trials@uspto.gov
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`571-272-7822
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`IPR2015-00731, Paper No. 50
`IPR2015-00739, Paper No. 49
`June 21, 2016
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`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`LUMENTUM HOLDINGS, INC., LUMENTUM, INC. LUMENTUM
`OPERATIONS, LLC, CORIANT OPERATIONS, INC., CORIANT (USA)
`INC., CIENA CORPORATION, CISCO SYSTEMS, INC. and
`FUJITSU NETWORK COMMUNICATIONS, INC.
`Petitioners
`vs.
`CAPELLA PHOTONICS, INC.
`Patent Owner
`- - - - - -
`Case IPR2015-00731 and IPR2015-00739
`Application 12/816084
`Patents RE42, 368E and RE42, 678E
`Technology Center 2800
`Oral Hearing Held: May 24, 2016
`
`Before: JAMES A. TARTAL, JOSIAH C. COCKS,
`KALYAN K. DESHPANDE, Administrative Patent Judges
`
`The above-entitled matter came on for hearing on May 24,
`2016 at the U.S. Patent and Trademark Office, 600 Dulany Street,
`Alexandria, Virginia, Courtroom A, at 3:03 p.m.
`
`REPORTED BY: Karen Brynteson, RMR, CRR, FAPR
`
`
`
`571-272-7822
`
`IPR2015-00731, Paper No. 50
`IPR2015-00739, Paper No. 49
`June 21, 2016
`
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`LUMENTUM HOLDINGS, INC., LUMENTUM, INC. LUMENTUM
`OPERATIONS, LLC, CORIANT OPERATIONS, INC., CORIANT (USA)
`INC., CIENA CORPORATION, CISCO SYSTEMS, INC. and
`FUJITSU NETWORK COMMUNICATIONS, INC.
`Petitioners
`vs.
`CAPELLA PHOTONICS, INC.
`Patent Owner
`- - - - - -
`Case IPR2015-00731 and IPR2015-00739
`Application 12/816084
`Patents RE42, 368E and RE42, 678E
`Technology Center 2800
`Oral Hearing Held: May 24, 2016
`
`Before: JAMES A. TARTAL, JOSIAH C. COCKS,
`KALYAN K. DESHPANDE, Administrative Patent Judges
`
`The above-entitled matter came on for hearing on May 24,
`2016 at the U.S. Patent and Trademark Office, 600 Dulany Street,
`Alexandria, Virginia, Courtroom A, at 3:03 p.m.
`
`REPORTED BY: Karen Brynteson, RMR, CRR, FAPR
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`WALTER C. LINDER, ESQ.
`
`Faegre Baker Daniels LLP
`
`2203 Wells Fargo Center
`
`90 S. Seventh Street
`
`Minneapolis, Minnesota 55402
`
`612-766-7000
`
`walter.linder@faegreBD.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`
`
`
`ROBERT GREENE STERNE, ESQ.
`JASON D. EISENBERG, ESQ.
`JONATHAN TUMINARO, Ph.D., ESQ.
`Sterne Kessler Goldstein Fox
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`202-371-2600
`rsterne@skgf.com
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`Case IPR2015-00731 and IPR2015-00739
`Application 12/816084
`
`
`P R O C E E D I N G S
`
`(3:03 p.m.)
`JUDGE TARTAL: Good afternoon. Please be
`
`seated.
`
`Welcome. We are here for the final hearing in two
`separate inter partes review cases, both are captioned
`Lumentum Holdings, Incorporated, Lumentum, Incorporated,
`Lumentum Operations, LLC, Coriant Operations, Incorporated,
`Coriant (USA), Incorporated, Ciena Corporation, Cisco
`Systems, Incorporated, and Fujitsu Network Communications,
`Inc., Petitioners, versus Capella Photonics, Incorporated,
`Patent Owner.
`The first case is IPR2015- 00731 concerning U.S.
`patent RE42,368E, and the second case is IPR2015- 00739,
`concerning U.S. patent RE42,678E.
`Let me introduce the panel. I am joined by Judge
`Cocks. To my right is Judge Deshpande, and I am Judge
`Tartal.
`
`Let's get the parties appearances first, please. Who
`do we have appearing today on behalf of Petitioner?
`MR. LINDER: Walter Linder.
`JUDGE TARTAL: Good afternoon, counsel.
`And for Patent Owner, who do we have appearing
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`today?
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`MR. STERNE: Good afternoon, Your Honor,
`Robert Sterne, again, for Patent Owner.
`JUDGE TARTAL: Thank you. And welcome.
`And, again, we set forth the procedures for today's
`hearing in the trial order. As a reminder each party will have
`40 minutes of total time to present arguments in both cases.
`Petitioner has the burden of proof and will go first.
`Petitioner will open jointly for both cases. Patent Owner will
`then present opposition arguments jointly for both cases. And
`then to the extent that Petitioner has reserved time, Petitioner
`may present reply arguments jointly for both cases.
`The parties must at all times make clear which case
`they are discussing so that we can maintain a clear transcript.
`Also for the clarity of the transcript, we ask that you refer to
`an exhibit or demonstrative slide by indicating for the record
`the exhibit and page number or for demonstratives, the slide
`number to which you are referring.
`We are aware that Petitioner has filed objections to
`eight of the Patent Owner's demonstrative slides on the basis
`that they cite portions of the exhibits in the record not
`previously cited or case law not previously cited.
`We reviewed the demonstratives and have
`determined that Patent Owner is permitted to present
`arguments on those slides, but we will refrain from ruling on
`those objections at this time.
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`Both parties are reminded that demonstrative slides
`are not evidence and will not be relied upon for final decision.
`Moreover, arguments raised for the first time
`during this hearing or in demonstrative will not be given
`weight in our final written decision. We remind each party
`under no circumstances are they to interrupt the other party
`while the party is presenting its arguments and demonstratives.
`If a party wants to spend time arguing that the
`demonstrative or argument presented by the other party is
`objectionable for any reason, that objection may be voiced
`only during the objecting party's argument time.
`Are there any questions on behalf of Patent Owner
`at this time?
`MR. STERNE: No. No, Your Honor, no questions.
`JUDGE TARTAL: And any questions on behalf of
`Petitioner at this time?
`MR. LINDER: None, Your Honor.
`JUDGE TARTAL: Petitioner, would you like to
`reserve a certain amount of time for your reply?
`MR. LINDER: Your Honor, I would like to reserve
`ten minutes for rebuttal of what I understand is the 40 minutes
`allotted for our presentation.
`JUDGE TARTAL: Yes. So 40 minutes total. And
`you can reserve ten minutes for the reply.
`MR. LINDER: That's correct. Thank you.
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`JUDGE TARTAL: Okay. Counsel, you may begin
`when you are ready.
`MR. LINDER: Thank you, Your Honor. If I may,
`could I approach the bench and offer you a copy of the
`demonstratives that I have?
`JUDGE TARTAL: Certainly.
`MR. LINDER: I am going to be speaking to these
`demonstratives, these slides. They are, in fact, a summary of
`the positions that we have advanced in our Patent Owner's --
`our Petitioner's reply. And in the sequence of that reply,
`which also effectively tracks the Patent Owner's response.
`I would like to begin by turning to slide 3. And at
`the top I have identified the claims that are at issue in these
`two IPRs, but I am not going to focus on that at this point.
`That is purely for purposes of reference. What I would like to
`do is talk about the prior art that is at issue here.
`The instituted grounds for all the independent
`claims and most of the dependent claims in both the patents at
`issue are the Bouevitch, Sparks, and Lin references.
`Bouevitch is the primary reference. And Sparks is the
`secondary reference that we rely upon for purposes of showing
`a two-axis mirror.
`And the issues relating to Sparks are central to the
`issues that I want to discuss here in these inter partes reviews
`today.
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`And as this panel knows, these same two patents
`are the subject of other related proceedings, but of particular
`relevance to these IPRs that we're just discussing right now
`are IPRs 2014-1166 and 1276. I think they were referred to
`earlier as the Cisco IPRs.
`The reason these are of particular relevance is that
`they are addressed -- they address the identical claim set, Your
`Honor, the identical claim sets to those that we're dealing with
`here.
`
`And in both of those IPRs, as you know, it was
`mentioned earlier, there have been final written decisions that
`found those claim sets, claim sets we're dealing with here
`today, as unpatentable.
`And, in fact, those decisions are correct. They are
`based -- well based upon the facts and the law. And in those
`decisions, the prior art that was applied is also similar. It
`looks -- they look to the Bouevitch, Smith, and Lin patents as
`the primary challenge basis.
`The only difference between the two is that we
`look to Sparks for two- axis mirrors; whereas these other Cisco
`IPRs utilize the Smith patent for two- axis mirrors.
`And, as a result, there is really only two issues that
`have -- that are unique to these IPRs that have not been
`decided previously. Those two issues are, Number 1, does
`Sparks show the two- axis mirror features; and, Number 2,
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`would it have been obvious to combine the features of Sparks
`with the Bouevitch patent.
`Those are the two issues that I am going to speak
`to this afternoon. Does Sparks show all the two- axis mirror
`features; Number 2, would it have been obvious to incorporate
`the Sparks features into the Bouevitch patent?
`And now, as Petitioners, we have the burden of
`proof. So what I would like to do is to briefly summarize the
`challenged bases, show how we apply the prior art references
`to claims at issue, and that will also provide a good segue into
`the two issues that I have mentioned I want to discuss.
`So for purposes of that, I am going to turn to slide
`number 7. Slide 7 and a series of sequential slides are claim
`charts where I have on the right side claim 1 from the '678
`patent, which, Your Honor, I am going to use as the example
`of the claims that I want to discuss today, claim 1 of the '678
`patent really has all the key claim limitations included in it.
`And it also effectively encompasses all the issues that need to
`be addressed in connection with the two that I have -- that I
`have put out.
`And my presentation, the slides do address some
`other dependent claims, but that was for completeness. I don't
`anticipate myself presenting any information on them.
`So, again, in these slides, on the right side is claim
`
`1.
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`Case IPR2015-00731 and IPR2015-00739
`Application 12/816084
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`
`JUDGE COCKS: Counsel, I will interrupt real
`quickly. You said something I wanted to clarify. When you
`say for completeness, what do you mean?
`MR. LINDER: Just that in the -- in the Patent
`Owner's response, they have alleged patentability for some of
`the dependent claims. And I have in our slides arguments
`refuting those.
`JUDGE COCKS: I want to make sure that the
`purpose of demonstratives is to facilitate your discussion
`today. Anything that you don't mention today, we're not going
`to turn to on our own.
`MR. LINDER: Understood, Your Honor. I'm
`sorry, where I really was trying to go with that is to say I am
`going to be jumping around a little bit in my slides to address
`the two key issues that I want to here today.
`JUDGE COCKS: That's fine. Thank you.
`MR. LINDER: And on the left of the column, I
`have got excerpts from the patents that we rely upon for our
`challenge basis. And for starters, we have got the Bouevitch
`patent. In particular, figure 11 of the Bouevitch patent.
`I want to make it very clear, Figure 11 of the
`Bouevitch patent discloses each and every element of
`Bouevitch that we rely upon for purposes of our challenge
`basis.
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`
`So moving on, as has been highlighted on the right,
`the first element in claim 1 is multiple fiber collimators,
`multiple. Well, Bouevitch has multiple fiber collimators in
`the form of microlenses 12a and 12b.
`On to slide 8, claim 1 requires an input port that is
`provided by those collimators. Bouevitch shows in port 1.
`Slide 9, collimators also provide a plurality of output ports.
`Bouevitch embodiment Figure 11 discloses two output ports in
`the form of OUT EXPRESS and OUT DROP.
`On to slide 10, a wavelength separator is in the
`claim. Bouevitch discloses a diffraction grating 20, which
`separates wavelengths.
`And on slide 11, claim 1 requires a beam-focuser.
`Bouevitch Figure 11 has a spherical mirror that provides beam
`focusing functions.
`And now on to slide 12, here is where we start
`getting to the heart of the matter. Claim 1 requires
`micro-mirrors to reflect corresponding channels into selected
`ones of said output ports. In effect what that is saying is it
`requires micro-mirrors for what we refer to as the switching
`function.
`
`Well, the Bouevitch Figure 11 is a COADM, which
`is a configurable optical add/drop multiplexer. It provides a
`switching function.
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`And as shown on the left side of the slide, of slide
`12, the Figure 11 embodiment of Bouevitch also has a MEMS
`array 50, which has two reflectors, 51 and 52. So Bouevitch
`has micro-mirrors that provide the switching function.
`Now on to slide 13. And here is where I am going
`to discuss issue number 1. Does the Sparks patent disclose the
`two-axis mirror features that we are certain that it does? And
`so, in addition to just requiring micro- mirrors that provide a
`switching function, claim 1 also requires that those
`micro-mirrors be pivotable about two axes and that they
`provide a power control function in addition to the switching
`function.
`
`The power control function is referred to in some
`of the language I have got highlighted down in the bottom
`toward the right where it says "to any selected one of said
`output ports and to control the power of the received spectral
`channels."
`Here I have got excerpts from the Sparks patent
`shown on the left side. And I have highlighted the key
`language of Sparks. Specifically, Sparks discloses a switch.
`It is an optical device for switching light beams and telecom
`equipment like Bouevitch. It specifically says its
`micro-mirrors are capable of two-axis movement. It also says
`that this two- axis movement permits the switch to be utilized
`to achieve any desired optical beam power.
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`So the Sparks patent discloses two- axis mirrors
`that provide power control functionality in addition to
`switching functionality.
`I would like to take a brief -- make a brief point
`here. My slides do, in connection with -- on slide 13, I am
`referring also to the continuously controllable feature as
`associated with Sparks. I want to make clear that ground 2
`that was adopted does not look to Sparks for continuously
`controllable. That feature is in Lin, which I will be addressing
`next.
`
`This just showed up in these slides. It was a
`carryover from our petition and our response where we did
`allege ground 1 had Sparks for purposes of continuous control.
`For arguments today, I am not relying any at all
`whatsoever on Sparks for purposes of the continuously
`controllable feature, purely a carryover. And --
`JUDGE TARTAL: Is that true, just to be clear, are
`you -- are you limiting that to your argument today or are you
`saying that Petitioner no longer contends that, that Sparks
`discloses continuous control?
`MR. LINDER: The adopted ground 2 does not look
`to Sparks for continuous control. It only looks to Lin. And
`we are content with the position that Lin shows the continuous
`control feature.
`JUDGE TARTAL: Okay. Thank you.
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`MR. LINDER: Your Honors, at this point I'm done
`presenting in connection with issue 1.
`In summary, the Sparks patent teaches two- axis
`micro-mirrors that provide power control functionality in
`addition to switching.
`Just for purposes of completeness, I can move on
`to slide 14, where I do have an illustration of the Lin patent on
`the left. In ground 2, that was instituted, we point to the Lin
`patent for the continuous controllability feature.
`Lin is a one-axis sphere, we acknowledge that, but
`it very clearly shows continuous control for that mirror.
`And on the lower left is figure 3B from Lin, which
`is a draft correlating the input voltage, the control voltage to
`the mirror versus the deflection that is achieved. That line is
`solid. It is a continuous line. It is not a broken line, nor is it
`a stair-step line that might indicate a digital type of control
`relationship. So Lin very clearly shows continuous control.
`If it may please the Court, at this point I would
`like to move on to issue Number 2, that being would it have
`been obvious to incorporate the features of the Sparks patent
`into the Bouevitch patent. And I am going to do that with
`reference to starting with slide 20.
`The Petitioners allege that incorporating the
`features of Sparks into the Bouevitch patent is simply the
`substitution of known technology into a similar approach, a
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`similar technique, in a manner that is entirely predictable for
`purposes of improving devices in a known manner to achieve
`predictable results.
`The Patent Owner's response to that is that the
`Sparks mirrors were complicated devices, that they were
`two-axis devices and that it would have been difficult to
`implement them in the Bouevitch device.
`Your Honor, that is just simply not the correct law
`to be applied here. We cited the In re Keller case, which
`points out that the proper test is what would the combined
`teaching of those references have suggested to a person of
`ordinary skill?
`And based upon the fact that it was a substitution
`of a known technique in a known manner to achieve
`predictable results, it was apparent to a person of ordinary
`skill in the art that this could be done. Our expert, Mr.
`McLaughlin, points out that persons of ordinary skill in the art
`were very capable of overcoming the technical issues
`associated with such a substitution.
`He says, in particular, it would have been routine
`engineering. He also says that the results were entirely
`predictable.
`The obviousness test does not require that there be
`a teaching of how to bodily incorporate the references
`together. There was no need for a flow chart or an
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`engineering specification describing how to put the two- axis
`mirror into Bouevitch.
`Moving on to slide 21, the Patent Owner totally
`ignores the fact that the Sparks patent in the document itself
`teaches a person of ordinary skill why they would want to
`incorporate that feature into Bouevitch. Specifically, Sparks
`says, hey, you can get power control for free.
`I have got here just a couple of quotes from the
`Sparks patent. There is many others to refer to column 2,
`lines 28 to 30. It says, "utilize an optical switch in this format
`alleviates the requirement for separate optical attenuators."
`The next quotation from Sparks at column 4, line
`55, "the attenuation is achieved without incorporating separate
`attenuators within the system."
`There is no hindsight involved here. Sparks says
`why you want to make this substitution. It is a classic case of
`the reference itself providing intrinsic motivation for the
`reason to combine.
`Moving on to slide 22, we point out that in
`addition to the one-axis mirrors of Bouevitch, two- axis mirrors
`of Sparks were one of a very, very small set of options of
`providing a beam control functionality in an optical device.
`The Patent Owner cites testimony from his expert
`that says, hold on, there is another option, and that would be a
`liquid crystal device. And that expert goes on to say that he at
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`least thinks the person of ordinary skill would have first to
`look to liquid crystal devices as in option 4, two axis control.
`Even if that's the case, I mean, so the -- so the set
`of options for a one-axis mirror in that case was two, rather
`than one. And even if you would have looked to liquid
`crystals first, you got two- axis mirrors second.
`I mean, the number of options is so limited, this is,
`again, a classic case of a reason for non-obviousness based
`upon obvious to try rationale, which the KSR Court has
`expressly indicated is a viable basis for showing obviousness.
`Next, Your Honor, I am going to move on to the
`issue that was presented in the IPR hearing here earlier this
`morning. The Patent Owner asserts that Bouevitch teaches
`away from misalignment for purposes of power control. I have
`got to tell you, that is absolutely not the case.
`Bouevitch very, very clearly discloses power --
`discloses misalignment for purposes of power control. What
`the Patent Owner ignores repeatedly is the fact that Bouevitch
`discloses what we refer to as an alternative figure 9
`embodiment, which shows that feature.
`So in my slide here on slide 23, I have got on the
`lower right an illustration of Figure 11 from Bouevitch, which
`we know is a switch. And that embodiment, Figure 11, has the
`MEMS array with two movable mirrors in the lower right-hand
`corner for purposes of beam modifying means.
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`The illustrated figure 9 embodiment of the
`Bouevitch patent is shown in the lower right. And we
`acknowledge that it shows a modifying means 950 that has a
`mirror 940 and a liquid crystal device 930.
`In the column 12, lines 35 to 39, is a description of
`the alternative Figure 9 embodiment. And it says that you
`would -- it says that that alternative embodiment has the entire
`modifying means 950 of Figure 9 replaced by the MEMS array
`50 in Figure 11.
`So if you can picture in your own mind the picture
`in the previous argument that actually had a slide that didn't
`do this but picture in your own mind you are taking out
`everything 950 in Figure 9 and you are substituting in the
`dashed line 50 with the two movable mirrors from Figure 11.
`That's the alternative Figure 9 embodiment. What does it look
`like? It looks like the switch of Figure 11.
`And also that alternative Figure 9 embodiment is a
`DGE. It is a dynamic gain equalizer. It is a power control
`device.
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`So there you have got that alternative Figure 9
`embodiment showing movable mirrors for changing the return
`angle of the light beam as on topic 8 on the return path of the
`device back to the guided optics of -- of the ports.
`And another point I want to make here in
`connection with this alternative figure 9 embodiment is that
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`when you substitute the mirrors for the modifying means 950,
`there are no -- sorry, let me back up and restate that.
`After you make that substitution, there is only
`reflective optical elements in the path between those MEMS
`array mirrors 50 and the guided optics at the port end of the
`alternative Figure 9 embodiment. Therefore, the -- the -- the
`attenuation function that is provided by that alternative Figure
`9 embodiment is achieved when the angled beams return from
`those mirrors back to the guided optic ports.
`Therefore, the attenuation occurs when those return
`beams are coupled back into the optical ports. That's because
`the mirror reflects 100 percent of the beam that is impinged
`upon it. Therefore, the return beams coming out have the
`same power level as the beam that came in and hit the MEMS
`mirror in that alternative Figure 9.
`Therefore, the attenuation occurs at the location
`where the return beams are coupled back into the guiding
`optics.
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`JUDGE TARTAL: And what is that location,
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`counsel?
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`MR. LINDER: That location occurs right at the
`point identified as Number 992 in the illustrated Figure 9
`embodiment.
`Your Honor, moving on to my next slide, which is
`slide 24, addresses a similar position that was raised by the
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`Patent Owner. And they -- I'm sorry. No. Back up. Slide 24,
`I want to -- I also have some case law here that supports the
`point that the fact that the Bouevitch patent has a number of
`different embodiments is a reason why that patent does not
`teach away from any particular one of those embodiments.
`The Bouevitch patent doesn't criticize its
`alternative Figure 9 embodiment. It describes it as a dynamic
`equalizer, a power control device.
`The parts of the Bouevitch patent that the power --
`that the Patent Owner relies upon to assert that there is a
`teaching away is, in fact, a reference in the background of the
`invention section to the Patel patent that relates to switching.
`And so, I mean, there is no discrediting or
`criticizing by Bouevitch of its own embodiments.
`Now, I would like to move on to the next slide,
`which is slide 25. And this is, I think, the last of the reasons
`that the Patent Owner raises trying to prove its case.
`They allege that Bouevitch and Sparks are not
`incompatible. They say Bouevitch and Sparks are
`incompatible because they perform attenuation at the opposite
`ends of the system.
`And, in fact, what they are saying is that Bouevitch
`performs attenuation only down at the modifying means. And
`I am returning now back to -- I'm sorry, Your Honor -- I am
`turning back to slide 24, the embodiments of Figure 9. They
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`say that Bouevitch discloses attenuation in the lower left or
`the lower right-hand corner at the modifying means, and that
`since it doesn't do attenuation at the guided optics location,
`where the free space beam is coupled back in, that it is
`inconsistent with Sparks.
`Well, Your Honor, that's -- that's wrong. Again, it
`totally ignores the alternative Figure 9 embodiment, which
`results in misalignment at the location where the beam enters
`the guided optics.
`In summary, Your Honor, it would have been
`obvious to have incorporated all the features of the Sparks
`patent into the Bouevitch patent. It was merely the
`substitution of a known device in a similar application, in a
`predictable manner. Sparks expressly says why you would do
`it. No hindsight is needed.
`It would have been obvious to try, even indulging
`the Patent Owner's argument. There were two options to the
`one-axis mirror in Bouevitch, both of which were perhaps
`predictable. And, finally, there is no teaching away.
`Bouevitch has embodiments that expressly disclose
`misalignment in connection with the power control.
`If there is no questions, Your Honor, I would like
`to just real briefly move on to one other feature of the Patent
`Owner's arguments, and that's in connection with slide 47. I
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`was saying earlier justification for having to jump around a
`little it.
`
`Patent Owner raises an industry adoption
`argument. Well, they don't tell us what the legal significance
`of industry adoption is. They cite to nothing. They don't even
`suggest that it perhaps means secondary considerations or
`objective indication of non- obviousness. They don't say that.
`So industry adoption is just simply not relevant to
`the obviousness basis, especially in view of the great weight
`of evidence that we just saw that said it was obvious as heck
`to incorporate the features of Sparks into Bouevitch.
`And moving on to my next slide, even if industry
`adoption had some relevance to this case, they haven't shown
`any. What do they point to? They point to their own press
`release, their press release, the Business Wire, they point to
`their product brochure, the WavePath, and then they also
`report or they also point to a third- party publication that is
`identified as Holliday, which is a publication that summarizes
`a number of features of different optical telecom vendor
`equipment providers.
`Nowhere do they say that even one of their devices
`was sold. I mean, how does that evidence industry adoption
`when it doesn't even evidence the sale of a single solitary
`unit?
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`They also point to patents of our expert and patents
`of the expert in some other IPRs. And they put up some of the
`drawing figures from the two patents and try to draw some
`correlation there.
`But, I mean, there is no relationship between
`patents and industry adoption. It is whatever our expert, Mr.
`McLaughlin and Mr. Marom were working on at the time.
`There is no evidence that those particular features ever worked
`their way into any product.
`Your Honor, with that, absent any questions --
`JUDGE COCKS: I actually have one question.
`MR. LINDER: -- I am done.
`JUDGE COCKS: Wouldn't it be fair to say that if
`the industry had wholesale adopted it, that would suggest some
`sort of praise in the industry, which would be some sort of
`evidence of non- obviousness? Wouldn't that be a fair
`characterization?
`MR. LINDER: I think that that very well could be,
`Your Honor, but they don't even pitch this industry adoption
`as secondary consideration. They don't even mention
`secondary consideration law. They don't even attempt to -- I
`mean, there is a well-developed body of law in connection
`with secondary considerations because it has got to meet a
`pretty high threshold in order to overcome a strong showing of
`obviousness.
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`And they don't even attempt to address the law
`associated with secondary considerations. For example, they
`don't even attempt to point to a nexus between their claimed
`elements that they say is so great and wonderful and any
`commercial success. As I pointed out earlier, nor do they even
`show any commercial success. They haven't alleged they sold
`a single device.
`JUDGE COCKS: Okay. Thank you.
`MR. LINDER: Thank you, Your Honor.
`JUDGE TARTAL: Thank you, counsel. You have
`just a little more than ten minutes left in your time for reply.
`MR. EISENBERG: May I approach, Your Honor?
`JUDGE TARTAL: Yes, please. Thank you.
`Counsel for Patent Owner, you can begin when you
`are ready.
`MR. STERNE: Thank you, Your Honor.
`I must express my disappointment with what I just
`heard. There is a lot of mistakes that were made.
`You know, I have to defend these patents over and
`over and over again. I mean, obviousness has been turned on
`its head. I mean, sure, everything is around. I mean, it is not
`like we invented a new element on the periodic chart.
`So everything could be picked, chosen, and
`inserted, and then you read the references and you distort what
`the references say. In these proceedings, the burden of proof
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`is on the Petitioner, not on us. The burden is on the
`Petitioner. And the Petitioner here has not met their burden.
`So let me show you why.
`So let's go back to claim construction agai
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