UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`FUJITSU NETWORK COMMUNICATIONS, INC.
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`_____________________
`
`Case IPR2015-00726
`Patent RE42,368
`_____________________
`
`
`
`
`
`
`
`
`PATENT OWNER’S OPPOSITION TO 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
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`FUJITSU NETWORK COMMUNICATIONS, INC.
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`_____________________
`
`Case IPR2015-00726
`Patent RE42,368
`_____________________
`
`
`
`
`
`
`
`
`PATENT OWNER’S OPPOSITION TO 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 IPR2015-00726
`Patent RE42,368
`
`EXHIBIT LIST
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`Ex. No.
`2001
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`2002
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`2003
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`2004
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`2005
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`2006
`2007
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`2008
`2009
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`2010
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`2011
`
`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%20Prod
`uct%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”)
`Transcript of Patent Trial and Appeal Board Conference Call for
`Cases IPR2014-01166 (merged with IPR2015-00816), IPR2014-
`01276 (merged with IPR2015-00894), IPR2015-00726, and
`IPR2015-00727, dated September 23, 2015.
`Transcript of Patent Trial and Appeal Board Conference Call for
`Cases IPR2015-00726 and IPR2015-00727, dated October 29, 2015.
`Redline Comparison of Paragraph 155 of Drabik Declaration (Ex.
`1016) and Ford Declaration (Ex. 1037)
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`Case IPR2015-00726
`Patent RE42,368
`Over two months after institution, Petitioner asks the Board to accept the
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`declaration and credentials of a new expert, Dr. Joseph Ford. The Board should
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`deny this request for two reasons. First, the declaration of Dr. Ford (Ex. 1037)
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`contains new testimony regarding the alleged motivation to combine the Bouevitch
`
`and Sparks references. Compare Ex. 1037, New Ford Decl. ¶ 155; with Ex. 1016,
`
`Drabik Decl. ¶ 155. Second, Petitioner’s explanation for the delay in proffering Dr.
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`Ford’s declaration is insufficient to meet the “interests-of-justice” standard.
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`Petitioner also says that Drabik’s declaration should remain in the record as
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`evidence in support of the Petition even if its motion for supplemental information
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`is granted. Ex. 2010, Conf. Call. Tr. 21:6-22:9. The Board should expunge
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`Drabik’s declaration because reliance on it violates the rules of routine discovery,
`
`the rules of evidence, curtails due process, and unfairly prejudices Capella.
`
`A. New Exhibit 1037 is not “substantively identical” to Exhibit 1016; it
`contains new testimony regarding alleged motivation to combine.
`
`During the October 29, 2015 conference call with the Board, Capella
`
`explained that allowing a new declaration at this stage would be unfair because
`
`Petitioner could supplement the evidence originally relied upon with the benefit of
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`seeing Capella’s Preliminary Response and the Board’s Institution Decision. Ex.
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`2010, Conf. Call. Tr. 17:24-18:4. Petitioner assured the Board that it would not do
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`this. Id. at 22:15-22 (“Yes, Your Honor. You know, Patent Owner’s suspicion that
`
`we would take the opportunity to change the contents of the declaration [is] simply
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`Case IPR2015-00726
`Patent RE42,368
`false.”). And Petitioner affirmatively represented in its motion that the new and
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`originally filed declarations are “substantively identical.” Paper 17, Motion, p. 4
`
`(“Exhibit 1037 is substantively identical to Exhibit 1016”). They are not.
`
`Unlike the originally submitted Drabik Declaration (Ex. 1016), the Ford
`
`Declaration (Ex. 1037) contains new testimony relating to the alleged motivation
`
`to combine Bouevitch and Sparks—one of the instituted grounds. Compare Ex.
`
`1037, Ford Decl. ¶ 155 with Ex. 1016, Drabik Decl. ¶ 155; see also Ex. 2011
`
`(highlighting new text added to ¶ 155 generated by comparing Ex. 1016 with Ex.
`
`1037). For example, Dr. Ford’s paragraph 155 includes new explanation relating
`
`to, among other things: (a) the alleged relatedness of the subject matter between
`
`the references; (b) allegedly similar applications to which the references are
`
`directed; (c) alleged similarities between the references; (d) new allegations that
`
`using aspects of one reference in the other would have been “nothing more than
`
`using known techniques to improve similar devices”; and (e) new expert testimony
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`from Dr. Ford relating to what the skilled artisan allegedly would have been
`
`motivated to do at the time with respect to specific aspects of each reference. These
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`changes are substantive, extensive, and material to an instituted ground.1
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`1 Petitioner may argue that it has merely replaced the phrase “the motivations
`
`to combine of Point 1 are hereby incorporated by reference” with explanation that
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`appears elsewhere in the Drabik Declaration. Capella disagrees. “Point 1” relates to
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`Case IPR2015-00726
`Patent RE42,368
`Permitting Petitioner to supplement its originally filed declaration in this
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`way would contravene 35 U.S.C. § 312(a)(3)(B) and 37 C.F.R. § 42.104(b)(5),
`
`which require the petition to identify with particularity the evidence supporting the
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`challenge. See also Mitsubishi Plastics, Inc. v. Celgard, LLC, IPR2014-00524,
`
`Paper 30, pp. 5-6 (Nov. 28, 2014). Indeed, the Board has repeatedly denied
`
`requests that attempt to supplement the petition with the unfair benefit of hindsight.
`
`See, e.g., Redline Detection, LLC v. Star Envirotech, Inc., IPR2013-00106, Paper
`
`24, p. 4 (Aug. 5, 2013); ZTE Corp. v. ContentGuard Holdings, IPR2013-00139,
`
`Paper 27, p. 3 (Jul. 30, 2013). The Board should do the same here.
`
`B.
`
`The standard for filing supplemental information under Rule 123(b) has
`not been met; the evidence reasonably could have been obtained earlier.
`
`As the proponent of the supplemental information, it is Petitioner’s burden
`
`to show that it “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). Petitioner argues that it could not have obtained the
`
`supplemental information earlier as it had no reason to seek this information before
`
`learning that Dr. Drabik “was deceased.” Paper 17, Motion, p. 4. But Petitioner
`
`
`the disclosure of a different reference, Smith. The new explanation attempts to
`
`describe the specific features of Bouevitch with respect to the specific features of
`
`Sparks. That is precisely the type of supplementation that should not be permitted.
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`Case IPR2015-00726
`Patent RE42,368
`provides no reason why Ford’s declaration could not have been submitted earlier.
`
`Instead, Petitioner suggests that the Board should waive the requirements of Rule
`
`42.123(b). Id. at 3. These requirements should not be waived. Unlike the case cited
`
`by Petitioner, Ford’s declaration changes the evidence originally relied upon, and
`
`allowing its entry at this stage of the proceeding would not be in the interests of
`
`justice. Petitioner knew as early as September 28, 2015 that Dr. Drabik was too
`
`sick to be deposed. Id. at 2. Yet Petitioner does not attest to when it first learned
`
`that Dr. Drabik’s health could interfere with the case schedule or when he had been
`
`hospitalized. These dates matter because Petitioner had a duty to seek out the
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`supplemental information at least upon learning that Dr. Drabik’s condition was
`
`critical, if not as soon as Petitioner knew that he was too sick to be deposed.
`
`Petitioner does not recount any diligence undertaken from the time it learned
`
`of Dr. Drabik’s condition. Rather, Petitioner blames Capella for scheduling the
`
`deposition in October and for refusing to agree to forego cross-examination. But
`
`Capella had no knowledge of Dr. Drabik’s condition. Petitioner’s accusations do
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`not explain or justify its own delay with respect to satisfying the requirements of
`
`Rule 42.123(b). Nor is it reasonable for Petitioner to assert that it had no obligation
`
`to seek out the supplemental information until after its witness was deceased. It
`
`could have done so any time before. Capella should not be disadvantaged because
`
`Petitioner chose to delay taking action to mitigate the situation until now. In fact,
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`Case IPR2015-00726
`Patent RE42,368
`rather than trying to mitigate the unfair prejudice to Capella, Petitioner has taken
`
`advantage of the situation by supplementing its previously submitted testimony.
`
`C. Drabik’s Declaration cannot be relied upon and must be expunged or
`stricken as contrary to the rules of routine discovery and due process.
`Petitioner argued that Drabik’s declaration should not be expunged even if a
`
`new declaration is entered. Ex. 2010, Conf. Call. Tr. 21:6-22:9. Capella disagrees.
`
`Consideration of Drabik’s declaration violates the rules of discovery and evidence
`
`and curtails due process. The rules governing routine discovery dictate that the
`
`proponent of a witness’s testimony must make that witness available for cross-
`
`examination. 37 C.F.R. §§ 42.51-42.53; 77 Fed. Reg. 48756, 48761 (Aug. 14,
`
`2012); 37 C.F.R. § 42.53(g); Goldberg v. Kelly, 397 U.S. 254, 269 (1970) (due
`
`process requires an opportunity to cross-examine). The unavailability of a witness
`
`is not uncommon, and the risk of exclusion is one that every proponent of evidence
`
`takes. See, e.g., HTC Corp. et al. v. NFC Tech, LLC, IPR2014-01198, Paper 41
`
`(Nov. 6, 2015); John’s Lone Star Distribution v. Thermolife, IPR2014-01201,
`
`Paper 31 at 3 (May 13, 2015); see also Fed. R. Evid. 804.
`
`The Board also has authority and discretion to strike such testimony under
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`37 C.F.R. §§ 42.12(a)(1) and (b)(2), as well as under 37 C.F.R. § 42.5(a). John’s
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`Lone Star Distribution v. Thermolife, IPR2014-01201, Paper 31 at 3 (May 13,
`
`2015). Accordingly, if the Board here declines to expunge the Drabik Declaration,
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`it should provide Capella with an opportunity to move to strike it.
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`Case IPR2015-00726
`Patent RE42,368
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`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jonathan Tuminaro/
`
`Jonathan Tuminaro
`Registration No. 61,327
`Attorney for Patent Owner
`
`
`
`Date: November 18, 2015
`
`
`
`1100 NEW YORK AVENUE, NW
`WASHINGTON, D.C. 20005
`(202) 371-2600
`
`
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`Case IPR2015-00726
`Patent RE42,368
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`OPPOSITION TO PETITIONER’S MOTION TO FILE SUPPLEMENTAL
`
`INFORMATION UNDER 37 C.F.R. 42.123(b) and the accompanying exhibit
`
`were served electronically via e-mail on November 18, 2015, in their entirety on
`
`Attorneys for Petitioner – Fujitsu Network Communications, Inc.:
`
`Christopher E. Chalsen (Lead Counsel)
`Lawrence T. Kass (Back-up Counsel)
`Nathaniel T. Browand (Back-up Counsel)
`Suraj K. Balusu (Back-up Counsel)
`
`
`MILBANK, TWEED, HADLEY & MCCLOY LLP
`28 LIBERTY STREET
`NEW YORK, NEW YORK 10005
`(212) 530-5380
`
`cchalsen@milbank.com
`lkass@milbank.com
`nbrowand@milbank.com
`sbalusu@milbank.com
`
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jonathan Tuminaro/
`
`Jonathan Tuminaro
`Registration No. 61,327
`Attorney for Patent Owner
`
`
`
`Date: November 18, 2015
`
`
`
`1100 NEW YORK AVENUE, NW
`WASHINGTON, D.C. 20005
`(202) 371-2600
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