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 REQUEST FOR REHEARING OF THE
`BOARD’S ORDER GRANTING 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 REQUEST FOR REHEARING OF THE
`BOARD’S ORDER GRANTING 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
`The Board should reconsider its November 23, 2015 Order (Paper 19), deny
`
`Fujitsu’s motion to file supplemental information (Paper 17), and expunge Dr.
`
`Drabik’s declaration (Ex. 1016). First, the Board’s decision granting Fujitsu’s
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`motion to submit supplemental information is not supported by substantial
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`evidence. Second, the Board misapprehended or overlooked that substantive
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`content was added to Dr. Ford’s declaration. Third, the Board’s continued reliance
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`on Dr. Drabik’s declaration, where cross-examination is impossible, violates the
`
`rules of discovery, the rules of evidence, and curtails due process. Capella raised
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`each of these issues in its opposition to Fujitsu’s motion (Paper 18), but the Board
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`misapprehended or overlooked these critical considerations. They require that
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`Fujitsu’s motion to be denied and that Dr. Drabik’s declaration be expunged.
`
`A. Legal Standard
`A rehearing request “must specifically identify all matters the party believes
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`the Board misapprehended or overlooked . . . .” 37 C.F.R. § 42.71(d). The Board
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`reviews a prior decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse
`
`of discretion occurs when a decision is based on an erroneous interpretation of law,
`
`if a factual finding is not supported by substantial evidence, or if the decision
`
`represents an unreasonable judgment in weighing relevant factors. See Arnold
`
`Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).
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`- 1 -
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`Case IPR2015-00726
`Patent RE42,368
`The Board’s decision entering Dr. Ford’s declaration is not supported
`because the declaration could have been submitted earlier.
`
`B.
`
`The Board’s decision entering Dr. Ford’s declaration is not supported by
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`substantial evidence because it fails to show: (i) that the supplemental information
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`sought to be entered “reasonably could not have been obtained earlier”; and
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`(ii) that “consideration of the supplemental information would be in the interest-of-
`
`justice.” 37 C.F.R. § 42.123(b); see also Paper 18 p. 3. The record is devoid of any
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`facts to satisfy the first part of this two-part test. Accordingly, the Board erred by
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`entering Dr. Ford’s declaration without satisfying the requirements of Rule 123(b).
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`Fujitsu has not shown—and the Board did not find—that Dr. Ford’s
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`declaration could not have been obtained earlier. Paper 18 pp. 3-4. At best, Fujitsu
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`tried to explain why Dr. Ford’s declaration was not needed until Dr. Drabik’s
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`declaration was called into question. Id. pp. 4-5. Focusing on this explanation, the
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`Board’s decision rests on the fact that “Dr. Drabik’s health deteriorated quickly,
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`culminating with his death toward the end of October.” Paper 19 p. 4. But the
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`question is not when anyone knew that Dr. Drabik was too sick to testify. Instead,
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`Fujitsu was required to show why Dr. Ford’s declaration “reasonably could not
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`have been obtained earlier.” 37 C.F.R. § 42.123(b). Fujitsu failed to, and cannot,
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`make this showing. Accordingly, the Board’s decision is not supported by
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`substantial evidence and is contrary to the standard required by Rule 123(b).
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`Case IPR2015-00726
`Patent RE42,368
`C. New substance has been added to the Ford Declaration; any content
`allegedly “incorporated by reference” relates to a different reference.
`
`The Board agreed that ¶ 155 of Dr. Drabik’s and Dr. Ford’s declarations are
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`not identical because Dr. Ford’s declaration contains new testimony regarding the
`
`alleged motivation to combine the Bouevitch and Sparks references. Paper 18 pp.
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`1-3; id. pp. 2-3 n.1; Paper 19 p. 4 (“[W]e are cognizant that there is some variation
`
`between those paragraphs.”). The Board abused its discretion by concluding that
`
`these differences were not substantive. Paper 19 p. 4.
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`The Board misapprehended or overlooked that Dr. Ford’s declaration
`
`includes material that appeared nowhere in Dr. Drabik’s original declaration.
`
`Compare Ex. 1037 ¶ 155 (referring to Ex. 1006 which is Sparks) with Ex. 1016 ¶
`
`155 (referring to Ex. 1005 which is Carr). See also Paper 18 pp. 2-3, n.1. The
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`Board suggests that Dr. Drabik’s original declaration permissibly incorporated by
`
`reference “rationales to combine presented previously for a combination of
`
`Bouevitch and Carr and applied in connection with Sparks and Bouevitch.” Paper
`
`19 p. 4. But nowhere does Dr. Drabik’s declaration “appl[y]” any rationale for the
`
`Bouevitch-Carr combination to the Bouevitch-Sparks combination. The new
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`material added in Dr. Ford’s declaration tries to do so for the first time. Allowing
`
`Fujitsu to “incorporate by reference” a rationale into Dr. Ford’s declaration which
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`never appeared in Dr. Drabik’s declaration is an abuse of discretion.
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`Case IPR2015-00726
`Patent RE42,368
`This new rationale is highly prejudicial to Capella. During the October 29th
`
`conference call, Capella explained that Petitioner could take advantage of the
`
`opportunity to submit a new declaration by modifying the original testimony. Ex.
`
`2010, 17:20-18:4 and 24:20-25:5. Despite saying that its new declaration and
`
`previously submitted declaration would be “substantively identical,” Paper 17 p. 4;
`
`Ex. 2010, 21:24-23:10, Fujitsu has, in fact, modified the substance of the testimony
`
`in a way that can only be interpreted as an attempt to bolster its motivation to
`
`combine Bouevitch and Sparks. Fujitsu’s attempt to supplement its petition in this
`
`way violates the statute governing these proceedings (35 U.S.C. § 312(a)(3)(B))
`
`and the Office’s regulations (37 C.F.R. § 42.104(b)(5)). See Paper 18 p. 3.
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`The Board overlooked or misapprehended that Fujitsu added substantive
`
`content to Dr. Ford’s declaration. By making these changes, Fujitsu went beyond
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`“seeking to have a supplemental Declaration entered into the record, in lieu of that
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`of Dr. Drabik, so as to give opportunity to Capella to provide appropriate cross-
`
`examination.” Paper 19 p. 4. Instead, the new material is an improper attempt to
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`remedy a deficiency in Dr. Drabik’s original declaration and the Board should have
`
`denied Fujitsu’s attempt to capitalize on these unfortunate circumstances. By not
`
`doing so, the Board has effectively allowed Fujitsu to supplement its petition with
`
`the benefit of Capella’s preliminary response and the Board’s institution decision.
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`This was an abuse of discretion and the Board should reconsider its decision.
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`Case IPR2015-00726
`Patent RE42,368
`D. To the extent the Board has permitted Fujitsu to enter Dr. Ford’s
`declaration, the Board should expunge Dr. Drabik’s declaration.
`
`In granting Fujitsu’s motion to submit Dr. Ford’s declaration “in lieu of” Dr.
`
`Drabik’s, the Board should have expunged Dr. Drabik’s declaration. Paper 19 p. 4.
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`The Board abused its discretion by allowing Dr. Drabik’s declaration to remain in
`
`the record, and continuing to rely on it, when cross-examination is impossible.
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`Other panels have expunged declarations in cases where the witness is
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`unavailable for cross-examination. See Paper 18 p. 5 (citing cases). If the Board’s
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`reason for allowing Dr. Ford’s declaration is Dr. Drabik’s unavailability, then it is
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`inconsistent to continue to allow Dr. Drabik’s declaration to remain in the record.
`
`The Board’s reliance on Dr. Drabik’s declaration for deciding institution is merely
`
`incidental—not a justification to keep it in the record. Paper 19 pp. 4-5.
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`The Board’s decision also violates the rules of discovery, the rules of
`
`evidence, and due process. Capella explained these issues in its opposition to
`
`Fujitsu’s motion (Paper 18 p. 5) and on the October 29th conference call (Ex.
`
`2010, 14:25-17:6 and 19:4-11). As matters stand, Fujitsu now has the benefit of
`
`both Dr. Drabik’s and Dr. Ford’s declarations—a circumstance that effectively
`
`creates an exception to Rule 123(b), and contravenes 35 U.S.C. § 312(a)(3)(B) and
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`37 C.F.R. § 42.104(b)(5). Accordingly, to the extent the Board permits Fujitsu to
`
`enter Dr. Ford’s declaration, the Board should expunge Dr. Drabik’s declaration.
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`Case IPR2015-00726
`Patent RE42,368
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`Jason Eisenberg, Reg. No. 43,447
`Jonathan Tuminaro, Reg. No. 61,327
`Attorneys for Patent Owner
`
`
`
`Date: December 7, 2015
`
`
`
`1100 NEW YORK AVENUE, NW
`WASHINGTON, D.C. 20005
`(202) 371-2600
`
`
`
`
`
`
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`Case IPR2015-00726
`Patent RE42,368
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`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`REQUEST FOR REHEARING OF THE BOARD’S ORDER GRANTING
`PETITIONER’S MOTION TO FILE SUPPLEMENTAL INFORMATION
`UNDER 37 C.F.R. § 42.123(b) was served electronically via e-mail on December
`7, 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.
`
`/Jason D. Eisenberg/
`
`Jason Eisenberg, Reg. 43,447
`Jonathan Tuminaro, Reg. No. 61,327
`Attorneys for Patent Owner
`
`
`
`Date: December 7, 2015
`
`
`
`1100 NEW YORK AVENUE, NW
`WASHINGTON, D.C. 20005
`(202) 371-2600
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