`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`FUJITSU NETWORK COMMUNICATIONS, INC.
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`Inter Partes Review Case No. IPR2015-00726
`Patent No. RE42,368
`
`PETITIONER’S MOTION TO FILE SUPPLEMENTAL INFORMATION
`UNDER 37 C.F.R. § 42.123(b)
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2015-00726
`Petitioner’s Motion to File Supplemental Information
`
`
`Pursuant to the conference call held on October 29, 2015 and the Order
`
`dated October 30, 2015 (Paper No. 14) that granted authorization to file the present
`
`motion, Petitioner Fujitsu Network Communications, Inc. (“FNC”) hereby moves
`
`to submit Exhibit 1037 Declaration of Joseph E. Ford and Exhibit 1038 Curriculum
`
`Vitae of Joseph E. Ford (collectively, Exhibits 1037 and 1038) as supplemental
`
`information pursuant to 37 C.F.R. § 42.123(b).
`
`Because FNC did not know that cross-examination of its expert declarant,
`
`Timothy Drabik, Ph.D would not occur prior to his sudden and unfortunate death,
`
`FNC could not have earlier presented Exhibits 1037 and 1038 and the admission
`
`into the record of Exhibits 1037 and 1038 proffered by additional declarant, Joseph
`
`Ford, Ph.D, is in the interests of justice. Thus, FNC respectfully requests that this
`
`motion be granted.
`
`I.
`
`FACTS
`
`On September 11, Patent Owner Capella Photonics, Inc. (“Patent Owner”)
`
`requested a deposition of Dr. Drabik during the last week of October. Although
`
`Dr. Drabik was available in September and Patent Owner could have requested a
`
`deposition in September, Patent Owner chose to wait until the end of October.
`
`On September 16, FNC informed Patent Owner that a deposition of Dr.
`
`Drabik the last week of October should work. At that time, FNC had no
`
`information about Dr. Drabik’s condition and fully expected that he would be
`1
`
`
`
`
`
`Case No. IPR2015-00726
`Petitioner’s Motion to File Supplemental Information
`
`
`available for deposition as requested.
`
`On September 28, FNC learned that Dr. Drabik was sick and informed
`
`Patent Owner that same day that the deposition would have to be re-scheduled. At
`
`that time, FNC fully expected Dr. Drabik to recover in a timely manner. FNC and
`
`Patent Owner discussed the possibility of extending due dates to allow time for Dr.
`
`Drabik to recover so Patent Owner could take his deposition before submitting a
`
`response to the petition. Patent Owner requested updates about Dr. Drabik’s
`
`condition every week or two and FNC provided the requested updates.
`
`On October 8, FNC informed Patent Owner that Dr. Drabik had been
`
`admitted to the hospital. At that time, based on available information received
`
`from a contact of Dr. Drabik’s, FNC still expected Dr. Drabik to recover.
`
`On October 11, FNC was surprised to learn that Dr. Drabik had entered a
`
`hospice program and shortly thereafter informed counsel for Patent Owner that it
`
`did not expect Dr. Drabik would be available for deposition. FNC proposed
`
`waiving cross-examination or alternatively obtaining permission to submit
`
`substantively identical additional declarations signed by another expert if Patent
`
`Owner demanded cross-examination. While waiting for a response from Patent
`
`Owner on these proposals, FNC learned that Dr. Drabik passed away.
`
`On October 26, FNC informed Patent Owner that Dr. Drabik had passed
`
`away and again sought Patent Owner’s position on waiving cross-examination and
`2
`
`
`
`
`
`Case No. IPR2015-00726
`Petitioner’s Motion to File Supplemental Information
`
`
`the submission of an additional declaration by another expert. After Patent Owner
`
`did not agree to these proposals, FNC contacted the Board for guidance on this
`
`issue. On the October 29 call, FNC requested permission to file a substantively
`
`identical additional declaration, proposed that the additional expert would be made
`
`available for deposition thereafter, and offered a reasonable extension of due dates.
`
`II. APPLICABLE STANDARD
`
`A motion to submit supplemental information must generally “show why the
`
`supplemental information reasonably could not have been obtained earlier, and that
`
`consideration of the supplemental information would be in the interests-of-justice.”
`
`37 C.F.R. § 42.123(b); see also BioMarin Pharma. Inc. v. Genzyme Therapeutic
`
`Prods. Ltd. P’Ship, IPR2013-00534, Paper 80 (Jan. 7, 2015) (“[W]e waive the
`
`requirement of 37 C.F.R. § 42.123(b) that a party show that the supplemental
`
`information reasonably could not have been obtained earlier. 37 C.F.R. § 42.5(b)
`
`(permitting the Board to waive or suspend a requirement of parts 1, 41, and 42)”).
`
`III. ARGUMENT
`
`A. Due to Dr. Drabik’s Sudden Passing, FNC Could Not Have Obtained
`Exhibits 1037 and 1038 Earlier
`
`FNC could not have obtained the supplemental information earlier because it
`
`had no knowledge that Patent Owner would not take cross-examination of Dr.
`
`Drabik prior to his sudden and unfortunate death. As explained above, in mid-
`
`
`
`3
`
`
`
`Case No. IPR2015-00726
`Petitioner’s Motion to File Supplemental Information
`
`
`September FNC fully expected Dr. Drabik to be available for deposition in late
`
`October even though Patent Owner could have deposed Dr. Drabik in September.
`
`At the time he became sick, FNC did not know that Dr. Drabik would not recover.
`
`While Dr. Drabik was sick, FNC advised Patent Owner about what was known of
`
`Dr. Drabik’s condition as soon as new information was learned. FNC advised
`
`Patent Owner upon learning of Dr. Drabik’s passing and FNC promptly sought the
`
`present relief. FNC could not have obtained the supplemental information earlier
`
`as it had no reason to seek the supplemental information before learning that Dr.
`
`Drabik was deceased.
`
`B. Consideration of Exhibits 1037 and 1038 Is in the Interests of Justice
`
`Moreover, consideration of the supplemental information is in the interests-
`
`of-justice because it accommodates Patent Owner’s demand for cross-examination
`
`and there is no prejudice. Exhibit 1037 is substantively identical to Exhibit 1016
`
`Dr. Drabik’s declaration, which was submitted at the time of filing the petition.
`
`Exhibit 1037 maintains the same paragraph numbers from Exhibit 1016.
`
`Following the procedure provided in Corning Gilbert Inc. v. PPC Broadband, Inc.,
`
`IPR2013-00347, Paper 20 (Jan. 2, 2014), Dr. Ford’s qualifications in Exhibit 1037
`
`appear in later paragraphs, and blank spaces are used to occupy the paragraphs that
`
`previously expressed the qualifications of Dr. Drabik. Exhibit 1038 further
`
`explains the qualifications of Dr. Ford.
`
`
`
`4
`
`
`
`Case No. IPR2015-00726
`Petitioner’s Motion to File Supplemental Information
`
`
`The supplemental information sought to be submitted does not change the
`
`grounds of unpatentability authorized in this proceeding, and it does not change the
`
`evidence presented with the petition to support those grounds of unpatentability.
`
`See BioMarin, IPR2013-00534, Paper 80 at 5. Rather, Exhibits 1037 and 1038
`
`simply accommodate Patent Owner’s demand to conduct cross-examination and
`
`permit the proceeding to move forward without delay. By quickly locating an
`
`additional declarant and promptly submitting the present motion, FNC has taken
`
`considerable effort to make sure that the supplemental information would not
`
`affect the Board’s ability to complete this proceeding in a timely manner.
`
`Furthermore, there is no possible prejudice by filing the supplemental
`
`information because Patent Owner will have sufficient opportunity to cross-
`
`examination Dr. Ford. The parties have extended Due Date 1 from November 24
`
`until December 23, 2015, which affords Patent Owner more than five weeks from
`
`today’s date to take Dr. Ford’s deposition and submit a response to the petition. It
`
`is believed that no other due dates will be affected by this motion. Thus, the
`
`interests-of-justice are well served by the consideration of Exhibits 1037 and 1038.
`
`Dated: November 11, 2015
`28 Liberty Street
`
`
`New York, New York 10005
`Tel: (212) 530-5000
`
`
`
`
`
`Respectfully submitted,
`MILBANK, TWEED, HADLEY & MCCLOY LLP
`
`/Christopher E. Chalsen/
`Christopher E. Chalsen
`Registration No. 30,936
`
`
`
`5
`
`
`
`Case No. IPR2015-00726
`Petitioner’s Motion to File Supplemental Information
`
`
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies that
`
`
`
`
`
`on November 11, 2015, a complete and entire copy of this PETITIONER’S
`
`MOTION TO FILE SUPPLEMENTAL INFORMATION UNDER 37 C.F.R.
`
`§ 42.123(b) and EXHIBITS 1037 and 1038 were served electronically via email on
`
`the following counsel of record for Patent Owners:
`
`Jason D. Eisenberg (Lead Counsel)
`Robert Greene Sterne (Back-up Counsel)
`Jon E. Wright (Back-up Counsel)
`Jonathan Tuminaro (Back-up Counsel)
`
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`E-mail: jasone-PTAB@skgf.com
`E-mail: rsterne-PTAB@skgf.com
`E-mail: jwright-PTAB@skgf.com
`E-mail: jtuminar-PTAB@skgf.com
`
`
`
` /Christopher E. Chalsen/
`Christopher E. Chalsen
`Registration No. 30,936