`571-272-7822
`
`
`
`
`Paper 22
`Entered: September 18, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Cases IPR2014-01166 and IPR2014-01276
`Patents RE42,368 and RE42,6781
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This order addresses issues that are the same in the identified cases. The
`parties are authorized to use this heading when filing a single paper in each
`proceeding, provided that such heading includes a footnote attesting that
`“the word-for-word identical paper is filed in each proceeding identified in
`the heading.”
`
`
`
`IPR2014-01166 and IPR2014-01276
`Patent RE42,368 and RE42,678
`
`
`In both IPR2014-01166 and IPR2014-01276 we instituted trial on
`grounds asserted by Petitioner Cisco Systems, Inc., which relied upon U.S.
`Patent No. 6,798, 941 B2, issued September 28, 2004 (“Smith”). Petitioner
`contends Smith is 102(e) prior art as of September 22, 2000, the filing date
`of its corresponding provisional application No. 60/234,683 (the “Smith
`’683 Provisional”). On September 16, 2015, Petitioner contacted the Board
`by email to seek guidance on how to respond to what Petitioner suggests is a
`recent change in 102(e) law discussed in Dynamic Drinkware LLC v. Nat’l
`Graphics, Inc., No. 15-1214, 2015 WL 5166366 (Fed. Cir. Sept. 4, 2015).
`In Dynamic Drinkware, the Federal Circuit stated: “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.” Id. at *6.
`Petitioner requested leave to file supplemental information consisting of a
`five page claim chart showing where the Smith ’683 Provisional provides
`written description support for claim 1 of Smith.
`Because both Smith and the Smith ’683 Provisional are in the record
`of these proceedings, we are not persuaded that providing a claim chart, as
`Petitioner requests, constitutes supplemental information, as opposed to
`additional argument. We, however, are interested in the parties’ views on
`the impact, if any, of Dynamic Drinkware on these proceedings and, in
`accordance with § 37 C.F.R. 42.20(d), request additional briefing to address
`the following:
`(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
`2
`
`
`
`IPR2014-01166 and IPR2014-01276
`Patent RE42,368 and RE42,678
`
`
`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.
`
`
`
`Each party shall be limited to five (5) pages, not including the cover
`sheet or certificate of service, for their respective briefs, which shall be
`strictly limited to the issues identified above. Petitioner may additionally
`include as an exhibit to its brief a claim chart not to exceed five (5) pages
`showing where the Smith ’683 Provisional provides written description
`support for the claims of Smith. The claim chart may not include any
`argument or explanatory text. The same brief should be entered in both
`IPR2014-01166 and IPR2014-01276.
`
`It is
`ORDERED that Petitioner is authorized to file a brief as described in
`this Order due seven (7) business days after filing of this order; and
`FURTHER ORDERED that Patent Owner is authorized to file a brief
`responsive to Petitioner’s as described in this Order due seven (7) business
`days after the filing of Petitioner’s brief.
`
`3
`
`
`
`
`
`IPR2014-01166 and IPR2014-01276
`Patent RE42,368 and RE42,678
`
`
`For PETITIONER:
`
`Wayne O. Stacy
`Matthew J. Leary
`COOLEY LLP
`wstacy@cooley.com
`CapellaCisco@cooley.com
`
`
`
`For PATENT OWNER:
`
`Robert Sterne
`Jon E. Wright
`Jason D. Eisenberg
`Nicholas Nowak
`Jonathan Tuminaro
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rsterne-PTAB@skgf.com
`jwright-PTAB@skgf.com
`jasone-PTAB@skgf.com
`nnowak-PTAB@skgf.com
`jtuminar-PTAB@skgf.com
`
`
`4
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