Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FUJITSU NETWORK COMMUNICATIONS, INC.
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`____________________
`
`Case IPR2015-00726
`Patent RE42,368
`____________________
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`

`
`Case IPR2015-00726 of
`U.S. Patent No. RE42,368
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND ............................................................................................. 5
`
`I.
`
`II.
`
`A. Optical networks need switches. ........................................................... 5
`
`B.
`
`C.
`
`Conventional optical switches were not scalable. ................................. 6
`
`The claimed invention provides a scalable switch (ROADM)
`with multiple collimator ports. .............................................................. 7
`
`III. CLAIM CONSTRUCTION .......................................................................... 11
`
`IV. FUJITSU’S PETITION SHOULD BE DENIED AS
`REDUNDANT TO CISCO’S PETITION, WHICH FUJITSU HAS
`ALREADY ASKED TO JOIN. ..................................................................... 12
`
`A.
`
`B.
`
`C.
`
`Fujitsu’s petition is one of four petitions that have been filed
`against the ’368 patent. ........................................................................ 12
`
`Cisco’s IPR resulted in a stay of the co-pending district-
`court action. ......................................................................................... 15
`
`The Board should deny Fujitsu’s petition because Fujitsu’s
`references and Cisco’s references are redundant. ............................... 15
`
`V.
`
`THE BOARD SHOULD NOT INSTITUTE TRIAL ON ANY OF
`FUJITSU’S PROPOSED GROUNDS BECAUSE FUJITSU
`FAILED TO MEET ITS THRESHOLD SHOWINGS. ................................ 19
`
`A. Ground 1: Smith Does Not Anticipate Claims 1, 2, 5, 6, 9-
`12, and 15-21. ...................................................................................... 20
`
`1.
`
`2.
`
`Fujitsu failed to show that Smith is prior art. ........................... 20
`
`Smith does not disclose beam-deflecting elements that
`are continuously controllable in two dimensions. .................... 23
`
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`

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`3.
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`Case IPR2015-00726 of
`U.S. Patent No. RE42,368
`Fujitsu cannot rely on an “analog” embodiment from
`an earlier-filed provisional application because that
`embodiment was not carried over into Smith. .......................... 26
`
`B.
`
`Ground 2: Bouevitch in View of Carr Does Not Render
`Obvious Claims 1, 2, 5, 6, 9-12, and 15-21. ....................................... 30
`
`1.
`
`2.
`
`3.
`
`Neither Bouevitch nor Carr discloses beam-deflecting
`elements that are continuously controllable in two
`dimensions. ............................................................................... 30
`
`The combination of Bouevitch and Carr fails to teach
`or suggest the “focusing” feature of dependent claims
`11 and 21. .................................................................................. 33
`
`Fujitsu never identified any deficiency in Bouevitch
`that is allegedly fixed by Carr—as required by
`Graham. .................................................................................... 34
`
`C.
`
`Ground 3: Bouevitch in View of Sparks Does Not Render
`Obvious Claims 1-4, 17, and 22 .......................................................... 35
`
`1.
`
`2.
`
`3.
`
`Neither Bouevitch nor Sparks disclose beam-
`deflecting elements that are continuously controllable
`in two dimensions. .................................................................... 36
`
`The combination of Bouevitch and Sparks fails to
`teach or suggest the servo-control and spectral-
`monitoring features of dependent claims 3 and 22. .................. 38
`
`Fujitsu never identified any deficiency in Bouevitch
`that is allegedly fixed by Sparks—as required under
`Graham. .................................................................................... 39
`
`D. Grounds 4, 5, and 6: Tew does not disclose beam-deflecting
`elements that are continuously controllable in two
`dimensions. .......................................................................................... 40
`
`VI. CONCLUSION .............................................................................................. 42
`
`
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`Case IPR2015-00726 of
`U.S. Patent No. RE42,368
`TABLE OF AUTHORITIES
`
`Cases
`
`Butamax Advanced Biofuels LLC v. Gevo, Inc.,
`IPR2013-00539, Paper 9 (P.T.A.B. Mar. 4, 2014) ........................................ 23
`
`Butamax Advanced Biofuels LLC v. Gevo, Inc.,
`IPR2014-00581, Paper 8 (P.T.A.B. Oct. 14, 2014) ....................................... 17
`
`Cisco Systems, Inc. v. Constellation Tech’s LLC,
`IPR2014-00914, Paper 11 (P.T.A.B. Jan. 2, 2015) ....................................... 22
`
`Conopco, Inc. v. Procter & Gamble Co.,
`IPR2014-00628, Paper 21 (P.T.A.B. Oct. 20, 2014) ..................................... 17
`
`CustomPlay, LLC v. ClearPlay, Inc.,
`IPR2014-00783, Paper 9 (P.T.A.B. Nov. 7, 2014) ........................................ 17
`
`Google Inc. v. SimpleAir, Inc.,
`CBM2014-00170, Paper 13 (P.T.A.B. Jan. 22, 2015) .................................. 16
`
`Henkel Corp. v. H.B. Fuller Co.,
`IPR2014-00606, Paper 11 (P.T.A.B. Oct. 11, 2014) .................... 4, 34, 35, 39
`
`In re Lund,
`376 F.2d 982 (C.C.P.A .1967) ....................................................................... 30
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`IPR2013-00324, Paper 19 (P.T.A.B. Nov. 21, 2013) ............................. 16, 19
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25, 2012) ....................... 16, 18, 19
`
`Marvell Semiconductor, Inc. v. Intellectual Ventures I LLC,
`IPR2014-00547, Paper 17 (P.T.A.B. Dec. 3, 2014) ...................................... 23
`
`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc.,
`IPR2014-00436, Paper 17 (P.T.A.B. June 19, 2014) ............................. 16, 19
`
`Motorola Mobility LLC v. Intellectual Ventures I LLC,
`IPR2014-00500, Paper 12 (P.T.A.B. Sept. 10, 2014) ........................ 4, 35, 39
`
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`

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`Case IPR2015-00726 of
`U.S. Patent No. RE42,368
`
`Securus Techs., Inc. v. Global Tel*Link Corp.,
`IPR2015-00153, Paper 12 (P.T.A.B. May 1, 2015) ...................................... 22
`
`U.S. Surgical Corp. v. Ethicon, Inc.,
`103 F.3d 1554 (Fed. Cir. 1997) ..................................................................... 12
`
`Unilever, Inc. d/b/a Unilever v. Proctor & Gamble Co.,
`IPR2014-00506, Paper 17 (P.T.A.B. July 7, 2014) ................................ 16, 19
`
`Statutes
`
`35 U.S.C. § 102(a) ................................................................................................... 14
`
`35 U.S.C. § 102(e) ................................................................................................... 14
`
`35 U.S.C. § 103(a) ................................................................................................... 14
`
`35 U.S.C. § 112 (a) .................................................................................................. 21
`
`35 U.S.C. § 119(e)(1) ............................................................................................... 21
`
`35 U.S.C. § 314(a) ................................................................................................... 16
`
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`Case IPR2015-00726 of
`U.S. Patent No. RE42,368
`
`EXHIBIT LIST
`
`
`Description
`Patent Owner Response, Cisco Systems, Inc. v. Capella Photonics,
`Inc., Case IPR2014-01166, filed May 7, 2015.
`Clifford Holliday, Components for R-OADMs ’05 (B & C
`Consulting Services & IGI Consulting Inc. 2005). (“Holliday R-
`OADMs”)
`WavePath 4500 Product Brief, accessed at
`http://www.capellainc.com/downloads/WavePath%204500%20Pr
`oduct%20Brief%20030206B.pdf. (“WavePath”)
`Cisco’s Renewed Motion and Memorandum in Support of Motion
`for Stays Pending Final Determinations of Validity by the Patent
`Office, Capella Photonics, Inc. v. Cisco Systems, Inc., Case No.
`14-cv-03348-EMC (N.D. Cal.), filed February 12, 2015. (“Cisco’s
`Mot. for Stay”)
`Order Regarding Cisco’s Pending Motion for Litigation Stay
`Pending Inter Partes Review, Capella Photonics, Inc. v. Cisco
`Systems, Inc., Case Nos. 14-cv-03348-EMC, 14-cv-03350, and 14-
`cv-3351 (N.D. Cal.), ordered March 3, 2015. (“14-cv-03348 Slip
`op.”)
`U.S. Patent No. 6,768,571 to Azarov et al. (“Azarov”)
`The Random House Dictionary of the English Language, 1987, pp.
`404, 742 (“Random House Dictionary”)
`Provisional Patent Application No. 60/267,285 (“’285
`provisional”)
`
`Ex. No.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`2007
`
`2008
`
`- vi -
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`

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`Case IPR2015-00726 of
`U.S. Patent No. RE42,368
`
`I.
`
`Introduction
`This petition, IPR2015-00726, is the first of two inter partes review
`
`petitions that Fujitsu1 filed against U.S. Patent No. RE42,368—after the Board had
`
`already instituted an IPR against the ’368 patent. In particular, the Board instituted
`
`the IPR against the ’368 patent based on a petition filed by Cisco. See IPR2014-
`
`01166 (“Cisco’s IPR”). And Fujitsu certainly knew about that IPR. In fact, Fujitsu
`
`received a stay of a co-pending district-court action after agreeing to be bound by
`
`the estoppels that will attach to Cisco’s IPR. Yet Fujitsu has not explained why it
`
`would be necessary for the Board to institute another IPR against the ’368 patent,
`
`especially since Fujitsu asked, in its other petition, to join Cisco’s IPR.
`
`Instead, Fujitsu used Cisco’s IPR as a how-to guide, relying on two primary
`
`references here that are already before the Board in Cisco’s IPR. Then Fujitsu
`
`sprinkled in three secondary references without explaining how any of these
`
`references is better than another or better than any of Cisco’s references in its IPR,
`
`i.e., without discussing any “meaningful distinctions.” As such, Fujitsu’s
`
`references and Cisco’s references are all horizontally redundant. The Board should
`
`therefore exercise its discretion, and on this basis alone, deny Fujitsu’s petition in
`
`its entirety.
`
`
`1 “Fujitsu” refers to Petitioner Fujitsu Network Communications, Inc.
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`Underscoring this redundancy, Fujitsu’s petition should also be denied for at
`
`least the same substantive reasons that Patent Owner raised in Cisco’s IPR. First,
`
`as explained in Patent Owner’s Response to Cisco’s IPR, one of Fujitsu’s primary
`
`references—Smith2—does not even qualify as prior art and it fails to disclose
`
`several features required by the independent claims of the ’368 patent. For
`
`example, Smith does not disclose beam-deflecting elements that are continuously
`
`controllable in two dimensions. At best, the earliest-filed provisional that Smith
`
`relies on discloses that elements of a mirror array can be rotated in “an analog
`
`fashion.” But Fujitsu has failed to show that rotating a mirror in “an analog
`
`fashion” meets the claimed continuous control limitation. And Smith itself shows
`
`that the provisional’s use of the phrase “analog fashion” is akin to stepwise control,
`
`not continuous control as claimed.
`
`Second, as also explained in Patent Owner’s Response to Cisco’s IPR,
`
`Fujitsu’s other primary reference—Bouevitch3—has the same shortcomings as the
`
`references that were disclosed in the Background of the ’368 patent. For example,
`
`as explained in the Background, conventional optical add-drop multiplexers
`
`(“OADMs”) included a single input port and a single output port that each had to
`
`2 U.S. Patent No. 6,798,941 to Smith et al. (Ex. 1009).
`
`3 U.S. Patent No. 6,498,872 to Bouevitch et al. (Ex. 1002).
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`be coupled to an optical circulator. Ex. 1001, ’368 patent, 2:50-52. Like these
`
`conventional OADMs, Bouevitch’s OADM includes a single input port that is
`
`coupled to a first optical circulator and a single output port that is coupled to a
`
`second optical circulator. See Ex. 2001, Cisco’s IPR, Patent Owner Response at
`
`31-41.
`
`Attempting to fill these gaps in its primary references, Fujitsu relies on its
`
`secondary references—Carr4, Sparks5, and Tew6—for features that are already
`
`allegedly present in Cisco’s references. For example, to fill gaps in Bouevitch,
`
`Fujitsu asserts that Carr and Sparks each independently disclose two-axis
`
`mirrors—which, according to Cisco, Smith discloses. See Cisco’s IPR, Petition at
`
`28-29, 31-33. Similarly, to fill gaps in both Smith and Bouevitch, Fujitsu asserts
`
`that Tew discloses mirrors that are continuously controllable—which, according to
`
`Cisco, Lin7 discloses. See id. at 29-31. Despite knowing about (and benefiting
`
`from) Cisco’s IPR, Fujitsu failed to explain why Carr, Sparks, and Tew are any
`
`
`4 U.S. Patent No. 6,442,307 to Carr et al. (Ex. 1005).
`
`5 U.S. Patent No. 6,625,340 to Sparks et al. (Ex. 1006).
`
`6 U.S. Patent Application Publication No. 2002/0081070 to Tew (Ex. 1007).
`
`7 U.S. Patent No. 5,661,591 to Lin et al. (Ex. 1033).
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`Case IPR2015-00726 of
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`better than—or even different from—each other or the references before the Board
`
`in Cisco’s IPR. As such, Fujitsu has provided no “meaningful distinctions”
`
`between its own references, or the Cisco references.
`
`Moreover, Fujitsu failed to provide the required Graham analysis because it
`
`never identified a deficiency in Bouevitch that is allegedly fixed by Carr or Sparks.
`
`See Henkel Corp. v. H.B. Fuller Co., IPR2014-00606, Paper 11 at 15-16 (P.T.A.B.
`
`Oct. 10, 2014) (denying a ground because the petitioner failed to identify any
`
`differences between the claimed invention and the prior art as required by
`
`Graham). As such, Patent Owner and the Board are left to guess why a skilled
`
`artisan would have even looked to Carr or Sparks in the first place. See Motorola
`
`Mobility LLC v. Intellectual Ventures I LLC, IPR2014-00500, Paper 12 at 21
`
`(P.T.A.B. Sept. 10, 2014) (“Without [the p]etitioner having identified specifically
`
`the differences [between the primary reference and the claimed invention], [the
`
`Board was] unable to evaluate properly any rationale offered by [the p]etitioner for
`
`modifying [the primary reference] in view of the secondary references cited.”).
`
`Thus, Fujitsu’s petition is not only substantively deficient, but it also
`
`presents the same, or substantially the same, prior art and arguments as Cisco’s
`
`petition. For either of these reasons, Fujitsu’s petition should be denied.
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`Case IPR2015-00726 of
`U.S. Patent No. RE42,368
`
`II. Background
`The ’368 patent relates to switching in optical-fiber networks. In particular,
`
`this patent discloses a novel class of dynamically reconfigurable optical add/drop
`
`multiplexers (“ROADMs”).
`
`A. Optical networks need switches.
`Telecommunications companies use optical fiber to transmit telephone
`
`signals, Internet communications, and cable-television signals. Multiple signals can
`
`be transmitted on a single optical fiber by using a technique known as wavelength
`
`division multiplexing (“WDM”). In WDM, various wavelengths of light travel
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`along an optical fiber at the same time, each wavelength carrying specific data
`
`intended for delivery to a specific location.
`
`To route the signals to the appropriate location, fiber-optic networks include
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`switching devices. These switching devices are located at hubs or nodes, where
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`line segments of fiber-optic cable intersect.
`
`In modern networks, switching is accomplished by reconfigurable optical
`
`add/drop multiplexers or ROADMs. In these ROADMs, switching occurs on the
`
`wavelength level, meaning a ROADM can separate all the wavelengths of light
`
`entering the device and route them in different directions depending on the
`
`ROADM’s configuration. ROADMs can drop certain wavelengths from a fiber or
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`Case IPR2015-00726 of
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`add new wavelengths to that fiber. ROADMs can also control flow across fiber-
`
`optic cables.
`
`In addition to their switching capabilities, ROADMs can also control the
`
`output power on the output ports of the optical switch. As a result, ROADMs can
`
`provide high uniformity or equalization in the power level of the channels across
`
`all-optical networks. One way ROADMs control power output is through
`
`deliberate angular displacement or misalignment of the light beam from the output
`
`waveguide. This displacement or misalignment controls the coupling between the
`
`light beam and the output waveguide.
`
`B. Conventional optical switches were not scalable.
`The inventors identified the following deficiencies in conventional optical
`
`switches: (1) intrinsically static wavelength routing; (2) add and/or drop channels
`
`that had to be multiplexed or demultiplexed; (3) the need for stringent fabrication
`
`tolerance and optical alignment that was unable to be actively maintained; (4) the
`
`need for systematic power maintenance of the spectral channels; and (5) high cost
`
`and heavy optical loss. ’368 patent, 3:20-46.
`
`For example, in connection with their discussion of the OADM disclosed by
`
`Aksyuk8, the inventors explained that conventional optical switches required
`
`
`8 U.S. Patent No. 6,204,946 to Aksyuk et al. (Ex. 1027).
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`Case IPR2015-00726 of
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`multiplexers and demultiplexers. The inventors explained that Aksyuk’s OADM
`
`had a single input port for both the input signal and the pass-through signal. Id.,
`
`2:43-45. To properly route these two signals, Aksyuk had to couple an optical
`
`circulator to the single input port. Id., 2:45-46. Similarly, Aksyuk’s OADM had a
`
`single output port where the add and drop signals respectively entered and left the
`
`OADM. Id., 2:46-49. As a result, Aksyuk had to couple another optical circulator
`
`to the output port for proper routing of the add and drop signals. Id. The optical
`
`circulator coupled to the single input port was necessary “to multiplex the add
`
`channels before entering the system,” and the optical circulator coupled to the
`
`single output port was necessary “to demultiplex the drop channels after exiting the
`
`system.” Id., 2:49-52. “This additional multiplexing/demultiplexing requirement
`
`adds more cost and complexity that can restrict the versatility of the OADM thus-
`
`constructed.” Id., 2:52-54.
`
`C. The claimed invention provides a scalable switch (ROADM) with
`multiple collimator ports.
`
`Recognizing the limitations of circulator-based optical switches, the
`
`inventors of the ’368 patent disclosed a multi-port system for optical switching that
`
`is “intrinsically scalable to a large number of channel counts.” ’368 patent, 5:51-
`
`58. In particular, the inventors found that by continuously controlling beam-
`
`deflecting elements, they could reflect signals to multiple collimator output ports
`
`without using circulators. See id., 4:7-14.
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`Case IPR2015-00726 of
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`The inventors aligned a plurality of collimator ports, a diffraction grating, a
`
`lens, and a micromirror array in a configuration capable of directing an input light
`
`beam to multiple collimator output ports. See, e.g., id., FIG. 1A. The configuration
`
`disclosed in the ’368 patent not only enabled dynamic switching, but also reduced
`
`the number of components required to scale the system. For example, adding a
`
`collimator port 110-N to the array of collimator ports 110 could seamlessly
`
`accommodate an additional input to the system or an additional output from the
`
`system. See ’368 patent, FIGS. 1A, 2A, 2B, 3; see also Ex. 2002, Holliday R-
`
`OADMs, p. 61 (“Capella’s WavePath product line [(which uses the technology
`
`disclosed in the ’368 patent)] enables system architects to design optical platforms
`
`that offer dynamic and remote reconfigurability, thus greatly simplifying the
`
`engineering and provisioning of optical networks.”); Ex. 2003, WavePath, pp. 1, 4
`
`(showing that the WavePath product line is covered by the ’368 patent).
`
`The system in Figures 1A and 1B (both reproduced below) depict a
`
`preferred embodiment showing the claimed features of the ’368 patent. The system
`
`has an array of micromirrors that are individually and continuously controllable to
`
`reflect individual channels into a selected collimator output port among the
`
`multiple collimator ports. See, e.g., ’368 patent, Abstract, FIG. 1A. The system
`
`also has a diffraction grating 101 to demultiplex and multiplex a light beam, and a
`
`focusing lens 102 to focus the light beam’s wavelengths onto the array of
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`micromirrors 103. Id., 6:52-63. Further, the system has, as circled in red below,
`
`multiple collimators 110 serving as the input and output ports. Id. According to the
`
`’368 patent, a collimator is “typically in the form of a collimating lens (such as a
`
`GRIN lens) and a ferrule-mounted fiber packaged together in a mechanically rigid
`
`stainless steel (or glass) tube.” Id., 9:17-20.
`
`Figures 1A and 1B of the ’368 Patent
`
`
`
`In the system, a multi-wavelength light beam is first sent through the input
`
`
`
`
`
`port. See id., 6:64-7:11. The input light beam impinges on the diffraction grating to
`
`demultiplex the light beam into individual wavelengths. See id. The individual
`
`wavelengths then diffract off the diffraction grating toward the lens. See id. And
`
`the lens focuses the individual wavelengths onto different mirrors along the
`
`micromirror array. See id.
`
`A unique feature of the system is that the micromirrors are individually,
`
`dynamically, and continuously controllable in two dimensions. See id., 8:21-27,
`
`9:8-9. The mirror’s controllability enables the system to dynamically reflect light
`
`to the multiple output ports. See id. Because the individual wavelengths are
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`focused onto different mirrors along the micromirror array and because the
`
`micromirrors are individually and continuously controllable, the tilt of the
`
`micromirrors reflects the individual wavelengths back along a selected path to a
`
`desired output port. See id., 6:64-7:11. This enables the system to scale to a larger
`
`number of output ports.
`
`The individually and continuously controllable mirrors are used not only for
`
`switching, but also for power control. See id., 8:28-36. The system controls power
`
`by altering the coupling efficiency of the spectral channels into the respective
`
`output ports. See id. The coupling efficiency is defined as the ratio of the amount
`
`of optical power that is coupled into the output port’s fiber core to the total amount
`
`of optical power from the light beam. Id., 8:31-36.
`
`To monitor power, embodiments of the ’368 patent use servo-control. Id.,
`
`4:47-56, 11:52-57. An embodiment of the servo-control assembly is depicted in
`
`Figure 4A. See id., FIG. 4A.
`
`Claim 1, reproduced below, is illustrative of the subject matter at issue here:
`
`1. An optical add-drop apparatus comprising
`an input port for an input multi-wavelength optical signal
`having first spectral channels;
`one or more other ports for second spectral channels;
`an output port for an output multi-wavelength optical signal;
`a wavelength-selective device for spatially separating said
`spectral channels;
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`Case IPR2015-00726 of
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`a spatial array of beam-deflecting elements positioned such
`that each element receives a corresponding one of said spectral
`channels, each of said elements being individually and
`continuously controllable in two dimensions to reflect its
`corresponding spectral channel to a selected one of said ports
`and to control the power of the spectral channel reflected to said
`selected port.
`III. Claim Construction
`Patent Owner contends that no term requires an express construction.
`
`Instead, each claim term should be given its plain and ordinary meaning.
`
`For its part, Fujitsu asks the Board to engage in a pointless claim-
`
`construction exercise. Despite admitting that none of its “challenges” turn on the
`
`construction of any particular term, Fujitsu nonetheless invites the Board to
`
`construe four different terms. 9 Pet. at 8. The Board should decline this invitation as
`
`a needless waste of resources, as it did in Cisco’s IPR. See Cisco’s IPR, Institution
`
`Decision at 9-12. Indeed, judges are not required to “repeat or restate every claim
`
`term in order to comply with the ruling that claim construction is for the court.”
`
`
`9 Fujitsu proposes constructions for the following terms: (1) “in two
`
`dimensions”; (2) “continuously controllable”/“controlling . . . continuously”; (3)
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`“beam-deflecting elements”; and (4) “servo-control assembly.” Pet. at 8-13.
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`U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997).
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`Accordingly, no express construction should be given to any claim terms.
`
`IV. Fujitsu’s Petition Should Be Denied as Redundant to Cisco’s Petition,
`which Fujitsu Has Already Asked to Join.
`
`The Board has held that horizontal redundancy in a petition, or across
`
`petitions on the same patent, is cause for denial of grounds. The Board has also
`
`held that it is improper when a petitioner files a second petition trying to cure
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`deficiencies in a first petition—the so-called second bite at the apple. The Board
`
`should deny this petition for similar reasons. First, this petition is one of four
`
`petitions filed against the ’368 patent, and the first of two petitions Fujitsu filed
`
`against the ’368 patent. Second, a stay of the litigation against Fujitsu was granted
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`only because Fujitsu agreed to be bound by Cisco’s IPR. And third, all of the
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`Grounds in this petition are cumulative and unnecessary in view of the instituted
`
`Grounds in Cisco’s IPR.
`
`A.
`
`Fujitsu’s petition is one of four petitions that have been filed
`against the ’368 patent.
`
`Cisco filed the first on July 15, 2014. See Cisco Systems, Inc. v. Capella
`
`Photonics, Inc., IPR2014-01166, Paper 2. In that petition, Cisco relied on one
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`primary reference—Bouevitch—and three secondary references—Smith, Lin, and
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`Dueck10. Id. at 4. Based on these four references, Cisco presented the following
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`four grounds for review:
`
`Cisco’s
`Grounds
`1
`
`2
`
`3
`
`4
`
`Challenged Claims
`
`Type
`
`References
`
`1-6, 9-13 and 15-22
`
`§ 103 Bouevitch and Smith
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`1-6, 9-13 and 15-22
`
`§ 103 Bouevitch, Smith, and Lin
`
`12
`
`12
`
`§ 103 Bouevitch, Smith, and Dueck
`
`§ 103 Bouevitch, Smith, Lin, and Dueck
`
`In a decision dated January 30, 2015, the Board instituted trial on two of
`
`Cisco’s proposed grounds—namely, Ground 2 and Ground 4. Cisco’s IPR,
`
`Institution Decision at 20. But the Board exercised its discretion and denied trial on
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`Cisco’s other proposed grounds in order “to ensure timely completion of the
`
`instituted proceeding.” Id.
`
`Fujitsu then filed this second IPR petition against the ’368 patent on
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`February 12, 2015 (“’726 petition”). Like Cisco, Fujitsu also relied on Smith and
`
`Bouevitch. Pet. at 14-15. Fujitsu also included three secondary references—Carr,
`
`
`10 U.S. Patent No. 6,011,884 to Dueck.
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`Sparks, and Tew. Id. Based on these five references, Fujitsu proposed the
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`following six grounds for review:
`
`Fujitsu’s
`Grounds Challenged Claims
`1
`1-6, 9-12, 15-22
`
`Type
`
`References
`
`§ 102 Smith
`
`2
`
`3
`
`4
`
`5
`
`6
`
`1, 2, 5, 6, 9-12, 15-21
`
`§ 103 Bouevitch in view of Carr
`
`1-4, 17, 22
`
`§ 103 Bouevitch in view of Sparks
`
`1-6, 9-12, 15-22
`
`§ 103 Smith in view of Tew
`
`1, 2, 5, 6, 9-12, 15-21
`
`§ 103 Bouevitch in view of Carr and Tew
`
`1-4, 17, 22
`
`§ 103 Bouevitch in view of Sparks and Tew
`
`After Fujitsu’s petition, JDS Uniphase Corporation filed the third IPR
`
`petition against the ’368 patent on February 13, 2015. See IPR2015-00731, Paper
`
`1. JDS relied solely on references that are found in either Cisco’s petition or
`
`Fujitsu’s petition—namely, Bouevitch, Sparks, Lin, and Dueck. Id.
`
`The fourth IPR petition was filed by Cisco’s co-defendants from the co-
`
`pending/stayed district-court action: Ciena Corporation; Coriant Operations, Inc.;
`
`Coriant (USA) Inc.; and Fujitsu. See IPR2015-00816, Paper 1 (“’816 petition”). In
`
`other words, Fujitsu has filed two redundant petitions against the ’368 patent: the
`
`’726 petition (to which this paper responds); and the ’816 petition. The ’816
`
`petition seeks review and joinder as it is based on the same two grounds that were
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`Case IPR2015-00726 of
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`adopted by the Board in connection with Cisco’s petition: (i) claims 1-6, 9-11, 13,
`
`and 15-22 as allegedly obvious over Bouevitch in view of Smith and Lin; and (ii)
`
`claim 12 as allegedly obvious over Bouevitch in view of Smith, Lin, and Dueck.
`
`Id.
`
`B. Cisco’s IPR resulted in a stay of the co-pending district-court
`action.
`
`On the same day that Fujitsu filed its IPR petition, Cisco moved to stay a
`
`district-court action brought by Patent Owner against Cisco, Fujitsu, and others.
`
`Ex. 2004, Cisco’s Mot. for Stay. Before acting on Cisco’s motion to stay, the
`
`district court asked whether Fujitsu and its non-Cisco co-defendants “would agree
`
`to be bound by the estoppel provisions of section 315(e)(2) if the [c]ourt conditions
`
`a stay in this case on such agreement.” Ex. 2005, 14-cv-03348 Slip op. at 4
`
`(internal quotation omitted). In response, Fujitsu and its non-Cisco co-defendants
`
`“agree[d] to be bound to the estoppel applicable to Cisco for Cisco’s IPRs as set
`
`forth in 35 U.S.C. § 315(e)(2) to the extent that the [c]ourt conditions a stay in this
`
`case on such an agreement.” Id. Based on that agreement, the district court action
`
`was stayed. Id.
`
`C. The Board should deny Fujitsu’s petition because Fujitsu’s
`references and Cisco’s references are redundant.
`
`Not only does Fujitsu rely on substantially the same references as Cisco to
`
`make substantially the same arguments, Fujitsu provides no required “meaningful
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`distinction” argument in its petition as to why the redundant Grounds should be
`
`instituted. Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`
`CBM2012-00003, Paper 7 at 2 (P.T.A.B. Oct. 25, 2012). The Board should,
`
`therefore, exercise its discretion and deny Fujitsu’s petition in its entirety.
`
`Under 35 U.S.C. § 314(a), the Board has discretion whether to institute an
`
`inter partes review. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.,
`
`IPR2013-00324, Paper 19 at 4 (P.T.A.B. Nov. 21, 2013) (“[B]y stating [in 35
`
`U.S.C. § 314(a)] that the Director—and by extension, the Board—may not institute
`
`review unless certain conditions are met, Congress made institution
`
`discretionary.”) (emphasis in original). The Board regularly exercises this
`
`discretion to deny IPR petitions that present the same, or substantially the same,
`
`prior art and arguments as another IPR petition. See, e.g., Google Inc. v. SimpleAir,
`
`Inc., CBM2014-00170, Paper 13 at 22-23 (P.T.A.B. Jan. 22, 2015) (denying
`
`institution in part because a ground was the same or substantially the same as a
`
`ground in a different petition submitted by a different party); Unilever, Inc. d/b/a
`
`Unilever v. Proctor & Gamble Co., IPR2014-00506, Paper 17 at 5-8 (P.T.A.B. Jul.
`
`7, 2014) (denying a second IPR petition when the petitioner did not justify how it
`
`differed from a first IPR petition on the same patent); Medtronic, Inc. v. Robert
`
`Bosch Healthcare Sys., Inc., IPR2014-00436, Paper 17 at 11-12 (P.T.A.B. Jun. 19,
`
`2014) (same); Intelligent Bio-Systems, IPR2013-00324, Paper 19 at 6-7 (same).
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`The Board should exercise that same discretion here because Fujitsu’s
`
`petition and Cisco’s petition are redundant. Again, Fujitsu’s primary references—
`
`Smith and Bouevit