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 IPR2015-00727
`Patent RE42,678
`___________________
`
`
`
`
`CAPELLA PHOTONICS, INC.’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8(a)(2)
`
`
`
`
`
`
`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 IPR2015-00727
`Patent RE42,678
`___________________
`
`
`
`
`CAPELLA PHOTONICS, INC.’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8(a)(2)
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`Case IPR2015-00727 for
`U.S. Patent No. RE42,678
`Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner, Capella Photonics, Inc.,
`
`
`
`hereby files its Mandatory Notices.
`
`I.
`
`37 C.F.R. § 42.8(b)(1) – REAL PARTY-IN-INTEREST
`
`The patent owner and real party-in-interest is Capella Photonics, Inc.
`
`II.
`
`37 C.F.R. § 42.8(b)(2) – RELATED MATTERS
`A.
`Patent Owner notifies the Board of the following proceeding that may affect
`
`Proceedings Before the USPTO Involving the Patent-at-Issue
`
`or be affected by a decision in this proceeding:
`
`This Inter Partes Review is one of seven petitions filed against two patents
`
`owned by Patent Owner: U.S. Patent Nos. RE42,368 (“the ’368 patent”) and
`
`RE42,678 (“the ’678 patent”). The ’368 patent stems from the same patent
`
`application(s) that resulted in the ’678 patent.
`
`Patent No.
`
`RE42,678
`
`RE42,368
`
`Case Caption
`Cisco Systems, Inc. v. Capella Photonics,
`Inc., Case IPR2014-01276
`JDS Uniphase Corp. v. Capella
`Photonics, Inc., Case IPR2015-00739
`Cisco Systems, Inc. v. Capella Photonics,
`Inc., Case IPR2014-01166
`Fujitsu Networks Communications, Inc.
`v. Capella Photonics, Inc., Case
`IPR2015-00726
`JDS Uniphase Corp. v. Capella
`Photonics, Inc., Case IPR2015-00731
`
`Filing Date
`August 12, 2014
`
`February 14, 2015
`
`July 15, 2014
`
`February 12, 2015
`
`February 13, 2015
`
`1
`
`
`
`
`
`
`Patent No.
`
`
`
`
`
`
`Case IPR2015-00727 for
`U.S. Patent No. RE42,678
`
`Case Caption
`Ciena Corp., Coriant Operations, Inc.,
`Coriant (USA) Inc. and Fujitsu Network
`Communications, Inc. v. Capella
`Photonics, Inc., Case IPR2015-00816
`
`Filing Date
`
`February 26, 2015
`
`Litigations Involving the Patent-at-Issue
`
`B.
`Patent Owner notifies the Board of the following litigation proceedings that
`
`may affect or be affected by a decision in this proceeding:
`
`• Capella Photonics, Inc. v. Cisco Systems, Inc., Case No. 1:14-cv-20529,
`
`filed in the U.S. District Court for the Southern District of Florida on
`
`February 12, 2014 (transferred to the Northern District of California on
`
`July 24, 2014, now Case No. 3:14-cv-03348).
`
`• Capella Photonics, Inc. v. Fujitsu Network Communications, Inc., Case
`
`No. 1:14-cv-20531, filed in the U.S. District Court for the Southern
`
`District of Florida on February 12, 2014 (transferred to the Northern
`
`District of California on July 24, 2014, now Case No. 3:14-cv-03349).
`
`• Capella Photonics, Inc. v. Tellabs, Inc., Case No. 0:14-cv-60350, filed in
`
`the U.S. District Court for the Southern District of Florida on February
`
`12, 2014 (transferred to the Northern District of California on July 24,
`
`2014, now Case No. 3:14-cv-03350).
`
`2
`
`
`
`
`
`Case IPR2015-00727 for
`U.S. Patent No. RE42,678
`• Capella Photonics, Inc. v. Ciena Corporation et al., Case No. 1:14-cv-
`
`
`
`20530, filed in the U.S. District Court for the Southern District of Florida
`
`on February 12, 2014 (transferred to the Northern District of California
`
`on July 25, 2014, now Case No. 5:14-cv-03351).
`
`• Capella Photonics, Inc. v. Columbus Networks USA, Inc., Case No. 0:14-
`
`cv-61629, filed in the U.S. District Court for the Southern District of
`
`Florida on July 15, 2014 (currently stayed).
`
`• Capella Photonics, Inc. v. Telefonica International Wholesale Services
`
`USA, Case No. 1:14-cv-22701, filed in the U.S. District Court for the
`
`Southern District of Florida on July 21, 2014 (currently stayed).
`
`U.S. Patents and Applications Related to the Patent-at-Issue
`
`C.
`Out of an abundance of caution and in accordance with the Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012), Patent Owner
`
`notifies the Board of related patents that may affect or be affected by a decision in
`
`this proceeding:
`
`• U.S. Patent Application No. 09/938,426, filed August 23, 2001 (now U.S.
`
`Patent No. 6,625,346, issued September 23, 2003); and
`
`• U.S. Patent Application No. 11/027,586, filed December 31, 2004 (now
`
`U.S. Patent No. RE39,397, issued November 14, 2006).
`
`3
`
`
`
`
`
`III.
`
`
`
`
`Case IPR2015-00727 for
`U.S. Patent No. RE42,678
`
`
`
`37 C.F.R. § 42.8(b)(3) – LEAD AND BACK-UP COUNSEL
`
`Patent Owner hereby designates lead and back-up counsel.
`
`Lead Counsel Jason D. Eisenberg, Reg. No. 43,447
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`E-mail: jasone-PTAB@skgf.com
`Tel.: 202-371-8645
`Fax: 202-371-2540
`
`Back-up Counsel Robert Greene Sterne, Reg. No. 28,912
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`E-mail: rsterne-PTAB@skgf.com
`Tel.: 202-772-8555
`
`Fax: 202-371-2540
`
`Back-up Counsel Jon E. Wright, Reg. No. 50,720
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`E-mail: jwright-PTAB@skgf.com
`Tel.: 202-772-8651
`
`Fax: 202-371-2540
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`IV.
`
`Case IPR2015-00727 for
`U.S. Patent No. RE42,678
`37 C.F.R. § 42.8(b)(4) – SERVICE INFORMATION
`
`
`
`Please address all correspondence to the lead and back-up counsel as shown
`
`above. Patent Owner consents to electronic service by e-mail at all e-mail
`
`addresses provided above.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with IPR2015-00727 to Deposit Account 19-0036.
`
`Respectfully submitted,
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`
` /Jason D. Eisenberg/
`Jason D. Eisenberg
`
`Registration No. 43,447
`Lead Counsel for Patent Owner
`
`
`
`
`
`Date: March 04, 2015
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`5
`
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`
`
`
`
`
`
`
`Case IPR2015-00727 for
`U.S. Patent No. RE42,678
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`The undersigned hereby certifies that the foregoing CAPELLA
`
`PHOTONICS, INC.’S MANDATORY NOTICES PURSUANT TO 37 C.F.R.
`
`§ 42.8(a)(2) and accompanying Power of Attorney were served electronically via
`
`e-mail on March 04, 2015 in their entireties on the following counsel of record for
`
`Petitioner:
`
`
`
`Christopher E. Chalen (Lead Counsel)
`Lawrence T. Kass (Back-up Counsel)
`Nathaniel Browand (Back-up Counsel)
`Suraj Balusu (Back-up Counsel)
`MILBANK, TWEED, HADLEY & MCCLOY LLP
`1 Chase Manhattan Plaza
`New York, New York 10005
`cchalen@milibank.com
`lkass@milbank.com
`nbrowand@milbank.com
`sbalasu@milibank.com
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`/Jason D. Eisenberg/
`Jason D. Eisenberg
`Registration No. 43,447
`Lead Counsel for Patent Owner
`
`6
`
`Date: March 04, 2015
`
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
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