as shown
`
`above. Patent Owner consents to electronic service by e-mail at all e-mail
`
`addresses provided above.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with 1PR2014-0 1166 to Deposit Account 19-0036.
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`R04k4wyl~
`
`Robert Greene Sterne
`Registration No. 28,912
`Lead Counsel for Patent Owner
`
`Date: August 25, 2014
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`Case 1PR2014-01 166 for
`U.S. Patent No. RE42,368
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(
`
`The undersigned hereby certifies that the foregoing CAPELLA
`
`PHOTONICS, INC.’S MANDATORY NOTICES PURSUANT TO 37 C.F.R.
`
`§42.8(a)(2) and accompanying Power of Attorney were served electronically via e-
`
`mail on August 25, 2014 in their entireties on the following counsel of record for
`
`Petitioners:
`
`Wayne 0. Stacy (Lead Counsel)
`Matthew J. Leary (Back-up Counsel)
`COOLEY LLP
`380 Interlocken Crescent, Suite 900
`Broomfield, CO 80021
`wstacy@cooley.com
`CapellaCisco@cooley.com
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Robert Greene Sterne
`Registration No. 28,912
`Lead Counsel for Patent Owner
`
`Date: August 25, 2014
`
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
