UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FUJITSU NETWORK COMMUNICATIONS, INC.
`Petitioner
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`v.
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`CAPELLA PHOTONICS, INC.
`Patent Owner
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`Inter Partes Review Case No. IPR2015-00727
`Patent No. RE42,678
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`PETITIONER’S MOTION TO FILE SUPPLEMENTAL INFORMATION
`UNDER 37 C.F.R. § 42.123(b)
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`FUJITSU NETWORK COMMUNICATIONS, INC.
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`Inter Partes Review Case No. IPR2015-00727
`Patent No. RE42,678
`
`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
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`Case No. IPR2015-00727
`Petitioner’s Motion to File Supplemental Information
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`Pursuant to the conference call held on October 29, 2015 and the Order
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`dated October 30, 2015 (Paper No. 14) that granted authorization to file the present
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`motion, Petitioner Fujitsu Network Communications, Inc. (“FNC”) hereby moves
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`to submit Exhibit 1037 Declaration of Joseph E. Ford and Exhibit 1038 Curriculum
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`Vitae of Joseph E. Ford (collectively, Exhibits 1037 and 1038) as supplemental
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`information pursuant to 37 C.F.R. § 42.123(b).
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`Because FNC did not know that cross-examination of its expert declarant,
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`Timothy Drabik, Ph.D would not occur prior to his sudden and unfortunate death,
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`FNC could not have earlier presented Exhibits 1037 and 1038 and the admission
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`into the record of Exhibits 1037 and 1038 proffered by additional declarant, Joseph
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`Ford, Ph.D, is in the interests of justice. Thus, FNC respectfully requests that this
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`motion be granted.
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`I.
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`FACTS
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`On September 11, Patent Owner Capella Photonics, Inc. (“Patent Owner”)
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`requested a deposition of Dr. Drabik during the last week of October. Although
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`Dr. Drabik was available in September and Patent Owner could have requested a
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`deposition in September, Patent Owner chose to wait until the end of October.
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`On September 16, FNC informed Patent Owner that a deposition of Dr.
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`Drabik the last week of October should work. At that time, FNC had no
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`information about Dr. Drabik’s condition and fully expected that he would be
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`1
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`Case No. IPR2015-00727
`Petitioner’s Motion to File Supplemental Information
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`available for deposition as requested.
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`On September 28, FNC learned that Dr. Drabik was sick and informed
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`Patent Owner that same day that the deposition would have to be re-scheduled. At
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`that time, FNC fully expected Dr. Drabik to recover in a timely manner. FNC and
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`Patent Owner discussed the possibility of extending due dates to allow time for Dr.
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`Drabik to recover so Patent Owner could take his deposition before submitting a
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`response to the petition. Patent Owner requested updates about Dr. Drabik’s
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`condition every week or two and FNC provided the requested updates.
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`On October 8, FNC informed Patent Owner that Dr. Drabik had been
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`admitted to the hospital. At that time, based on available information received
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`from a contact of Dr. Drabik’s, FNC still expected Dr. Drabik to recover.
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`On October 11, FNC was surprised to learn that Dr. Drabik had entered a
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`hospice program and shortly thereafter informed counsel for Patent Owner that it
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`did not expect Dr. Drabik would be available for deposition. FNC proposed
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`waiving cross-examination or alternatively obtaining permission to submit
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`substantively identical additional declarations signed by another expert if Patent
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`Owner demanded cross-examination. While waiting for a response from Patent
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`Owner on these proposals, FNC learned that Dr. Drabik passed away.
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`On October 26, FNC informed Patent Owner that Dr. Drabik had passed
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`away and again sought Patent Owner’s position on waiving cross-examination and
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`Case No. IPR2015-00727
`Petitioner’s Motion to File Supplemental Information
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`the submission of an additional declaration by another expert. After Patent Owner
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`did not agree to these proposals, FNC contacted the Board for guidance on this
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`issue. On the October 29 call, FNC requested permission to file a substantively
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`identical additional declaration, proposed that the additional expert would be made
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`available for deposition thereafter, and offered a reasonable extension of due dates.
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`II. APPLICABLE STANDARD
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`A motion to submit supplemental information must generally “show why the
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`supplemental information reasonably could not have been obtained earlier, and that
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`consideration of the supplemental information would be in the interests-of-justice.”
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`37 C.F.R. § 42.123(b); see also BioMarin Pharma. Inc. v. Genzyme Therapeutic
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`Prods. Ltd. P’Ship, IPR2013-00534, Paper 80 (Jan. 7, 2015) (“[W]e waive the
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`requirement of 37 C.F.R. § 42.123(b) that a party show that the supplemental
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`information reasonably could not have been obtained earlier. 37 C.F.R. § 42.5(b)
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`(permitting the Board to waive or suspend a requirement of parts 1, 41, and 42)”).
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`III. ARGUMENT
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`A. Due to Dr. Drabik’s Sudden Passing, FNC Could Not Have Obtained
`Exhibits 1037 and 1038 Earlier
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`FNC could not have obtained the supplemental information earlier because it
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`had no knowledge that Patent Owner would not take cross-examination of Dr.
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`Drabik prior to his sudden and unfortunate death. As explained above, in mid-
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`Case No. IPR2015-00727
`Petitioner’s Motion to File Supplemental Information
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`September FNC fully expected Dr. Drabik to be available for deposition in late
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`October even though Patent Owner could have deposed Dr. Drabik in September.
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`At the time he became sick, FNC did not know that Dr. Drabik would not recover.
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`While Dr. Drabik was sick, FNC advised Patent Owner about what was known of
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`Dr. Drabik’s condition as soon as new information was learned. FNC advised
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`Patent Owner upon learning of Dr. Drabik’s passing and FNC promptly sought the
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`present relief. FNC could not have obtained the supplemental information earlier
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`as it had no reason to seek the supplemental information before learning that Dr.
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`Drabik was deceased.
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`B. Consideration of Exhibits 1037 and 1038 Is in the Interests of Justice
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`Moreover, consideration of the supplemental information is in the interests-
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`of-justice because it accommodates Patent Owner’s demand for cross-examination
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`and there is no prejudice. Exhibit 1037 is substantively identical to Exhibit 1016
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`Dr. Drabik’s declaration, which was submitted at the time of filing the petition.
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`Exhibit 1037 maintains the same paragraph numbers from Exhibit 1016.
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`Following the procedure provided in Corning Gilbert Inc. v. PPC Broadband, Inc.,
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`IPR2013-00347, Paper 20 (Jan. 2, 2014), Dr. Ford’s qualifications in Exhibit 1037
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`appear in later paragraphs, and blank spaces are used to occupy the paragraphs that
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`previously expressed the qualifications of Dr. Drabik. Exhibit 1038 further
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`explains the qualifications of Dr. Ford.
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`4
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`Case No. IPR2015-00727
`Petitioner’s Motion to File Supplemental Information
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`The supplemental information sought to be submitted does not change the
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`grounds of unpatentability authorized in this proceeding, and it does not change the
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`evidence presented with the petition to support those grounds of unpatentability.
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`See BioMarin, IPR2013-00534, Paper 80 at 5. Rather, Exhibits 1037 and 1038
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`simply accommodate Patent Owner’s demand to conduct cross-examination and
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`permit the proceeding to move forward without delay. By quickly locating an
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`additional declarant and promptly submitting the present motion, FNC has taken
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`considerable effort to make sure that the supplemental information would not
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`affect the Board’s ability to complete this proceeding in a timely manner.
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`Furthermore, there is no possible prejudice by filing the supplemental
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`information because Patent Owner will have sufficient opportunity to cross-
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`examination Dr. Ford. The parties have extended Due Date 1 from November 24
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`until December 23, 2015, which affords Patent Owner more than five weeks from
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`today’s date to take Dr. Ford’s deposition and submit a response to the petition. It
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`is believed that no other due dates will be affected by this motion. Thus, the
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`interests-of-justice are well served by the consideration of Exhibits 1037 and 1038.
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`Dated: November 11, 2015
`28 Liberty Street
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`New York, New York 10005
`Tel: (212) 530-5000
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`Respectfully submitted,
`MILBANK, TWEED, HADLEY & MCCLOY LLP
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`/Christopher E. Chalsen/
`Christopher E. Chalsen
`Registration No. 30,936
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`5
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`Case No. IPR2015-00727
`Petitioner’s Motion to File Supplemental Information
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies that
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`on November 11, 2015, a complete and entire copy of this PETITIONER’S
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`MOTION TO FILE SUPPLEMENTAL INFORMATION UNDER 37 C.F.R.
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`§ 42.123(b) and EXHIBITS 1037 and 1038 were served electronically via email on
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`the following counsel of record for Patent Owners:
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`Jason D. Eisenberg (Lead Counsel)
`Robert Greene Sterne (Back-up Counsel)
`Jon E. Wright (Back-up Counsel)
`Jonathan Tuminaro (Back-up Counsel)
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`
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`E-mail: jasone-PTAB@skgf.com
`E-mail: rsterne-PTAB@skgf.com
`E-mail: jwright-PTAB@skgf.com
`E-mail: jtuminar-PTAB@skgf.com
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`
`
` /Christopher E. Chalsen/
`Christopher E. Chalsen
`Registration No. 30,936
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