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 IPR2014-012761
`Patent No. RE42,678
`_____________________
`
`PATENT OWNER CAPELLA PHOTONICS INC.’S NOTICE OF APPEAL
`
`
`via PTAB E2E
`Patent Trial and Appeal Board
`
`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
`
`via CM/ECF
`United States Court of Appeals for the Federal Circuit
`
`1 Case IPR2015-00894 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 IPR2014-012761
`Patent No. RE42,678
`_____________________
`
`PATENT OWNER CAPELLA PHOTONICS INC.’S NOTICE OF APPEAL
`
`
`via PTAB E2E
`Patent Trial and Appeal Board
`
`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
`
`via CM/ECF
`United States Court of Appeals for the Federal Circuit
`
`1 Case IPR2015-00894 has been joined with this proceeding.
`
`
`
`
`
`
`
`IPR2014-01276
`U.S. Pat. No. RE42,678
`
`INTRODUCTION
`
`Capella Photonics, Inc.’s appeal stems from the Patent Trial and Appeal
`
`Board’s Final Written Decision entered on February 17, 2016 (Paper 40) (the
`
`“Final Written Decision”) and the Board’s decision on the Patent Owner’s Request
`
`for Rehearing entered on July 5, 2016 (Paper 43) (the “Rehearing Decision”) in the
`
`above-captioned inter partes review of United States Patent No. RE42,678. This
`
`notice is timely filed within 63-days of the Rehearing Decision. 37 C.F.R. §
`
`90.3(b)(1).
`
`CAPELLA PHOTONICS, INC.’S APPEAL
`
`Please take notice that under 35 U.S.C. §§ 141(c), 142, 319; 37 C.F.R. §§
`
`90.2(a), 90.3(a), and Federal Rules of Appellate Procedure/Federal Circuit Rule
`
`4(3)(a), Patent Owner Capella Photonics, Inc. hereby appeals to the United States
`
`Court of Appeals for the Federal Circuit from the Final Written Decision and the
`
`Rehearing Decision based on the “Decision, Institution of Inter Partes Review”
`
`entered on February 18, 2015 (Paper 8) (the “Institution Decision”).
`
`CAPELLA PHOTONICS, INC.’S ISSUES ON APPEAL
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Capella Photonics, Inc.’s
`
`issues on appeal include at least: (i) the Board’s finding that claims 1-4, 9, 10, 13,
`
`19-23, 27, 44-46, and 61-65 would have been obvious over Bouevitch, Smith, and
`
`Lin; (ii) the Board’s finding that claims 17, 29, and 53 would have been obvious
`
`
`
`- 1 -
`
`
`
`
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`IPR2014-01276
`U.S. Pat. No. RE42,678
`over Bouevitch, Smith, Lin, and Dueck; (iii) the Board’s claim construction; (iv)
`
`
`
`the Board’s determination that Smith was prior art; (v) the undecided issues
`
`steming from the Board's Order (Paper 22) requesting additional briefing on (1)
`
`what a party must show to establish that a patent is prior art as of the date of its
`
`provisional application when relied upon to challenge claims in an inter partes
`
`review proceeding alleging obviousness under 35 U.S.C. § 103(a), particularly
`
`with respect to whether Dynamic Drinkware altered the required showing; (2)
`
`whether Dynamic Drinkware is consistent with, or conflicts with, In re Giacomini,
`
`612 F.3d 1380, 1383 (Fed. Cir. 2010) or Ex parte Yamaguchi, 88 U.S.P.Q.2d 1606
`
`(B.P.A.I. 2008); (3) whether the Smith ’683 Provisional provides written
`
`description support for the claims of Smith, which Order was never decided on its
`
`merits, (vi) improperly shifting the burden to disprove obviousness to the Patent
`
`Owner; and (vii) any findings or determinations supporting or related to the
`
`aforementioned issues as well as all other issues decided adversely to Capella
`
`Photonics, Inc. in any orders, decisions, rulings, phone conference decisions,
`
`and/or opinions.
`
`Simultaneously with this submission, Capella Photonics, Inc. is filing a true
`
`and correct copy of this Notice of Appeal with the Director of the United States
`
`Patent and Trademark Office and a true and correct copy of the same, along with
`
`
`
`- 2 -
`
`
`
`
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`IPR2014-01276
`U.S. Pat. No. RE42,678
`the required docketing fee, with the Clerk of the United States Court of Appeals for
`
`
`
`the Federal Circuit as set forth in the accompanying Certificate of Filing.
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`Robert Greene Sterne (Reg. No. 28,912)
`Jason D. Eisenberg (Reg. No. 43,447)
`Attorneys for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: July 26, 2016
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`
`
`
`
`- 3 -
`
`
`
`
`
`
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`IPR2014-01276
`U.S. Pat. No. RE42,678
`
`CERTIFICATE OF FILING
`
`The undersigned hereby certifies that, in addition to being electronically
`
`filed through PTAB E2E, a true and correct copy of the above-captioned PATENT
`
`OWNER CAPELLA PHOTONICS, INC.’S NOTICE OF APPEAL is being
`
`filed by hand with the Director on July 26, 2016, at the following address:
`
`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
`
`The undersigned also hereby certifies that a true and correct copy of the
`
`above-captioned PATENT OWNER CAPELLA PHOTONICS, INC.’S
`
`NOTICE OF APPEAL and the filing fee is being filed via CM/ECF with the
`
`Clerk’s Office of the United States Court of Appeals for the Federal Circuit on July
`
`Respectfully submitted,
`
`
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg (Reg. No. 43,447)
`Attorney for Patent Owner
`
`
`
`
`26, 2016.
`
`
`
`Date: July 26, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-01276
`U.S. Pat. No. RE42,678
`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that the foregoing PATENT OWNER
`
`CAPELLA PHOTONICS, INC.’S NOTICE OF APPEAL was served
`
`electronically via e-mail on July 26, 2016, in its entirety on the following counsel
`
`for Petitioner:
`
`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
`Jordan N. Bodner
`Michael S. Cuviello
`
`wstacy@cooley.com
`CapellaCisco@cooley.com
`Matthew.Moore@lw.com
`Bob.Steinberg@lw.com
`CChalsen@milbank.com
`NBrowand@milbank.com
`TPratt@bannerwitcoff.com
`SBalusu@bannerwitcoff.com
`TPratt@bannerwitcoff.com
`PvanEs@bannerwitcoff.com
`JBodner@bannerwitcoff.com
`MCuviello@bannerwitcoff.com
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg
`Attorney for Patent Owner
`Registration No. 43,447
`
`Date: July 26, 2016
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`2792112_1.DOCX
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