Paper 23
`Date: December 29, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`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 E
`____________
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`Date: December 29, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`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 E
`____________
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`IPR2015-00726
`Patent RE42,368 E
`
`
`
`1. Introduction
`Patent Owner, Capella Photonics, Inc. (“Capella” or “Patent Owner”), seeks
`
`rehearing of our Decision (Paper 19) granting the Motion of Petitioner, Fujitsu
`Network Communication, Inc. (“Fujitsu” or “Petitioner”), to file supplemental
`information under 37 C.F.R. § 42.123(b). Paper 21 (“Request for Rehearing” or
`“Req. Reh’g.”). For the reasons set forth below, Capella’s Request for Rehearing
`is DENIED.
`
`
`
`
`2. Discussion
`When rehearing a decision on a motion, the Board will review the decision
`
`for an abuse of discretion. 37 C.F.R. § 42.71(b). The party requesting rehearing
`has the burden of showing that the decision from which rehearing is sought should
`be modified, and “[t]he request must specifically identify all matters the party
`believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d). Here,
`Capella contends the following in its Request for Rehearing:
`First, the Board’s decision granting Fujitsu’s motion to submit
`supplemental information is not supported by substantial evidence.
`Second, the Board misapprehended or overlooked that substantive
`content was added to Dr. Ford’s declaration. Third, the Board’s
`continued reliance on Dr. Drabik’s declaration, where cross-
`examination is impossible, violates the rules of discovery, the rules of
`evidence, and curtails due process.
`Req. Reh’g 1.
`
`None of the matters raised by Capella merit a modification of our Decision
`granting Fujitsu’s Motion. With respect to the first matter, Capella contends that
`the consideration set forth in rule 123(b) as to whether supplemental information
`“reasonably could not have been obtained earlier” mandates omission of Dr. Ford’s
`Declaration. Paper 19, 2. In that respect, Cappella is of the view that irrespective
`of any of the considerations involved here, e.g., the rapid health deterioration and
`
`2
`
`
`
`
`
`
`IPR2015-00726
`Patent RE42,368 E
`
`
`death of Dr. Drabick, Fujitsu could have obtained Dr. Ford’s Declaration earlier.
`We are not persuaded that Capella’s reading of that aspect of rule 123(b), so as to
`preclude consideration of Dr. Ford’s Declaration given the particular involved
`circumstances, is correct. Indeed, we do not discern that it gives suitable deference
`to the “reasonably could not have been obtained earlier” aspect of the rule.
`Nevertheless, even if Cappella’s view is the correct one, our rules also set forth
`that: “The Board may waive or suspend a requirement of parts 1, 41, and 42 and
`may place conditions on the waiver or suspension.” See 37 C.F.R. § 42.5(b).
`Given the circumstances surrounding the presentation of Dr. Ford’s Declaration
`here, we do not require the omission of Dr. Ford’s Declaration based on the above-
`noted premise on which Capella relies.
`
`With respect to the second matter, Capella simply reiterates an argument that
`it made in its Opposition to Fujitsu’s Motion. In our Decision, we were cognizant
`that paragraph 155 of Dr. Ford’s Declaration (Ex. 1037) was not identical to
`paragraph 155 of Dr. Drabik’s Declaration (Ex. 1016). In viewing the differences,
`however, we concluded that the changes were not substantive in nature, and
`instead simply encompassed expression of content that previously had been
`incorporated by reference. That Capella may disagree with our conclusion in that
`respect, does not show that we misapprehended or overlooked any matter in so
`reaching that conclusion. Moreover, although Capella generally contends that the
`expression of the material in paragraph 155 of Dr. Ford’s Declaration presents a
`new “rationale” applied to the combination of Bouevitch and Sparks that is an
`“attempt to remedy a deficiency in Dr. Drabik’s original declaration,” Cappela
`does not explain what the new rationale is or what deficiency allegedly now has
`been remedied. See Req. Reh’g 3–4.
`
`3
`
`
`
`
`
`
`IPR2015-00726
`Patent RE42,368 E
`
`
`Lastly, Cappella once again contends that it is prejudiced if Dr. Drabik’s
`
`Declaration simply remains as an exhibit in the proceeding because of “the Board’s
`continued reliance on Dr. Drabik’s declaration, where cross-examination is
`impossible.” Req. Reh’g 1. That contention is misplaced. Capella does not
`articulate what “continued reliance” it believes Dr. Drabick’s Declaration will
`receive. As we indicated in our Decision, although the panel relied on
`Dr. Drabick’s Declaration in instituting trial, “going forward, the panel will not
`consider the content of that Declaration as a part of any Final Written Decision.”
`Paper 19, 4–5. Capella also does not explain the meaning of the following
`representation that it makes: “The Board’s reliance on Dr. Drabik’s declaration for
`deciding institution is merely incidental—not a justification to keep it in the
`record.” Req. Reh’g 5. At this time, the panel believes that clarity of record is
`sufficient justification for maintaining Dr. Drabick’s Declaration as a document in
`the record, but one which will receive no further substantive consideration.
`
`3. Order
`
`It is
`ORDERED that Capella’s Request for Rehearing is denied.
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`
`
`
`IPR2015-00726
`Patent RE42,368 E
`
`For PETITIONER:
`
`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
`
`For PATENT OWNER:
`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
`
`5
`
`
`
`
`rvb
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
