UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`JDS UNIPHASE CORPORATION
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`
`
`Patent No. RE 42,368
`
`
`
`Title: RECONFIGURABLE OPTICAL ADD-DROP
`MULTIPLEXERS WITH SERVO CONTROL AND DYNAMIC
`SPECTRAL POWER MANAGEMENT CAPABILITIES
`
`
`
`Inter Partes Review No. 2015-00731
`
`__________________
`
`PETITIONER’S MOTION
`TO RE-CAPTION THE PROCEEDING
`
`
`
`US.104206796.01
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`JDS UNIPHASE CORPORATION
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`
`
`Patent No. RE 42,368
`
`
`
`Title: RECONFIGURABLE OPTICAL ADD-DROP
`MULTIPLEXERS WITH SERVO CONTROL AND DYNAMIC
`SPECTRAL POWER MANAGEMENT CAPABILITIES
`
`
`
`Inter Partes Review No. 2015-00731
`
`__________________
`
`PETITIONER’S MOTION
`TO RE-CAPTION THE PROCEEDING
`
`
`
`US.104206796.01
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`
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`Inter Partes Review No. 2015-00731
`Petitioner’s Motion To Re-Caption The Proceeding
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`
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`This Petitioner’s Motion to Re-Caption The Proceeding (“Motion”) is
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`submitted pursuant to the Board’s authorization during the January 15, 2016,
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`teleconference. Petitioner hereby requests that the party identified as the Petitioner
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`in the caption of this proceeding be changed from JDS Uniphase Corporation to
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`Lumentum Holdings Inc., Lumentum Inc., and Lumentum Operations LLC.
`
`A. Background
`1.
`This proceeding was initiated by JDS Uniphase Corporation
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`(“JDSU”). (See Paper 1 (identifying JDSU as Petitioner and Real Party-In-
`
`Interest).) As described further in Section B below, in late July and early August
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`2015, JDSU underwent a reorganization whereby the business segment related to
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`this proceeding became held by Lumentum Operations LLC, which is owned by
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`Lumentum Inc., a subsidiary of Lumentum Holdings Inc. As a result of this
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`reorganization, JDSU, as then constituted, ceased to exist.
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`2.
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`On September 15, 2015, Petitioner filed updated mandatory notices
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`(“Updated Notices”) stating that, “[a]s a result of a reorganization involving
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`original Petitioner JDS Uniphase Corporation, the real parties-in-interest in this
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`proceeding are now: Lumentum Holdings Inc., Lumentum Inc. and Lumentum
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`Operations LLC.” (Paper 11.)
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`3.
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`On January 8, 2016, the Petitioner sent an email request to the Board,
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`asking if it is possible to change the caption of this proceeding to refer to
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`US.104206796.01
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`1
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`Inter Partes Review No. 2015-00731
`Petitioner’s Motion To Re-Caption The Proceeding
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`Lumentum Holdings Inc., Lumentum Inc. and Lumentum Operations LLC (“the
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`Lumentum Entities”) as the petitioner, to accurately reflect the parties as a result of
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`the JDSU reorganization.
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`4.
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`On January 11, 2016, the Board requested a teleconference to discuss
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`the reorganization and identification of the real parties-in-interest (“RPI”). The
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`teleconference was held on January 16, 2016, among Judges Tartal and Cocks and
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`representatives from Petitioner and Patent Owner.
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`5.
`
`During the teleconference, Petitioner’s counsel summarized the
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`reorganization. Briefly, Petitioner explained that the Lumentum Entities were
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`created as separate companies owned by JDSU, and the assets and liabilities of
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`certain laser and telecom equipment businesses of JDSU, including the
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`responsibility for this proceeding, were assigned to the Lumentum Entities
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`pursuant to a Contribution Agreement dated July 31, 2015.
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`6.
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`Petitioner also explained that remaining with JDSU following the
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`“spin out” were several businesses unrelated to the instant proceeding, including
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`those related to test and measurement. In connection with the reorganization, these
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`remaining entities (JDSU) were renamed Viavi Solutions Inc. (“Viavi”). Viavi
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`owns approximately 20% of the shares of Lumentum Holdings Inc.
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`7.
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`Along with its authorization for this Motion, the Board requested that
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`the Petitioner describe for the record the nature and dates of the reorganization, and
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`US.104206796.01
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`Inter Partes Review No. 2015-00731
`Petitioner’s Motion To Re-Caption The Proceeding
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`explain why Viavi was not identified as an RPI in the Updated Notices.
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`B. Description of the Reorganization1
`Prior to the reorganization, JDSU had a number of business segments. One
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`
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`was communications and commercial optical products (“CCOP”), which included
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`businesses related to optical telecom equipment and lasers. Others were network
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`enablement (“NE”), service enablement (“SE”) and optical security and
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`performance products (“OSP”). (Ex. 1037, p. 344 - 45.) By the reorganization, the
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`CCOP businesses were spun out to the Lumentum Entities, and the NE, SE and
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`OSP businesses remained with JDSU, which was renamed Viavi. Id. at p. 345.
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`
`
`To achieve this result, JDSU formed three wholly owned subsidiaries:
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`Lumentum Holdings Inc., Lumentum Inc. and Lumentum Operations LLC. By the
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`Contribution Agreement, Lumentum Operations LLC assumed responsibility of
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`“Assumed Actions,” including this proceeding. (Ex. 1037, p. 59.)2
`
`
`1 Attached as Exhibit 1037 is a copy of the publicly available SEC Form 8-K filed
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`by Lumentum Holdings Inc. on August 6, 2015. Although most of the description
`
`of the reorganization herein is supported by the Form 8-K and documents therein,
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`certain portions of this description are not public information. (See footnote 2.)
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`This Motion is therefore presented under seal with a request that it be made subject
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`to the protective order in this proceeding (Paper 18, Ex. A).
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`US.104206796.01
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`3
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`Inter Partes Review No. 2015-00731
`Petitioner’s Motion To Re-Caption The Proceeding
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`
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`Upon the completion of the reorganization on August 1, 2015: (1) the entire
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`ownership interest of Lumentum Operations LLC was transferred to Lumentum
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`Inc.; (2) most all shares of Lumentum Inc. were transferred to Lumentum Holdings
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`Inc. (certain preferred stock representing approximately 3% of Lumentum
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`Holdings Inc.’s equity value was transferred to third party Amada Holdings, Co.
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`Ltd. (“Amada”)); (3) 80.1% of the stock of Lumentum Holdings Inc. was
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`distributed to the shareholders of record of JDSU; and (4) JDSU was renamed
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`Viavi. (Ex. 1037, pp. 344, 388-93.)
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`
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`As a result of this reorganization, Lumentum Operations LLC is the entity
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`responsible for this proceeding and is owned by Lumentum Inc. Amada holds a
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`3% minority interest in Lumentum Inc. The remaining 97% of Lumentum Inc. is
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`owned by the publicly traded entity Lumentum Holdings Inc. Viavi owns a 19.9%
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`minority interest in Lumentum Holdings Inc.
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`C.
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`Identification of the Real Parties-In-Interest
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`
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`The relevant business unit of JDSU was “spun out” to the Lumentum
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`Entities, which assumed responsibilities for the actions relating to this proceeding,
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`and are distinct from Viavi and Amada. Accordingly, neither Viavi nor Amada has
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`2
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`US.104206796.01
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`Inter Partes Review No. 2015-00731
`Petitioner’s Motion To Re-Caption The Proceeding
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`been identified as a RPI. As noted in the Office Patent Trial Guide (37 C.F.R. Part
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`42, I. D.), a common consideration in connection with the RPI determination is
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`whether a non-party exercised or could have exercised control over a party’s
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`participation. Here, neither Viavi nor Amada have or could have exercised control
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`over the Lumentum Entities’ participation in this proceeding. Neither Viavi nor
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`Amada had or have any involvement in funding or directing the proceeding.
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`Although Viavi and Amada are minority shareholders, minority shareholder status
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`in a party, without more, has been determined to be insufficient to provide the
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`ability to control that might make such a party a RPI. (See IPR 2015-01093, paper
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`26 at 25-28 (finding that a petitioner did not fail to identify the RPI by failing to
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`identify “shareholders”).)
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`D.
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` Conclusion
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`The Lumentum Entities are now the Petitioner and RPI in this proceeding.
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`Authorization to change the name of the Petitioner in the caption to Lumentum
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`Holdings Inc., Lumentum Inc. and Lumentum Operations LLC is therefore
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`requested.
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`Dated: January 22, 2016
`
`Faegre Baker Daniels
`2200 Wells Fargo Center
`90 S. Seventh Street
`Minneapolis, MN 55402
`Tel: (612) 766-7000
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`US.104206796.01
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`
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`Respectfully submitted,
`Faegre Baker Daniels LLP
`
` / Walter Linder /
`Walter C. Linder, Lead Counsel
`Reg. No. 31, 707
`Telephone: 612-766-8801
`
`
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`
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`By:
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`5
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`Inter Partes Review No. 2015-00731
`Petitioner’s Motion To Re-Caption The Proceeding
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that I caused a true and correct copy of the foregoing Petitioner’s
`Motion To Re-caption Proceeding to be electronically served by email on the
`following:
`
`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
`
`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
`
`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
`
`Nicholas J. Nowak
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W. Washington, D.C. 20005
`E-mail: nnowak-PTAB@skgf.com
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`Dated: January 22, 2016
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`Faegre Baker Daniels LLP
`2200 Wells Fargo Center
`90 South Seventh Street
`Minneapolis, MN 55402-3901
`Telephone: (612) 766-7000
`Facsimile: (612) 766-1600
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`US.104206796.01
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`6
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`FAEGRE BAKER DANIELS LLP
`
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`By:
`
`
`
`
`
`/ Walter Linder /
`Walter C. Linder
`Reg. No. 31,707
`Customer No. 25764
`Telephone: 612-766-8801
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