Paper 19
`Date: November 23, 2015
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`FUJITSU NETWORJ COMMUNICATIONS, INC.,
`Petitioner,
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`v.
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`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
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`Case IPR2015-00726
`Patent RE42,368 E
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`Before JOSIAH C. COCKS, KAYLAN K. DESPHANDE and
`JAMES A. TARTAL, Administrative Patent Judges.
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`COCKS, Administrative Patent Judge.
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`DECISION
`Motion to File Supplemental Information
`37 C.F.R. § 42.123(b)
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`IPR2015-00726
`Patent RE42,368 E
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`1. Introduction
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`As was authorized (see Paper 14), Petitioner, Fujitsu Network
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`Communication, Inc. (“Fujitsu” or “Petitioner”) filed a “Petitioner’s Motion to File
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`Supplemental Information Under 37 C.F.R. § 42.123(b).” Paper 17, “Motion.” As
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`also authorized, Patent Owner, Capella Photonics, Inc. (“Capella” or “Patent
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`Owner”) filed a “Patent Owner’s Opposition To Petitioner’s Motion To File
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`Supplemental Information Under 37 C.F.R. § 42.123(b).” Paper 18, “Opposition.”
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`For the reasons set forth below, Fujitsu’s Motion is granted.
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`2. Discussion
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`Pursuant to 37 C.F.R. § 42.123(b), a party seeking to submit supplemental
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`information more than one month after the date a trial is instituted, “must show
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`why the supplemental information reasonably could not have been obtained earlier,
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`and that consideration of the supplemental information would be in the interests-
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`of-justice.” Here, Fujitsu’s request for the late submission of supplemental
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`information arises due to the unexpected death of its declarant, Dr. Timothy
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`Drabik, which occurred before Capella had opportunity to cross-examine
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`Dr. Drabik. The supplemental information that Fujitsu seeks to enter into this
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`proceeding is a substitute Declaration of Dr. Joseph E. Ford (Ex. 1037) along with
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`Dr. Ford’s curriculum vitae (Ex. 1038). Fujitsu represents that Dr. Ford’s
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`Declaration is “substantively identical” to that of Dr. Drabik. Motion 3. Fujitsu
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`also represents that “consideration of the supplemental information is in the
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`interests-of-justice because it accommodates Patent Owner’s demand for cross-
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`examination and there is no prejudice.” Id. at 4.
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`Capella opposes entry of Dr. Ford’s Declaration on the ground that it is not
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`substantively identical to the Declaration of Dr. Drabik. In that respect, Capella
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`contends that paragraph 155 of Dr. Ford’s Declaration includes additional text
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`2
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`IPR2015-00726
`Patent RE42,368 E
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`directed to motivation to combine aspects of Sparks1 and Bouevitch2 that was not
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`articulated in the same manner in Dr. Drabik’s Declaration.3 Opposition 2–3.
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`Capella also contends that Fujitsu “provides no reason why Ford’s declaration
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`could not have been submitted earlier,” and that Fujitsu should have sought to have
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`that Declaration entered earlier as supplemental information. Id. at 3–4. Capella,
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`thus, urges that Dr. Ford’s Declaration should not be entered into this proceeding.
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`Lastly, Capella also requests that Dr. Drabik’s Declaration be expunged or stricken
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`because Capella did not have opportunity to cross-examine Dr. Drabik. Id. at 5.
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`In considering the respective positions of the parties, we are mindful of the
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`unfortunate event –Dr. Drabik’s death– that necessitates consideration of the issues
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`noted above. We turn first to Capella’s contention that Fujitsu should have
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`submitted Dr. Ford’s Declaration earlier. There is nothing in the record before us
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`that suggests that Fujitsu attempted to conceal any health consideration of
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`Dr. Drabik, or prohibit Capella from cross-examining Dr. Drabik. Indeed, the
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`record reflects that around the middle of September, Capella sought to schedule a
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`deposition of Dr. Drabik in October, and we do not discern any reason on the
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`present record to conclude that Fujitsu was aware, at such time, that Dr. Drabik’s
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`health might interfere with that scheduling. We also do not see cause to question
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`Fujitsu’s representations that when it became aware of Dr. Drabik’s health issues
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`on September 28, 2015, Fujitsu fully expected Dr. Drabik to recover so as to be
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`deposed on schedule. See Motion 2.
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`1 U.S. Patent No. 6,625,340 B1 (Ex. 1006).
`2 U.S. Patent No. 6,498,872 B2 (Ex. 1002).
`3 Sparks and Bouevitch are both involved in grounds upon which trial was
`instituted in this proceeding.
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`3
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`IPR2015-00726
`Patent RE42,368 E
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`By all accounts, it appears that Dr. Drabik’s health deteriorated quickly,
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`culminating in his death toward the end of October. Under the circumstances
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`presented here, we do not conclude that Fujitsu was remiss in seeking to have a
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`supplemental Declaration entered into the record, in lieu of that of Dr. Drabik, so
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`as to give opportunity to Capella to provide appropriate cross-examination in
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`connection with the testimony underlying Fujitsu’s Petition.
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`With respect to the difference in wording vis-à-vis Dr. Drabik’s and Dr.
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`Ford’s testimony appearing at paragraph 155 of each Declaration, we are cognizant
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`that there is some variation between those paragraphs. Nevertheless, in carefully
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`evaluating the nature of the variation, we do not discern that substantive content
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`has been added to Dr. Ford’s Declaration that was not already expressed as a part
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`of Dr. Drabik’s Declaration. In that respect, in lieu of a statement made by Dr.
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`Drabik directed to “incorporat[ion] . . . by reference” of rationales to combine
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`presented previously for a combination of Bouevitch and Carr4 and applied in
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`connection with Sparks and Bouevitch (Ex 1016 ¶ 155), Dr. Ford expresses those
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`rationales within paragraph 155. We do not conclude that the express recitation in
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`Dr. Ford’s paragraph 155 of material that previously was incorporated by reference
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`operates as a substantive addition. We also observe that Capella has opportunity to
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`cross-examine Dr. Ford concerning his testimony.
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`Lastly, we decline Capella’s request that we expunge or strike Dr. Drabik’s
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`Declaration. That Declaration served, in-part, as the evidentiary basis on which the
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`panel instituted trial in this proceeding. In the interest of the clarity of the record,
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`we conclude, at this time, that it should remain as an exhibit in this proceeding.
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`Contrary to Capella’s assertions, Cappella will not be prejudiced if Dr. Drabik’s
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`4 U.S. Patent No. 6,442,307 B1 (Ex. 1005).
`4
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`IPR2015-00726
`Patent RE42,368 E
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`Declaration remains in the record, as, going forward, the panel will not consider
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`the content of that Declaration as a part of any Final Written Decision.
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`3. Conclusion
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`For the foregoing reasons, we conclude that Fujitsu has met its burden in
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`showing why the supplemental information it seeks to enter reasonably could not
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`have been obtained earlier, and that it is in the interests-of-justice that its
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`supplemental information be considered.5
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`It is
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`4. Order
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`ORDERED that Fujitsu’s “Motion to File Supplemental Information Under
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`37 C.F.R. § 42.123(b)” (Paper 17) is granted.
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`5 In e-mail correspondence to Board personnel, Fujitsu sought permission to file a
`reply to Capella’s Opposition. No reply is authorized.
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`5
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`IPR2015-00726
`Patent RE42,368 E
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`For PETITIONER:
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`Christopher E. Chalsen
`Lawrence T. Kass
`Nathaniel T. Browand
`Suraj K. Balusu
`MILBANK, TWEED, HADLEY & MCCLOY LLP
`cchalsen@milbank.com
`lkass@milbank.com
`nbrowand@milbank.com
`sbalusu@milbank.com
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`For PATENT OWNER:
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`Jason D. Eisenberg
`Robert Greene Sterne
`Jon E. Wright
`Jonathan Tuminaro
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-PTAB@skgf.com
`rsterne-PTAB@skgf.com
`jwright-PTAB@skgf.com
`jtuminar-PTAB@skgf.com
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`6