UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`PANDUIT CORP.,
`Petitioner,
`
`v.
`
`CORNING OPTICAL COMMUNICATIONS LLC,
`Patent Owner.
`______________________
`
`Case IPR2017-00029
`Patent 8,538,226 B2
`__________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`PANDUIT CORP.,
`Petitioner,
`
`v.
`
`CORNING OPTICAL COMMUNICATIONS LLC,
`Patent Owner.
`______________________
`
`Case IPR2017-00029
`Patent 8,538,226 B2
`__________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`Background .................................................................................................... 1
`
`A. Overview of the ’226 Patent .................................................................. 1
`
`B.
`
`C.
`
`Overview of the Prosecution History .................................................. 12
`
`Overview of the Prior Art .................................................................... 13
`
`1.
`
`Smrha ........................................................................................ 13
`
`II.
`
`Petitioner Has Failed to Show That Any of the Challenged Claims
`Are Unpatentable ......................................................................................... 16
`
`A.
`
`B.
`
`the Same
`the Same or Substantially
`Petitioner Makes
`Arguments Considered Previously During Prosecution ..................... 16
`
`Smrha Does Not Disclose Aspects of the Invention Recited in
`the Challenged Claims ........................................................................ 19
`
`1.
`
`2.
`
`3.
`
`4.
`
`Smrha Does Not Disclose a Stopping Member
`Configured to Receive a Complementary Member in
`Fiber Optic Equipment .............................................................. 19
`
`Smrha Does Not Disclose Fiber Optic Modules
`Supported by a Fiber Optic Equipment Tray ............................ 21
`
`Smrha Does Not Disclose Guide Members with Front
`and Rear Pull-Out Limiting Members ...................................... 26
`
`Smrha Does Not Disclose a Leaf Spring .................................. 30
`
`III. Conclusion .................................................................................................... 31
`
`
`
`i
`
`
`
`
`
`I.
`
`BACKGROUND
`A. Overview of the ’226 Patent
`The ’226 patent discloses advancements made by Corning to fiber optic
`
`equipment. Fiber optic networks at the time of the ’226 patent were migrating to
`
`higher cable fiber counts, and these higher density connections make it more
`
`difficult to install or access optical components in fiber optic equipment. The
`
`difficulty created by the higher fiber counts included both hand access to the
`
`optical connectors as well as routing and organizing jumper connections. Thus, at
`
`the time of the invention, there was a need “to improve access to optical
`
`components in a fiber optic equipment tray as well as provide neat routing and
`
`organization of jumper connections.” Ex. 1001 at 2:07–10. The ’226 patent
`
`addresses these needs by proposing several specific design features intended “to
`
`support movement or translation of the fiber optic equipment for access” by a
`
`technician. Id. at 6:24–57.
`
`To fully appreciate the design features set out in the ’226 patent, it is
`
`important to understand the building blocks at the base of the fiber optic equipment
`
`at issue. To begin, the need for increased density in fiber optic equipment
`
`demanded in the market today requires multiple adapters to receive optical paths in
`
`one configuration and reconfigure the paths into a different configuration to
`
`
`
`1
`
`
`
`
`
`facilitate transitions throughout the system. For example, a single adapter 152 of
`
`the ’226 patent is shown below:
`
`
`
`Ex. 1001 at Fig. 16A. When unenclosed, these adapters are accessible from both
`
`the front and the rear, allowing connections to be made to both the front and rear
`
`configurations. To increase density, adapters can be laid out in a row to form an
`
`adapter panel or array. In the ’226 patent, multiple adapters 152 are laid out to
`
`form an adapter array, for example, in the following arrangement:
`
`
`
`Id. Again, when unenclosed, each of the adapters in the adapter panel is accessible
`
`from both the front and the rear.
`
`One advancement made by the inventors of the ’226 patent was to transition
`
`away from the bare adapter panels shown above toward modular housings that are
`
`
`
`2
`
`
`
`
`
`more easily inserted and removed from fiber optic equipment. Figure 16A of the
`
`’226 patent illustrates fiber optic module 26:
`
`
`
`Id., Fig. 16A. As shown in the figure above, fiber optic modules contain a housing
`
`structure that encloses adapters, along with internal fibers and other components
`
`inside the housing. More specifically, fiber optic modules are “comprised of a
`
`number of fiber optic adapters 152 disposed on a front end” and “[a]nother fiber
`
`optic adapter 158 [] disposed on a rear end.” Id. at 16:20–35. These modules not
`
`only manage fiber connections between the front adapters and rear adapters but
`
`also provide the advantage that the modules “may also manage polarity between”
`
`these adapters if desired. Id. at 16:35–39.
`
`
`
`3
`
`
`
`
`
`In the data centers of today that demand ever higher fiber density, the use of
`
`modular housings rather than bare adapter panels makes it easy for a technician to
`
`quickly insert or remove a large amount of fiber optic equipment at once to
`
`“establish fiber optic connections therewith more efficiently and conveniently.”
`
`Id. at 15:43–48. For example, the module shown above in Figure 16A supports
`
`“twelve (12) optical fibers” by providing pre-established connections between the
`
`six 2-fiber “duplex LC fiber optic connectors” in the front and a single 12-fiber
`
`“MTP fiber optic adapter” in the rear. Id. at 16:20–35. In a conventional system,
`
`the technician would have to make each of these connections manually. Moreover,
`
`as discussed further below, multiple modules can be used together, achieving
`
`densities of “ninety-six (96) optical fiber connections” per drawer or more. Id. at
`
`21:13–18. Having to manually connect each individual fiber connection, as
`
`required by the conventional adapter-only solutions, is extremely time consuming
`
`and makes organization and management difficult.
`
`To facilitate the easy use of these fiber optic modules, there are “rails 128A,
`
`128B [] disposed on each side” of the module. Id. at 16:40–41. These module
`
`rails can be seen in the following figure:
`
`
`
`4
`
`
`
`
`
`
`
`Id. at Fig. 16B (highlighting added).
`
`As described in the ’226 patent, these rails allow the fiber optic modules “to
`
`be inserted within the module rail guides 126 in the fiber optic equipment tray 22.”
`
`Id. at 16:41–44. The module rail guides 126 on the equipment tray 22 can be seen
`
`in the figure below:
`
`
`
`5
`
`
`
`
`
`Id. at Fig. 15 (highlighting added).
`
`In this embodiment, up to four fiber optic modules can be inserted onto one
`
`tray, as shown in the following figure:
`
`
`
`
`
`6
`
`
`
`
`
`
`
`Id. at Fig. 17 (highlighting added).
`
`Certain claims of the ’226 patent are directed to this aspect of the fiber optic
`
`equipment design. For example, independent claim 32 requires “a fiber optic
`
`equipment tray supporting one or more fiber optic modules,” along with an
`
`associated rail and guide system.
`
`Further building upon the ability to manage and easily use the increased
`
`fiber density equipment, these fiber optic trays are themselves insertable into a
`
`chassis or similar equipment. For example, in the following figure, two fiber optic
`
`equipment trays—both of which support four fiber optic modules—have been
`
`
`
`7
`
`
`
`
`
`inserted into chassis 12, significantly increasing the fiber density while at the same
`
`time facilitating easy use of the fiber optic equipment by the technician:
`
`
`
`Id. at Fig. 5.
`
`To accomplish both increased density and ease of use, the ’226 patent
`
`equipment trays also have rails that facilitate insertion and removal from the
`
`chassis. For example, the equipment trays have “tray rails 136 [] configured to be
`
`received in the tray guides 74” in the chassis. Id. at 15:60–65. The tray rails 136
`
`can be seen in the following figure:
`
`
`
`8
`
`
`
`
`
`Id. at Fig. 17 (highlighting added). These tray rails are designed to be received by
`
`the tray guides 74 depicted in the following figure:
`
`
`
`Id. at Fig. 13K.
`
`
`
`9
`
`
`
`
`
`
`
`The ’226 patent also provides several improvements to the specific guides
`
`and rails of fiber optic equipment. For example, it teaches that “leaf springs” can
`
`be added to the guide channels “to provide stopping or resting positions.” Id. at
`
`18:28–39. The ’226 patent explains that leaf springs are advantageous over other
`
`types of springs or stopping mechanisms because they can be in an unstressed state
`
`while engaged, preventing the “creep [that] can occur over time.” Id. at 19:37–41.
`
`Such creep has the effect of “reducing the effectiveness” of the spring, thus making
`
`the stopping mechanisms less effective. Id. Certain claims of the ’226 patent
`
`recite the use of leaf springs to implement stopping mechanisms.
`
`The ’226 patent also describes the use of front and rear pull-out limiting
`
`members to provide further control over and ease of use of the fiber equipment.
`
`For example, in the following embodiment, the “pull-out limiting members 66 each
`
`include tabs 68 that are configured to also engage with lances 88 disposed in the
`
`chassis 12.” Id. at 10:04–16. These pull-out limiting members 66 and tabs 68 can
`
`be seen in the following figure:
`
`
`
`10
`
`
`
`
`
`Id. at Fig. 7. During operation, these pull-out limiting members engage lances 88
`
`in the chassis, shown in the figure below:
`
`
`
`
`
`Id. at Fig. 8A. In particular, “tab 68 is configured to enter an opening 94 disposed
`
`in the lance 88,” which provides control over the extent to which the equipment
`
`drawer is able to be pulled out of the chassis. Id. at 11:51–59. Certain claims of
`
`11
`
`
`
`
`
`the ’226 patent recite the use of such “pull-out limiting members” in various
`
`configurations.
`
`As described in some detail above, the designs described in the ’226 patent
`
`provide “enhanced access” for a technician to the various fiber optic components,
`
`as well as durability and other mechanical advantages. Id. at 6:50–60, 19:37–40.
`
`Such enhanced access is “useful for installation or re-installing, re-configuring,
`
`and/or removing fiber optic modules and accessing fiber optic connections made
`
`therein.” Id. at 6:61–63. In that way, the ’226 patent not only discloses improved
`
`fiber optic equipment designs but provides increased efficiency and usability of
`
`such equipment by the technicians for troubleshooting, moves, adds, or changes in
`
`the fiber optic network.
`
`B. Overview of the Prosecution History
`The Examiner’s prosecution of the ’226 patent focused on the Smrha
`
`reference. Ex. 1002, Non-Final Rejection (Dec. 13, 2011) at 2–4. In response to
`
`the Examiner’s rejection based on Smrha, Corning amended the claims and added
`
`what are now claims 37–48. After further prosecution, the Examiner then allowed
`
`the claims. Id., Notice of Allowance (Apr. 18, 2012).
`
`Following
`
`the Notice of Allowance, Corning submitted additional
`
`Information Disclosure Statements with additional references identified, for
`
`example, during prosecution of other applications. The additional disclosures
`
`
`
`12
`
`
`
`
`
`resulted in prosecution of the ’226 patent continuing for well over a year, with the
`
`Examiner reconfirming the patentability of the ’226 claims three additional times.
`
`Id., Notice of Allowance (Jan. 30, 2013), Notice of Allowance (May 9, 2013),
`
`Notice of Allowance (Aug. 5, 2013).
`
`C. Overview of the Prior Art
`1.
`Smrha
`Smrha describes “a chassis and a panel of adapters.” Ex. 1004 at 1:35–38.
`
`Figure 1 of Smrha shows these “adapter arrays 48”:
`
`Ex. 1004 at Fig. 1 (highlighting added).
`
`These adapter panels slide back and forth between two fixed positions. As
`
`shown in the figure above, the adapter panel highlighted in blue is positioned all
`
`13
`
`
`
`
`
`
`
`the way inward, whereas the adapter panel highlighted in yellow is extended all the
`
`way out. Id. at 4:12–19. Smrha explains that these adapter panels “slide” back and
`
`forth between “the predetermined forward position [and] the rearward position.”
`
`Id. at 4:03–45.
`
`To implement this sliding, Smrha uses “guides 66,” illustrated in the
`
`following figure:
`
`
`
`Id. at Fig. 10. As shown in the figure, “projection 70” is included in the middle of
`
`the guides 66. This projection engages “detents 72, 74” on the adapter panel rail
`
`members. Id. at 4:20–24. Because detents 72 and 74 are on different locations on
`
`the rail members, this allows the adapter panels to slide back and forth between
`
`these two fixed positions. Id. at 4:43–45.
`
`The identified invention in Smrha requires the use of bare, unenclosed
`
`adapter panels so that both sides of the adapters are accessible. When an adapter
`
`panel is slid out to its forward position, the adapters in these panels are accessible
`
`from both their front and rear side, allowing both “open rearward cable
`
`connections and open forward cable connections.” Id. at 1:36–38.
`
`
`
`14
`
`
`
`
`
`Smrha’s abstract describes the disclosed embodiment as “permitting access
`
`to the rearward and forward cable connections.” Id. at Abstract. The forward
`
`cable connections of the adapters can be seen in Figure 1 of Smrha above. The
`
`rear cable connections can be seen in Figure 4 below:
`
`Id. at Fig. 4. As shown in Figure 4, the “rear connection ends 52 of the adapters 46
`
`define open rearward cable connection locations 56.” Id. at 3:32–34. These rear
`
`ends of the adapters are “provided in an open region in the chassis 12.” Id. at
`
`
`
`3:32–39.
`
`To achieve this result, Smrha requires that “unenclosed adapters” be used in
`
`such a system as “opposed to a connection location that is enclosed within a
`
`housing or module, the housing or modules in turn being mounted within the
`
`chassis.” Id. at 3:23–45. Thus, Smrha explicitly states that the adapters should not
`
`be in any housing or module, as recited in claims of the ’226 patent.
`
`
`
`15
`
`
`
`
`
`II.
`
`PETITIONER HAS FAILED TO SHOW THAT ANY OF THE
`CHALLENGED CLAIMS ARE UNPATENTABLE
`A.
`
`Petitioner Makes the Same or Substantially the Same Arguments
`Considered Previously During Prosecution
`
`A Petition is properly denied where “the same or substantially the same prior
`
`art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). An
`
`“analysis under 35 U.S.C. § 325(d) for [an IPR] proceeding requires two
`
`determinations: (1) whether or not [the primary prior art reference] was presented
`
`to and considered previously by the Office in conjunction with [the challenged
`
`claims]; and (2) whether or not modifying the primary reference [in the manner
`
`proposed] was also presented to and considered previously by the Office.” Neil
`
`Ziegman, N.P.Z., Inc. v. Stephens, IPR2015-01860 (Paper 11) at 9. Further, the
`
`inquiry is not whether the exact same prior art combinations and arguments were
`
`previously presented; rather, the question is whether the Petition relies on “prior art
`
`and arguments substantially similar to those” previously addressed. Id. at 10.
`
`For all the challenged independent claims at issue here, Petitioner relies
`
`exclusively on the Smrha reference. More specifically, grounds 1 and 2 are based
`
`on Smrha alone. See Petition at 4. Ground 3 relies solely on Smrha for the
`
`independent claims and then uses a combination reference for the three dependent
`
`claims. See id. at 76–78.
`
`
`
`16
`
`
`
`
`
`As discussed above, Smrha was the primary reference thoroughly addressed
`
`by the Examiner during prosecution and allowance of the ’226 patent. Ex. 1002,
`
`Non-Final Rejection (Dec. 13, 2011) at 2–4, Notice of Allowance (Apr. 18, 2012).
`
`This Petition presents—for a second time—the very same argument that Smrha
`
`alone renders unpatentable the claims of the ’226 patent. The Smrha reference and
`
`Petitioner’s argument at issue here were already considered and rejected during
`
`prosecution. For at least this reason, review of the challenged claims should be
`
`denied.
`
`Recognizing this creates a problem under 35 U.S.C. § 325(d), Petitioner
`
`argues that the “Examiner clearly did not apply appropriate scrutiny when
`
`examining the application.” Petition at 19. This, however, is belied by the fact
`
`that the Examiner’s rejection relies on the same disclosures in Smrha that
`
`Petitioner relies on now. For example, the Examiner asserted that the system in
`
`Smrha includes a “fiber optic equipment rail (Item 64) configured to be received
`
`within the at least one guide member.” Ex. 1002, Non-Final Rejection (Dec. 13,
`
`2011) at 2. This “Item 64” within the “guide member” 66 are the very same
`
`components that Petitioner relies on now:
`
`
`
`17
`
`
`
`
`
`
`
`Petition at 23 (highlighting added).
`
`Furthermore, Petitioner also incorrectly suggests that the Examiner did not
`
`consider what Petitioner calls a “reverse embodiment” in Smrha in which the
`
`detents and protrusions are reversed. Petition at 16. In particular, Smrha explains
`
`that “detents 72, 74” can alternatively be protrusions instead of detents, and vice
`
`versa for protrusions on the guides. Ex. 1004 at 4:28–32. This, however, was
`
`explicitly addressed during prosecution—indeed, the Examiner notes that there are
`
`either “detents or protrusions incorporated into the apparatus (Note Items 72 and
`
`74).” Ex. 1002, Non-Final Rejection (Dec. 13, 2011) at 3 (emphasis added). Thus,
`
`the record is clear that the Examiner understood that “Items 72 and 74” in Smrha
`
`could be either “detents or protrusions.” Id. Moreover, as with the other claim
`
`limitations, these “Items 72 and 74” identified by the Examiner are precisely what
`
`Petitioner relies upon here for this “reverse embodiment.” See Petition at 52
`
`(“Smrha teaches, in the reverse embodiment, that the detents 72, 74 can be
`
`formed.”).
`
`Smrha is not a voluminous publication containing some hidden nugget of
`
`anticipatory material. The text of Smrha is three-and-a-half pages long. The
`
`Examiner clearly read it, understood how it worked, and concluded that the ’226
`
`patent claims contained allowable subject matter over it. The fact that the
`
`Petitioner does not agree with the Examiner’s conclusions does not change the fact
`
`
`
`18
`
`
`
`
`
`that this same prior art reference and “substantially similar” issues have already
`
`been expressly considered and rejected by the Office. Accordingly, the Petition
`
`should be denied in its entirety. See Ziegman at 9–11 (denying institution, noting
`
`that “prior art and arguments substantially similar to those set forth by Petitioner
`
`were previously presented to and considered by the Office”).
`
`B.
`
`Smrha Does Not Disclose Aspects of the Invention Recited in the
`Challenged Claims
`1.
`
`Smrha Does Not Disclose a Stopping Member Configured to
`Receive a Complementary Member in Fiber Optic
`Equipment
`
`Independent claim 1 requires “at least one stopping member disposed within
`
`the at least one guide member, wherein the at least one stopping member is
`
`configured to receive at least one complementary member in the fiber optic
`
`equipment.” Ex. 1001 at Claim 1. Petitioner does not explain whatsoever how any
`
`stopping member in Smrha is “configured to receive at least one complementary
`
`member.”
`
`For this limitation, Petitioner identifies “projection 70” in Smrha as the
`
`claimed “stopping member disposed within the at least one guide member.”
`
`Petition at 46. This projection 70 is illustrated in the figures below:
`
`
`
`19
`
`
`
`
`
`Ex. 1004 at Fig. 10 (highlighting added).
`
`
`
`
`
`Id. at Fig. 11.
`
`Petitioner does not explain how this “projection 70” is configured to
`
`“receive” any fiber optic equipment. The entirety of Petitioner’s analysis is as
`
`follows:
`
`Limitation 1.e calls for the stopping member to receive a
`complementary member in the fiber optic equipment.
`Smrha
`teaches
`that
`the projection 70 engages a
`complimentary detent 72 or 74 in the rail member 64
`attached to the fiber optic equipment 60. Thus all the
`elements of claim 1 of the ‘226 Patent are anticipated by
`Smrha.
`
`Petition at 47 (internal citations omitted).
`
`
`
`20
`
`
`
`
`
`This argument does not even attempt to address this language of claim 1.
`
`Petitioner does not explain how or what projection 70 is configured to “receive.”
`
`Accordingly, Petitioner has not established that Smrha discloses this limitation in
`
`independent claim 1 and dependent claims 2–13. Further, Petitioner relies
`
`exclusively on Smrha for this limitation in all grounds raised in the Petition. See
`
`Petition at 24–25, 76. Thus, for this reason as well, the Petition should be denied
`
`with respect to claims 1–13.
`
`2.
`
`Smrha Does Not Disclose Fiber Optic Modules Supported
`by a Fiber Optic Equipment Tray
`
`Independent claim 32 requires “a fiber optic equipment tray supporting one
`
`or more fiber optic modules.” Smrha fails to disclose fiber optic modules or an
`
`equipment tray that supports them.
`
`For this limitation, Petitioner identifies “panel section 60” as the claimed
`
`fiber optic equipment tray and “adapter block 58” as the claimed fiber optic
`
`modules. See Petition at 64, 70. These components are shown in the figure below
`
`(highlighted in green and red, respectively):
`
`
`
`21
`
`
`
`
`
`
`
`Ex. 1004 at Fig. 7 (highlighting added).
`
`a.
`
`The Unenclosed Adapters in Smrha Are Not Fiber
`Optic Modules
`
`Smrha explains that the adapters shown in the figure above are “unenclosed
`
`adapters.” Id. at 3:23–45. The use of unenclosed adapters allows for both “open
`
`frontward cable connection locations 54” and “open rearward cable connection
`
`locations 56,” meaning the adapters are accessible from both the front and the rear:
`
`
`
`22
`
`
`
`
`
`
`
`Id. at Figs. 1, 4.
`
`Smrha then explains that “[w]hat is meant by ‘open cable connection
`
`locations’ are locations that are provided in an open region in the chassis 12, as
`
`opposed to a connection location that is enclosed within a housing or module.”
`
`Id. at 3:36–40 (emphasis added). Thus, Smrha explicitly states that no “housing or
`
`module” is used, and it is an altogether “open region.”
`
`Petitioner fails to even address Smrha’s statement that these open,
`
`unenclosed adapters are not a module. Instead, Petitioner seeks to rewrite the
`
`claim language to only require components that “manage cable connections and
`
`polarity.” Petition at 70. As an initial matter, in its Rule 42.104(b)(3) statement,
`
`
`
`23
`
`
`
`
`
`Petitioner (a) identified no terms for claim construction and (b) provided no claim
`
`construction analysis. See Petition at 13. Moreover, Petitioner failed to cite any
`
`basis, facts, or rationale for limiting the term in that way (because there is none).
`
`At bottom, it is unclear why Petitioner believes this to be a proper claim
`
`construction. The portion of the ’226 patent from which Petitioner draws this
`
`language is a paragraph describing several uses and functions of fiber optic
`
`modules. See Ex. 1001 at 2:01–07. Indeed, the ’226 patent explicitly describes
`
`these as optional features—it notes, for example, that the “fiber optic module 26
`
`may also manage polarity.” Id. at 16:35–39 (emphasis added). Thus, Petitioner’s
`
`at best quasi claim construction of “fiber optic module” as anything that
`
`“manage[s] cable connections and polarity” finds no support in the intrinsic record
`
`and is simply unreasonable.
`
`Further, Petitioner does not even attempt to explain how Smrha satisfies the
`
`unsupported definition that Petitioner proposes. For example, Petitioner does not
`
`explain how the adapter block 58 manages polarity. Smrha does not discuss or
`
`even use the word “polarity.” What Smrha does discuss, however, is the “open
`
`region” exemplified by the lack of any “housing or module” around the adapters.
`
`Ex. 1004 at 3:36–40. Thus, Petitioner’s assertion that these bare adapters
`
`constitute a “fiber optic module” is simply incorrect.
`
`
`
`24
`
`
`
`
`
`b.
`
`The Panel Section in Smrha Is Not an Equipment
`Tray Supporting Fiber Optic Modules
`
`In addition to lacking fiber optic housings and modules, the panel section 60
`
`in Smrha is also not a “fiber optic equipment tray supporting one or more fiber
`
`optic modules” as recited by independent claim 32. Instead, Petitioner argues that
`
`“panel section 60 could also be construed as a tray due to its sliding nature.”
`
`Petition at 51, 70. The logic of “it slides therefore it is a tray” is an unreasonably
`
`broad interpretation that would read onto literally any sliding component in a
`
`system. The panel section 60 is, by Smrha’s explicit definition, adjacent an open
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`region that does not receive fiber optic housing or modules or otherwise act as a
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`“tray” at all. Rather, panel section 60 is nothing more than a vertical panel with
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`unenclosed adapters:
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`Ex. 1004 at Fig. 7 (highlighting added).
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`25
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`Accordingly, Smrha fails to disclose “a fiber optic equipment tray
`
`supporting one or more fiber optic modules” as required by independent claim 32
`
`and dependent claims 33–36. Further, Petitioner relies exclusively on Smrha for
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`this limitation in all grounds set forth in the Petition. See Petition at 70, 78.
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`Therefore, the Petition should be denied with respect to claims 32–36 for at least
`
`these reasons alone.
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`In addition to these claims, dependent claims 12 and 47 require a “fiber optic
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`module” or a “fiber optic equipment tray.” For the same reasons discussed above,
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`the Petition should be denied to those dependent claims as well.
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`3.
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`Smrha Does Not Disclose Guide Members with Front and
`Rear Pull-Out Limiting Members
`
`Independent claim 37 requires “a front pull-out limiting member disposed on
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`a front end of the at least one guide member” and “a rear pull-out limiting member
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`disposed on a rear end of the at least one guide member.” Smrha does not disclose
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`any pull-out limiting members disposed on the front and rear ends of a guide
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`member.
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`For this claim, Petitioner identifies “guides 66” in Smrha as the claimed
`
`“guide member.” These guides 66 are shown in the following figure:
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`26
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`
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`Ex. 1004 at Fig. 10. In the middle of the guides, “two projections 70 (upper and
`
`lower projections) are provided on each of the guides 66.” Id. at 4:20–26. As
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`shown in the above figure, these guides do not have any “front pull-out limiting
`
`member disposed on a front end” or “rear pull-out limiting member disposed on a
`
`rear end.”
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`Petitioner concedes that this embodiment does not satisfy the claim language
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`but incorrectly suggests that a “reverse embodiment” exists that does. Petition at
`
`52–53. This “reverse embodiment” is based on a single sentence in Smrha:
`
`While the illustrated embodiment depicts the detents 72,
`74 formed in the rail members 64 and the projections 70
`provided on the guides 66, it is contemplated that the
`detents can be formed in the guides 66 and the projection
`correspondingly provided on the rail members 64.
`
`Ex. 1004 at 4:28–32. This sentence is merely making the straightforward point
`
`that the projections and detents can be reversed (i.e., that the projections can
`
`instead be the detents, and the detents can instead be the projections).
`
`
`
`27
`
`
`
`
`
`Applying this to guides 66 simply results in the “projections 70” being
`
`detents instead of projections. Pictorially speaking, this single sentence describes
`
`that the projections 70 go from this:
`
`to this:
`
`
`
`
`
`Whether projections or detents are used, however, is irrelevant to the claim
`
`language. The claim language specifies where the pull-out limiting member must
`
`be located: “disposed on a front end” of the guide and “disposed on a rear end” of
`
`the guide. Smrha does not teach any such members disposed on the front and rear
`
`ends of guides 66:
`
`
`
`28
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`
`
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`
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`Ex. 1004 at Fig. 10.
`
`Petitioner offers a conclusory assertion that a detent “would be formed on
`
`the front end of the guide 66,” but this has no basis in any disclosures in Smrha.
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`Petition at 52. Instead, the only citation Petitioner offers for this proposition is to
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`its expert declaration, which simply parrots the language in the Petition without
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`any analysis or explanation. Id. (citing Ex. 1003, ¶ 69). As the Federal Circuit has
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`noted, “conclusory, unsupported assertions by experts” are “not useful” as
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`evidence. SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1195 (Fed. Cir. 2013).
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`Further, anticipation under § 102 can only be found if “the four corners of a single,
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`prior art document describe every element of the claimed invention.” Net
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`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Simply put,
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`nothing in the four corners of Smrha discloses what Petitioner is suggesting.
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`Accordingly, Smrha fails to disclose “a front pull-out limiting member
`
`disposed on a front end of the at least one guide member” and “a rear pull-out
`
`limiting member disposed on a rear end of the at least one guide member” as
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`required by independent claim 37 and dependent claims 38–41. Therefore, the
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`Petition should be denied with respect to claims 37–41 for at least these reasons
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`alone.
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`
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`29
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`
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`Smrha Does Not Disclose a Leaf Spring
`
`4.
`Independent claims 42 and 45 require the use of a leaf spring. In particular,
`
`claim 42 requires that “the at least one stopping member is comprised of at least
`
`one leaf spring disposed in the at least one guide member.” Claim 45 similarly
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`requires that “the at least one stopping member is comprised of at least one leaf
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`spring.” Smrha does not disclose the use of a leaf spring.
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`The ’226 patent explains that leaf springs are advantageously used to
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`provide durability to the equipment. For example, in one embodiment, leaf springs
`
`can be configured such that, when “in a stopped position,” the “leaf springs 188 are
`
`in an unstressed state.” Ex. 1001 at 19:28–37. Depending on the type of material
`
`used, this can have the advantage of avoiding the “creep [that] can occur over time,
`
`thus reducing the effectiveness” of the spring. Id. at 19:37–40.
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`For this limitation, Petitioner relies on the following sentence in Smrha:
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`“The guides 66 are flexibly constructed so that when the panel section 60 is pulled
`
`forward, the projections 70 un-seat and slide along the top and bottom surfaces 76,
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`77 (FIG. 8) of the rail members 64.” Ex. 1004 at 4:36–40. This does not disclose
`
`the use of a leaf spring even in the broadest sense of that term. Many things are
`
`flexible; that does not mean they are a spring in general or leaf springs in
`
`particular. Petitioner does not explain or justify how this discloses a “leaf spring”;
`
`
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`30
`
`
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`
`
`rather, Petitioner asserts without analysis or explanation that this limitation is met.
`
`See Petition at 48.
`
`Accordingly, Petitioner has failed to establish that Smrha discloses that “the
`
`at least one stopping member is comprised of at least one leaf spring disposed in
`
`the at least one guide member” as required by independent claims 42 and 45 and
`
`dependent claims 43–44 and 46–48. Therefore, the Petition should be denied with
`
`respect to claims 42–48 for at least these reasons alone.
`
`In addition to these claims, dependent claims 7–9 and 34 similarly require a
`
`“leaf spring.” For the same reasons discussed above, the Petition should be denied
`
`to those dependent claims as well.
`
`III. CONCLUSION
`Petitioner has failed to establish a reasonable likelihood of prevailing on any
`
`challenged claim of the ’226 patent. Accordingly, its petition for inter partes
`
`review should be denied.
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`
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`31
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`
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`Dated: January 13, 2017
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`Respectfully submitted,
`
`
`
`
`
`/s/ Eric D. Hayes
`Eric D. Hayes
`Eugene Goryunov
`G. William Foster
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, IL 60654
`Telephone: (312) 862-2000
`Facsimile: (312) 862-2200
`
`Counsel for Patent Owner
`
`
`
`32
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`
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`CERTIFICATE OF WORD COUNT
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`The undersigned hereby certifies that the foregoing document contains 4,974
`
`words and thus complies with the word-count limits of 37 C.F.R. § 42.24.
`
`/s/ G. William Foster
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing document was
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`served on January 13, 2017 via email to the following addresses:
`
`• Kelly.Eberspecher@huschblackwell.com
`• Nathan.Sportel@huschblackwell.com
`• PTO-CHI@huschblackwell.com
`
`/s/ G. William Foster
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