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
`
`
`
`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. 2014-011661
`
`PETITIONER’S BRIEFING IN RESPONSE TO PTAB QUESTIONS
`POSED IN PAPER 28
`
`
`1 Case IPR2015-00816 has been joined with this proceeding.
`
`
`
`
`
`
`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
`
`
`
`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. 2014-011661
`
`PETITIONER’S BRIEFING IN RESPONSE TO PTAB QUESTIONS
`POSED IN PAPER 28
`
`
`1 Case IPR2015-00816 has been joined with this proceeding.
`
`
`
`
`
`
`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US [034855.2014] (RE42,368)
`Petitioners’ Briefing in Response to PTAB Questions Posed in Paper 28
`
`
`The Board posed three questions related to the Federal Circuit’s recent
`
`decision in Dynamic Drinkware, LLC v. National Graphics, Inc. Dynamic
`
`Drinkware, 2015 WL 5166366 (Fed. Cir. Sept. 4, 2015). Paper 28. The questions
`
`are answered below and a claim chart is attached.
`
`QUESTIONS 1 & 2
`
`The Dynamic Drinkware holding can at most add to—but not overturn—the
`
`Giacomini test for establishing the effective date of a provisional application as
`
`prior art. A decision of a Federal Circuit panel is binding on all other panels
`
`“unless and until overruled by an intervening Supreme Court or en banc decision.”
`
`Deckers Corp. v. U.S., 752 F.3d 949, 964 (Fed. Cir. 2014) (internal citations
`
`omitted). Dynamic Drinkware was decided by a three-judge panel. Dynamic
`
`Drinkware, 2015 WL 5166366. It cannot overrule Giacomini. See e.g., Deckers,
`
`752 F.3d at 964. Further, the Supreme Court has not issued an intervening
`
`decision. Accordingly, Giacomini remains good law. E.g., id. Dynamic
`
`Drinkware can therefore only add to the Giacomini test. And it appears to have
`
`done just that—adding a new prong to the test for establishing the effective date of
`
`a provisional application as prior art.
`
`
`
`1
`
`
`
`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US [034855.2014] (RE42,368)
`Petitioners’ Briefing in Response to PTAB Questions Posed in Paper 28
`
`
`Reading Giacomini and Dynamic Drinkware
`
`together,
`
`the
`
`test for
`
`establishing the effective date for a provisional application as prior art now has two
`
`prongs: (1) common disclosure and (2) priority for at least one claim.
`
`1. Common disclosure
`
`Giacomini focuses on the disclosure in the patent and the provisional rather
`
`than the 35 U.S.C. § 119 requirement. Giacomini, 612 F.3d 1380. Giacomini
`
`requires that the patent and the provisional both contain the disclosure being relied
`
`upon as prior art. Id. at 1383. Specifically, Giacomini holds that “an applicant is
`
`not entitled to a patent if another’s patent discloses the same invention, which was
`
`carried forward from an earlier U.S. provisional application or U.S. non-
`
`provisional application.” Id. This holding has not been overruled.
`
`Pointing to the earlier decision in Application of Klesper, 397 F.2d 882,
`
`885–86 (C.C.P.A. 1968), the Giacomini panel drove home the point about the
`
`common disclosure requirement:
`
`Section 102(e) codified the “history of treating the
`disclosure of a U.S. patent as prior art as of the filing date
`of the earliest U.S. application to which the patent is
`entitled, provided
`the disclosure as contained
`in
`substance in the said earliest application.”
`
`
`
`2
`
`
`
`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US [034855.2014] (RE42,368)
`Petitioners’ Briefing in Response to PTAB Questions Posed in Paper 28
`
`Id. at 1385. Accordingly, to satisfy the Giacomoni test, the petitioner should show
`
`that the invalidating disclosure is found in the issued patent and the corresponding
`
`patent application.
`
`2. Priority for at least one claim
`
`Dynamic Drinkware focuses on the claim of priority under § 119 and holds
`
`that “a provisional application’s effectiveness as prior art depends on its written
`
`description support for the claims of the issued patent of which it was a
`
`provisional.” Dynamic Drinkware, 2015 WL 5166366, at *6. This test focuses on
`
`the claims of the issued prior-art patent rather than the common disclosure.
`
`To claim priority to a provisional application, only one claim in the issued
`
`patent needs to find support in the provisional. Section 119(e)(1) focuses on “an
`
`invention” rather than all inventions. 35 U.S.C. § 119(e)(1) (emphasis added).
`
`Each claim defines an invention. See also Jones v. Hardy, 727 F.2d 1524, 1528
`
`(Fed. Cir. 1984); Minton v. Nat'l Ass'n of Sec. Dealers, Inc., 226 F. Supp. 2d 845,
`
`854 (E.D. Tex. 2002); Phillips v. AWH Corp., No. 97MK212(CBS), 2002 WL
`
`32827996, at *4 (D. Colo. Nov. 22, 2002); Martin Marietta Materials, Inc. v.
`
`Bedford Reinforced Plastics, Inc., 227 F.R.D. 382, 386 n.2 (W.D. Pa. 2005).
`
`Accordingly to satisfy the Dynamic Drinkware test, a petitioner should show that
`
`one claim in the prior-art patent is supported by the corresponding provisional.
`
`
`
`3
`
`
`
`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US [034855.2014] (RE42,368)
`Petitioners’ Briefing in Response to PTAB Questions Posed in Paper 28
`
`QUESTION 2
`
`As discussed in relation to Question 1, Dynamic Drinkware does not conflict
`
`with Giacomini because Giacomini did not reach the issue addressed in Dynamic
`
`Drinkware. The Giacomini court focused exclusively on the disclosure of the
`
`provisional application to determine the provisional application’s eligibility as a 35
`
`U.S.C. § 102(e) reference. At most, Dynamic Drinkware only adds to the
`
`Giacomini test.
`
`The Dynamic Drinkware decision does, however, conflict with Ex parte
`
`Yamaguchi, 88 U.S.P.Q.2d 1606 (B.P.A.I. 2008). Ex parte Yamaguchi is no longer
`
`good law. The Federal Circuit changed the long-standing test relied on by the by
`
`the Patent Office and the parties in front of the Patent Office.
`
`The Board did not ask about another precedential case, Klesper. 397 F.2d
`
`882. If permitted to do so, Petitioner would address this case also. Dynamic
`
`Drinkware conflicts with the holding of Klesper, a precedential case which focuses
`
`exclusively on common disclosure between a provisional application and a non-
`
`provisional patent. Klesper, 397 F.2d at 885-86. To the extent Dynamic
`
`Drinkware’s new claim priority step conflicts with Klesper, Dynamic Drinkware is
`
`invalid. Deckers, 752 F.3d at 964.
`
`
`
`
`
`
`
`4
`
`
`
`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US [034855.2014] (RE42,368)
`Petitioners’ Briefing in Response to PTAB Questions Posed in Paper 28
`
`QUESTION 3
`
` Petitioner provided support under the common disclosure test in its original
`
`petition at Paper 2, pages 17-60. The Smith provisional application also supports
`
`at least one claim of the Smith patent. The attached claim chart illustrates the
`
`support for exemplary Claim 1. The other Smith patent claims are variations on
`
`the same theme as Claim 1 and also supported by the provisional. For example,
`
`the Smith provisional disclosure for the preamble of Claim 1 teaches the preamble
`
`of Claim 28. Compare Exhibit 1004, claim 28 with attached Chart, Claim 1
`
`Preamble. The Smith provisional disclosure for claim element 1[a] teaches claim
`
`element 28[a] (adjusting). Compare Exhibit 1004, claim 28 with attached Chart,
`
`Claim 1[a]. The Smith provisional disclosure for claim element 1[b] teaches
`
`claim element 28[b] (monitoring). Compare Exhibit 1004, claim 28 with attached
`
`Chart, Claim 1[b]. And, the Smith provisional disclosure for claim element 1[c]
`
`teaches claim element 28[c] (adjusting). Compare Exhibit 1004, claim 28 with
`
`attached Chart, Claim 1[c].
`
`Dated: September 29, 2015
`
`COOLEY LLP
`ATTN: Wayne O. Stacy
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (720) 566-4000
`Fax: (202) 842-7899
`
`
`
`
`
`By:
`
`
`
`
`
`
`5
`
`Respectfully submitted,
`COOLEY LLP
`
`/ Wayne Stacy /
`Wayne O. Stacy
`Reg. No. 45,125
`Lead Counsel
`
`
`
`Case No. 2014-01166
`Atty. Docket No. CSCO-001/00US [034855.2014] (RE42,368)
`Petitioners’ Briefing in Response to PTAB Questions Posed in Paper 28
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies
`
`that on September 29, 2015, a complete and entire electronic copy of this
`
`Petitioner’s Briefing in Response to PTAB Questions Posed in Paper 28 for
`
`Inter Partes Review No. 2014-01166, was served electronically via email in its
`
`entirety on the following counsel of record for Patent Owners:
`
`Jason D. Eisenberg (Lead Counsel)
`Robert Greene Sterne (Backup Counsel)
`Jon E. Wright (Backup Counsel)
`Nicholas J. Nowak (Backup Counsel)
`Jonathan Tuminaro (Backup Counsel)
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N. W.
`Washington, D.C. 20005
`E-mails:
`jasone-PTAB@skgf.com
`rsterne-PTAB@skgf.com
`jwright-PTAB@skgf.com
`nnowak-PTAB@skgf.com
`jtuminar-PTAB@skgf.com
`
`By: / Wayne Stacy /
`
`Wayne O. Stacy
`
`Reg. No. 45,125
`
`Lead Counsel
`
`
`
`
`
`
`
`
`121784922 v3
`
`
`
`
`
`Petition for Inter Partes Review of IPR2014-01166
`Reissue Patent No. RE42,368
`
`
`
`
`Smith Claim 1 Element
`
`[Preamble]
`An optical switching
`system comprising:
`
`Smith Provisional Disclosure
`(all cites to Exhibit 1005, U.S. Provisional Appl.
`No. 60/234,683)
`p. 8 (“Signals may enter the switch through the input
`port 110 or add port 114 and exit through the drop
`port 116 and/or output port 112. All fiber channels
`are wavelength division multiplexed with 8
`wavelength channels.”), pp. 5, 9, Figs. 1, 6, 8, 9.
`p. 7; Fig. 6:
`
`
`p. 12 (“signals in each wavelength channel are
`routed to the output 316 and drop 318 ports under the
`control of the electronic switching input signal
`320.”), p. 8 (“Under the control of an external
`control signal, the ADM may allow a wavelength
`channel to pass through the switch from input to
`output or, alternatively, to route the input signal to
`the drop port and simultaneously connect the add
`port to the output.”)
`p. 8 (“a 2x2 multi-wavelength, add-drop multiplexer
`(ADM) 100 embodying the features of the invention
`is schematically shown.”)
`
`1
`
`
`
`
`
`Petition for Inter Partes Review of IPR2014-01166
`Reissue Patent No. RE42,368
`
`
`p. 8, Fig. 6:
`
`1[a]: at least one movable
`mirror
`for
`selectively
`coupling an optical signal
`from an input port to any
`of a plurality of output
`ports
`according
`to
`a
`position of said mirror
`
`Figs. 2, 5, 9.
`p. 7; Fig. 6:
`
`
`
`
`p. 7 (“[a]ccording to a preferred embodiment of the
`invention, the optical throughput of each wavelength
`channel may be controlled by using a mirror array
`with elements that can be rotated in an analog
`fashion about two orthogonal axes. Angular
`displacement in a first, switching plane, is used to
`perform an OXC, ADM or other switching function
`while angular displacement about the orthogonal axis
`is used for power control.”); emphasis added.)
`p. 8, Fig. 6:
`
`2
`
`
`
`
`
`Petition for Inter Partes Review of IPR2014-01166
`Reissue Patent No. RE42,368
`
`
`Figs. 2, 5, 9.
`
`
`
`1[b]: an optical detector
`receiving a portion of light
`coupled to one of said
`output ports to measure an
`intensity of said light; and
`
`
`
`Fig. 4 (annotated), Fig. 11, pp. 7, 12.
`pp. 7, 10 (“the percentage of the drop beam that is
`coupled into the power drop channel 230 of the
`optical concentrator 235 may be varied by tilting the
`individual array elements about their horizontal or
`vertical axes”), Figs. 7, 9, 11, Fig. 10:
`
`
`
`3
`
`
`
`
`
`Petition for Inter Partes Review of IPR2014-01166
`Reissue Patent No. RE42,368
`
`
`p. 11 (“Displacement of the beam from a condition
`of perfect alignment decreases the percentage of light
`coupled into the concentrator's drop channel,
`reducing the amount of power leaving the switch. In
`the preferred operation of the switch, optimal
`alignment will be performed by optimal positioning
`of the beam on the appropriate concentrator element,
`specifically by controlling the horizontal alignment.
`Vertical misalignment is the preferred method of
`reducing power coupling to the chosen output
`channel.”)
`
`Fig. 4 (annotated), Fig. 11, pp. 7, 12.
`Fig. 10:
`
`
`p. 12 (“the current invention is capable of providing
`programmable power control to adapt to all system
`requirements”); 5.
`
`4
`
`1[c]: a controller receiving
`an output of said optical
`detector and in response
`adjusting said position of
`said mirror to effect
`control of said intensity.
`
`
`
`
`
`Petition for Inter Partes Review of IPR2014-01166
`Reissue Patent No. RE42,368
`
`
`p. 10 (“In order to control the power of the beams
`leaving the switch via the output and drop ports, the
`corresponding micro-mirror elements are designed to
`tilt about a second, perpendicular axis in the plane of
`the array. Tilting a pair of elements about this axis
`translates the corresponding beam on the surface of
`the optical concentrator, thereby decreasing the
`percentage of the light coupled out of the switch.”)
`p. 12 (“This resulting feedback loop may be used to
`actively optimize the power spectra of the signals
`leaving the ADM switch….As a rule, one would
`prefer to maximize the power on each channel, but,
`for reasons of system uniformity, it is preferred to
`equalize the powers of all channels which are within
`a specified range of power (some too-low or too-high
`power signals may need correction outside the
`proposed means – e.g. dead lasers) which means
`adjusting all channel powers until the equal the
`weakest acceptable channel power this is common in
`the current art.”)
`
`5
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