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
`___________________
`
`
`
`
`CAPELLA PHOTONICS, INC.’S RESPONSE TO CISCO’S
`BRIEF REGARDING LACK OF SUPPORT IN CISCO’S
`PETITION TO SHOW SMITH IS PRIOR ART
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`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
`
`___________________
`
`Case IPR2014-011661
`Patent RE42,368
`___________________
`
`
`
`
`CAPELLA PHOTONICS, INC.’S RESPONSE TO CISCO’S
`BRIEF REGARDING LACK OF SUPPORT IN CISCO’S
`PETITION TO SHOW SMITH IS PRIOR ART
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`1 Case IPR2015-00816 has been joined with this proceeding.
`
`
`
`IPR2014-01166
`
`I.
`
`Introduction
`
`The Board asked three questions: (1) what must a party show to establish
`
`that a patent is entitled to its provisional application’s filing date; (2) whether
`
`Dynamic Drinkware is consistent with precedent; and (3) whether the ’683
`
`Provisional provides § 112 support for the Smith patent’s claims.
`
`II. Answer 1: The law has held for at least 34 years that a patent is prior
`art as of its provisional application’s filing date only for subject matter
`carried over from the provisional application and only if the patent’s
`claims have § 112 support in the provisional application.
`
`When relying on a provisional’s filing date for a § 103 rejection, a petitioner
`
`must show: (1) the subject matter was carried over from the provisional application
`
`and (2) the patent’s claims have § 112 support in the provisional application.
`
`These two requirements stem from case law for determining a CIP
`
`application priority date. The CCPA held in 1967 that a CIP application only
`
`receives its parent application’s priority date for subject matter “carried over” from
`
`the parent application. In re Lund, 376 F.2d 982, 988 (CCPA 1967). The CCPA
`
`then modified this carried-over test in Wertheim to further require §112 support. In
`
`re Wertheim, 646 F.2d 527, 539 (CCPA 1981) (“[Lund] is hereby modified to
`
`further include the requirement that the application . . . must disclose, pursuant to
`
`
`
`1
`
`
`
`IPR2014-01166
`
`§§ 120/112, the invention claimed in the reference patent.”).2 In Wertheim, when
`
`determining whether a patent had § 112 support in a parent application, the CCPA
`
`compared the patent’s claims to the earlier-filed parent application. The CCPA
`
`determined that “two claim limitations of the reference patent [were] missing from
`
`[the parent application].” Id. As a result, the patent was not prior art. Id. at 537
`
`(“[O]nly an application disclosing the patentable invention before the addition of
`
`new matter . . . can be relied upon to give a reference disclosure the benefit of its
`
`filing date for the purpose of supporting a §§ 102(e)/103 rejection”).
`
`In 2010, the Federal Circuit extended both the carried-over requirement and
`
`the § 112 requirement from CIP applications to applications claiming priority to
`
`provisional applications. In re Giacomini, 612 F.3d 1380, 1383-84 (Fed. Cir.
`
`2010). For the carried-over requirement, the Federal Circuit reiterated 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. at 1383. For the § 112 requirement, the Federal
`
`Circuit reiterated that “the provisional application must provide written description
`
`support for the claimed invention.” Id. As previously established in Wertheim, the
`
`“claimed invention” can only be discussed by reference to the claims:
`
`2 In Dynamic Drinkware, the Federal Circuit cited to Wertheim for this point
`
`of law. Infra Part III.
`
`
`
`2
`
`
`
`IPR2014-01166
`
`It is axiomatic in patent law that questions of description . . . can only
`be discussed with reference to a specific claim which identifies “the
`invention” referred to in the statutes. Thus, the determinative question
`here is whether the invention claimed in the Pfluger patent finds a
`supporting disclosure in compliance with § 112 . . . Without such
`support, the invention, and its accompanying disclosure, cannot be
`regarded as prior art as of that filing date.
`Wertheim, 646 F.2d at 537 (emphasis omitted).
`
`Accordingly, as has been held for over 34 years, to establish that a patent is
`
`prior art as of its provisional application’s filing date, a party must show that (1)
`
`the subject matter was carried over from the provisional application3 and (2) the
`
`claims of the reference patent have § 112 support in the provisional application.
`
`III. Answer 2: Dynamic Drinkware did not change the law and rather, cites
`to 34 year-old precedent.
`Dynamic Drinkware did not change this 34-year old precedent, e.g., it did
`
`not disparage or contrast any other case, or remand for the Board to follow a new
`
`
`3 Cisco distances itself from the “carried over” requirement, stating that the
`
`law requires a “common disclosure.” (Paper 34, pp. 2-3.) Cisco’s argument on this
`
`point is misleading. Courts do not look at a patent and a provisional application
`
`generally to determine whether the disclosures have commonalities. Instead, courts
`
`look to whether the claimed subject matter was “carried over” from an earlier
`
`application. Lund, 376 F.2d at 988.
`
`
`
`3
`
`
`
`IPR2014-01166
`
`test. Supra Part II. Cisco contends that “[Dynamic Drinkware] appears to have . . .
`
`add[ed] a new prong to the test for establishing the effective date of a provisional
`
`application as prior art” because Giacomini did not focus on the §§ 119/112
`
`requirement. (Paper 34, pp. 1-2.) But Giacomini addressed the §§ 119/112
`
`requirement. Supra Part II. The only reason the Federal Circuit did not “focus” on
`
`the requirement is because Giacomini waived any arguments under this issue.
`
`Giacomini, 612 F.3d at 1383-84. Further, the two requirements are in Wertheim.
`
`So, when the Federal Circuit in Dynamic Drinkware specifically cited to Wertheim
`
`for the proposition that “[a] reference patent is only entitled to claim the benefit of
`
`the filing date of its provisional application if the disclosure of the provisional
`
`application provides support for the claims in the reference patent in compliance
`
`with § 112,” the Federal Circuit’s statement was not new law.
`
`As the law stands,4 and as the law stood pre-Dynamic Drinkware, a party
`
`that relies on a provisional application’s filing date for § 102(e) prior art must
`
`show that (1) the subject matter was carried over from the provisional application
`
`and (2) the claims of the reference patent have § 112 support in the provisional
`
`application.
`
`
`4 Capella agrees with Cisco that Yamaguchi is no longer good law. (Paper
`
`34, p. 4)
`
`
`
`4
`
`
`
`IPR2014-01166
`
`IV. Answer 3: The ’683 Provisional does not provide §112 support for the
`Smith patent’s claims.
`Cisco’s new claim chart5 is merely attorney argument devoid of declaratory
`
`support. It discusses only a single claim and argues that the Smith patent’s claim 1
`
`had some corresponding disclosure in the ’683 Provisional. (Paper 34, New Chart,
`
`p. 2.) According to the chart, the Smith patent’s claimed “movable mirror” has §
`
`112 support because the Provisional discloses “elements that can be rotated in an
`
`analog fashion.” (Id. (emphasis added).) Cisco is wrong. The chart is mere
`
`attorney argument and does not even attempt to demonstrate what a POSA would
`
`understand or whether the disclosure has §112 support in the Provisional.
`
`Furthermore, Cisco has not met the first prong of the test, i.e., whether the
`
`subject matter was carried over from the ’683 Provisional. As previously argued,
`
`the Smith patent’s claim features, e.g., “movable mirror,” were not carried over
`
`from the ’683 Provisional. (Paper 19, pp. 56-59.) Rather, they were carried over
`
`from provisional application no. 60/267,285, which is not prior art. (Id.) Since the
`
`Smith patent’s claim features, e.g., “movable mirror,” were not carried over from
`
`the ’683 Provisional, the disclosure in the Smith patent alleged to meet Capella’s
`
`claimed mirror feature is new matter and, therefore, not prior art to the Capella
`
`patents.
`
`
`
`
`5 Cisco’s request to submit a new chart admits the Petition’s deficiency.
`
`
`
`5
`
`
`
`IPR2014-01166
`
`Date: October 8, 2015
`
`
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg
`Registration No. 43,447
`Attorney for Patent Owner –
`Capella Photonics, Inc.
`
`
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`
`
`6
`
`
`
`IPR2014-01166
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing CAPELLA
`
`PHOTONICS, INC.’S RESPONSE TO CISCO’S BRIEF REGARDING
`
`LACK OF SUPPORT IN CISCO’S PETITION TO SHOW SMITH IS
`
`PRIOR ART was served electronically via e-mail in its entirety on October 8,
`
`2015 upon the following counsel for Petitioner:
`
`Wayne O. Stacy
`Matthew J. Leary
`Matthew J. Moore
`Robert Steinberg
`Christopher Chalsen
`Nathaniel Browand
`Thomas K. Pratt
`J. Pieter van Es
`
`wstacy@cooley.com
`CapellaCisco@cooley.com
`Matthew.Moore@lw.com
`Bob.Steinberg@lw.com
`CChalsen@milbank.com
`NBrowand@milbank.com
`TPratt@bannerwitcoff.com
`PvanEs@bannerwitcoff.com
`
`
`
`Date: October 8, 2015
`
`
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg
`Registration No. 43,447
`Attorney for Patent Owner –
`Capella Photonics, Inc.
`
`
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
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