Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 32
`Entered: February 5, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`LUMENTUM HOLDINGS, INC., LUMENTUM, INC., and
`LUMENTUM OPERATIONS LLC,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00731
`Patent RE42,368 E
`
`
`
`
`
`Case IPR2015-00739
`Patent RE42,678 E
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 32
`Entered: February 5, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`LUMENTUM HOLDINGS, INC., LUMENTUM, INC., and
`LUMENTUM OPERATIONS LLC,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00731
`Patent RE42,368 E
`
`
`
`
`
`Case IPR2015-00739
`Patent RE42,678 E
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2015-00731 (Patent RE42,368 E)
`IPR2015-00739 (Patent RE42,678 E)
`
`
`On February 2, 2016, a conference call was conducted with Judges
`Cocks, Deshpande, and Tartal; counsel for Petitioner Lumentum Holdings,
`Inc., Lumentum, Inc., and Lumentum Operations LLC; and, counsel for
`Patent Owner Capella Photonics, Inc. to discuss two requests submitted by
`Patent Owner to the Board by email on January 31, 2016.
`
`By way of background, the Petition was filed on February 13, 2015,
`and identified JDS Uniphase Corporation (“JDSU”) as the real party-in-
`interest. Paper 1, 1. During late July and early August, 2015, as part of a
`reorganization, JDSU was renamed Viavi Solutions Inc. (“Viavi”).
`Additionally, certain assets and obligations associated with communications
`and commercial optical products were spun out to Lumentum Holdings Inc.,
`Lumentum, Inc. and Lumentum Operations LLC. Paper 22, 1–5; Ex. 1037
`(stating that pursuant to a series of agreements entered July 31, 2015, Viavi
`transferred certain business segments to Lumentum Holdings Inc. pursuant
`to a distribution effective August 1, 2015.)
`On August 25, 2015, a decision instituting trial in this proceeding was
`entered. On September 15, 2015, an updated mandatory notice was filed
`stating that, as a result of a reorganization involving JDSU, the real parties-
`in-interest to this proceeding are Lumentum Holdings Inc., Lumentum, Inc.
`and Lumentum Operations LLC. Petitioner’s updated mandatory notice was
`not filed within 21 days of the change in name of the real parties-in-interest,
`as required by 37 C.F.R. §42.8 (a) (3).
`On January 15, 2016, we conducted a teleconference with the parties
`in response to a request by Petitioner to re-caption the proceeding to reflect
`the change in name of the real parties-in-interest. During that call we
`
`2
`
`
`
`IPR2015-00731 (Patent RE42,368 E)
`IPR2015-00739 (Patent RE42,678 E)
`
`authorized Petitioner to file a motion to re-caption the proceeding, and
`accepted Petitioner’s late-filing of the updated mandatory notice. See
`37 C.F.R. §42.5(c)(3). On January 22, 2016, Petitioner filed a Motion to Re-
`Caption the Proceeding (the “Motion”). Paper 22. Patent Owner did not
`oppose the Motion. The Motion was granted on January 29, 2016. Paper
`28. During the teleconference on February 2, 2016, Patent Owner conceded
`that it has no evidence to dispute the identification of the real parties-in-
`interest provided by Petitioner.
`(1) Request to Compel Production
`The Motion stated that “[b]y the Contribution Agreement, Lumentum
`Operations LLC assumed responsibility of “Assumed Actions,” including
`this proceeding.” Paper 22, 3. That statement was supported by a footnote
`that purportedly contained confidential information which referred to a non-
`public document identified as “Schedule 5.5(A) of the Contribution
`Agreement.” Our decision granting the Motion did not rely upon the
`purportedly confidential information. Paper 28, n.1.
`Patent Owner seeks to compel Petitioner to produce Schedule 5.5(A)
`as routine discovery, which includes “any exhibit cited in a paper.”
`37 C.F.R. §42.51(b)(1)(i). Petitioner opposed production on the ground that
`Schedule 5.5(A) was not an exhibit that had to be produced because it was
`not cited as an exhibit.
`We determine that by relying upon, expressly referencing, and
`quoting Schedule 5.5(A) in support of its Motion, Petitioner utilized
`information contained in Schedule 5.5(A) as an exhibit, regardless of
`whether Petitioner called it an exhibit. Accordingly, Petitioner is obligated
`
`3
`
`
`
`IPR2015-00731 (Patent RE42,368 E)
`IPR2015-00739 (Patent RE42,678 E)
`
`to produce and file a copy of Schedule 5.5(A) as an exhibit. However, we
`disagree with Patent Owner’s contention that Petitioner must produce a
`complete, unredacted copy of Schedule 5.5(A). There is no obligation on a
`party to produce non-relevant information, and Petitioner has asserted that
`Schedule 5.5(A) contains highly confidential business information entirely
`unrelated to this proceeding. Accordingly, while production of a complete
`document is typically preferred, we are persuaded under the specific
`circumstances presented that Petitioner is required to file Schedule 5.5(A) as
`an exhibit, but may redact any content from it not relevant to this
`proceeding.
`(2) Request for Authorization to File a Motion to Terminate
`Patent Owner also requests authorization to file a motion to terminate.
`We understand Patent Owner to contend that it will seek to show that the
`Board lacked jurisdiction to institute inter partes review because the Board
`was not informed of the change in name of the real party-in-interest prior to
`entry of the institution decision. We note that there is no dispute that the
`proper real party-in-interest was identified when the Petition was filed, and
`no evidence to suggest that Petitioner has failed to identify the proper real
`parties-in-interest after the corporate re-organization. Although not
`controlling, we also note that in Elekta, Inc. v. Varian Medical System, Inc.,
`IPR2015-01401, December 31, 2015, slip op. at 6 (Paper 19), the Board
`determined that “35 U.S.C. § 312(a)(2) does not define our jurisdiction with
`respect to inter partes review proceedings.” Rather than preclude Patent
`Owner from addressing what it contends is a jurisdictional issue on the
`present record in this proceeding, we are authorizing a motion to terminate
`
`4
`
`
`
`IPR2015-00731 (Patent RE42,368 E)
`IPR2015-00739 (Patent RE42,678 E)
`
`as provided for below. In the interests of conserving time and resources, no
`opposition to the motion is authorized at this time, however, Petitioner will
`be provided an opportunity to respond if the Board determines such an
`opposition is necessary.
`Accordingly, it is:
`ORDERED that Petitioner shall file as an exhibit the “Schedule
`5.5(A) of the Contribution Agreement,” relied upon in its Motion to Re-
`Caption the Proceeding, and may redact any content from that exhibit not
`relevant to this proceeding;
`FURTHER ORDERED that Patent Owner is authorized to file
`substantively identical Motions to Terminate in IPR2015-00731 and
`IPR2015-00739, not to exceed fifteen (15) pages, and limited only to Patent
`Owner’s contention that the Board lacked jurisdiction to institute inter
`partes review in this proceeding, no later than February 19, 2016; and,
`FURTHER ORDERED that no opposition by Petitioner to the
`Motions to Terminate is authorized at this time.
`
`
`
`5
`
`
`
`IPR2015-00731 (Patent RE42,368 E)
`IPR2015-00739 (Patent RE42,678 E)
`
`For Petitioner:
`
`Walter Linder
`FAEGRE BAKER DANIELS LLP
`patentdocketing@faegrebd.com
`
`For Patent Owner:
`
`Jason Eisenberg
`Robert Sterne
`Jon Wright
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`Jasone-ptab@skgf.com
`rsterne-PTAB@skgf.com
`jwright-PTAB@skgf.com
`
`6
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
