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`Before JENNIFER S. BISK, DANIEL J. GALLIGAN, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`PANDUIT CORP.,
`Petitioner,
`
`v.
`
`CORNING OPTICAL COMMUNICATIONS LLC,
`Patent Owner.
`___________
`
`Cases IPR2017-01073 and IPR2017-01074
`Patent RE45,482 E1
`____________
`
`Record of Oral Hearing
`Held: June 27, 2018
`___________
`
`
`
`

`

`Cases IPR2017-01073 and IPR2017-01074
`Patent RE45,482 E1
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`KELLY J. EBERSPECHER, ESQUIRE
`Steptoe & Johnson LLP
`115 South LaSalle Street
`Suite 3100
`Chicago, IL 60603
`
`KATHERINE D. CAPPAERT, ESQUIRE
`Steptoe & Johnson, LLP
`1330 Connecticut Ave., NW
`Washington, DC 20036
`
`JAMES H. WILLIAMS, ESQUIRE
`CHRISTOPHER S. CLANCY, ESQUIRE
`Panduit Corp.
`18900 Panduit Drive
`Tinley Park, Illinois 60487
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`ERIC D. HAYES, ESQUIRE
`G. WILLIAM FOSTER, ESQUIRE
`Kirkland & Ellis LLP
`300 North LaSalle
`Chicago, IL 60654
`
`BENJAMIN F. NARDONE, ESQUIRE
`ADAM R. WEEKS, ESQUIRE
`Corning Optical Communications LLC
`One Riverfront Plaza
`Corning, New York 14831
`
`The above-entitled matters came on for hearing on Wednesday, June
`
`27, 2018, commencing at 10 a.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
`
`2
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`Cases IPR2017-01073 and IPR2017-01074
`Patent RE45,482 E1
`
`
`P R O C E E D I N G S
`- - - - -
`
`JUDGE HUDALLA: Please be seated. Okay, good morning,
`
`
`everyone. We are here to hear argument today in IPR2017-01073 and -
`01074, concerning Reissue Patent 45,482.
`
`
`Why don't we start with introductions of the parties, starting
`with Petitioner, please?
`
`
`MR. EBERSPECHER: Kelly Eberspecher, Steptoe & Johnson,
`on behalf of Panduit Corp., Petitioner, and with me is Katherine Cappaert,
`also of Steptoe & Johnson.
`
`
`JUDGE HUDALLA: Good morning. For Patent Owner?
`
`
`MR. HAYES: Good morning, Your Honor, Eric Hayes, and
`with me is Bill Foster, we're from Kirkland & Ellis, on behalf of Patent
`Owner, Corning Optical Communications. We also have with us today Ben
`Nardone, who is Corning’s in-house litigation counsel, and Adam Weeks,
`who is Corning Optical Communications’ patent counsel.
`
`
`JUDGE HUDALLA: Good morning to all of you.
`
`
`MR. EBERSPECHER: For clarity of the record also, Chris
`Clancy with me is general counsel for Panduit Corp., and Jim Williams, who
`is chief patent counsel for Panduit Corp.
`
`
`JUDGE HUDALLA: Good morning. Thank you. So per our
`trial hearing order, each side is going to have 30 minutes to argue in each of
`these cases. I want to remind everyone that Petitioner bears the burden of
`proving any proposition of unpatentability by a preponderance of the
`evidence. Petitioner can reserve rebuttal time, but Patent Owner may not.
`
`
`I also remind everyone that we have a court reporter today, so a
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`Cases IPR2017-01073 and IPR2017-01074
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`transcript will be produced and it will become part of the record. And, also,
`this hearing is open to the public.
`
`
`As you can probably see, we have Judge Galligan joining us
`remotely, so please be sure to state what slide you're on as you go through
`your presentations. It will help him, and it will also help us as we review the
`record later on.
`
`
`Okay, I think that's all I have at this point. So I guess, Mr.
`Eberspecher, do you want to go ahead and begin?
`
`
`MR. EBERSPECHER: I will. And if I may, Your Honor, and I
`think I've -- Mr. Hayes and I were talking -- we're not going to project,
`unless the panel would like us to. You have the presentations, I'm just going
`to go through it and I'll -- is that fine?
`
`
`JUDGE HUDALLA: That's fine with me.
`
`
`JUDGE BISK: Yes.
`
`
`JUDGE HUDALLA: Judge Galligan?
`
`
`JUDGE GALLIGAN: Yes, I'm looking at my screen anyway.
`Thanks.
`JUDGE HUDALLA: Okay. Do you want to reserve any
`
`
`rebuttal time?
`
`
`MR. EBERSPECHER: Yes, I'll reserve the balance. I think
`I'm going to get through this presentation fairly quickly and so I'll reserve
`the balance to address any rebuttal points or any questions from the panel.
`
`
`JUDGE HUDALLA: Okay.
`
`
`MR. EBERSPECHER: And if I go too quickly, please just let
`me know. It's -- part of going through this on paper, sometimes I go a little
`fast; if I'm going too fast, please let me know.
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`So turning to our slide deck, I will direct the Board -- well,
`
`
`obviously we have the patent itself on page 2, but I will quickly move to
`page 3 and just summarize Corning's arguments. And they don't argue that
`any limitations are actually missing, and so that's an admission that we don't
`have to talk about. They don't even really argue with any specificity against
`our proposed combinations, but what we're really going to talk about is
`combinability here today.
`
`
`I'll direct -- I'll move to slide 4. And they raise these rebuttal
`points that they say that a person of ordinary skill in the art would not
`combine CamLite and CamSplice just because they are Siecor products.
`And I think we pointed this out in our response was -- our reply was that was
`never the point. This just goes to -- this is a body of work that one of
`ordinary skill in the art would consider, they would certainly consider the
`CamSplice and the CamLite.
`
`
`They say we defined the general problem too broadly, but
`again, what you're doing is either a connector or a mechanical splice, you're
`putting two optical fibers together. That's the whole point of this. Again,
`one of ordinary skill in the art would be drawn to the prior art.
`
`
`They say they are not physically similar. As we point out in
`our brief, that is a bodily incorporation argument, which, again, that's just --
`that type of argument has been soundly rejected by the Federal Circuit again
`and again. And then they say that the CamSplice does not provide a ready
`solution to CamLite's problem of cutting off improperly installed connectors.
`Of course, we disagree and we'll get through that.
`
`
`So if we go to slide 5, again, one of ordinary skill in the art
`would have been aware of CamSplice and CamLite. And I won't read the
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`testimony verbatim, but we've identified testimony here from Mr. Barnes,
`one of the co-inventors, and we can also look at the abstracts of the two --
`the two pieces of prior art.
`
`
`If we talk about the de Jong and the Dean patents in particular,
`de Jong is -- the very first words in the abstract, it's a "fiber optic connector."
`
`
`JUDGE HUDALLA: Can I stop you and ask you a question
`about your page 5 here? You brought up Mr. Barnes' testimony here and I
`guess you're using it to try to show what a person of ordinary skill in the art
`would have said about these two different types of optical fiber connections.
`Now, Mr. Barnes is not an expert in this case and he's just an employee of
`Siecor, right, is that -- or was?
`
`
`MR. EBERSPECHER: Yes, that's correct.
`
`
`JUDGE HUDALLA: Okay. So he wasn't really talking about
`what a person of ordinary skill in the art would say about these things right
`now, is he?
`MR. EBERSPECHER: I think it's relevant. Is he an expert?
`
`
`No, he's not, but again I think it goes to the overall how you would consider
`what one of ordinary skill in the art, how they would consider these two
`references or what they would have been aware of at the time.
`
`
`JUDGE HUDALLA: Okay.
`
`
`MR. EBERSPECHER: Of course, one of ordinary skill in the
`art --
`JUDGE HUDALLA: I guess I would agree with that, but also
`
`
`just the fact that we're talking about a person who's in the company that
`made the patent versus maybe the overarching person of ordinary skill in the
`art. There seems to be a bit of a difference there, isn't there?
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`MR. EBERSPECHER: There is a difference, but I think that's
`
`
`established from -- the similarity in the references is established by the
`references themselves. Again, we're talking about connectors and, you
`know, I was reading from the abstracts. De Jong says "a fiber optic
`connector." Dean, the first sentence says "disclosed herein is a connector."
`They both -- we'll get to it in a bit, but they both incorporate by reference the
`Knecht reference. And so, again, these are very similar references.
`
`
`And I'll go to slide 6. And again here, this is just testimony that
`establishes that all of this, the prior art, they're all for the purpose of
`installing field fibers. They're field-installable type of things, whether you're
`putting a mechanical splice or using a connector, they're all for a field
`technician to again put two optical fibers together in a chain or a link.
`
`
`If we go to slide 7, there was some dispute about whether the
`fiber size that can be connected. And we just cited there right in the
`CamLite instructions and also the CamSplice manual that, again, there's --
`either one of these devices can accommodate whatever size fiber, these two,
`the type of fibers we're talking about.
`
`
`JUDGE HUDALLA: Why is that enough to support
`combinability? I mean, you know, these seem like some -- just some small
`points around the edges. I mean, I don't see how that would necessarily
`make a person of ordinary skill in the art decide to put a connector
`technology together with just a splice technology.
`
`
`MR. EBERSPECHER: Well, again, I think it's the
`(indiscernible) body of what we're talking about here. This is just one point,
`we've raised several that we're talking about field connectors. And as we go
`on that you're talking about the epoxy, if you will, the epoxy-type process
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`Cases IPR2017-01073 and IPR2017-01074
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`that goes into. So while one is a mechanical splice and one is a connector,
`as we pointed out in de Jong -- and that's -- I think we can go to -- I'll jump
`ahead to slide 10, if I may?
`
`
`JUDGE HUDALLA: Actually, before we move on, why don't
`we just -- you mentioned the epoxy-free connector technology, that's
`something that the panel has been wondering a bit about, because it seems
`like one side says, you know, we don't need epoxy, one side says we do need
`epoxy, the answer seems to be somewhere in the middle. So could you
`explain that to us, please?
`
`
`MR. EBERSPECHER: It's done in the factory of both. I mean,
`again, it's not something that the technicians happen to do. The issue was, if
`you actually had to go through the epoxy process in the field, it's time-
`consuming. And I think that record is clear from Mr. Barnes' testimony.
`
`
`And so what they've -- what they -- what you can do is you can
`actually do this in the facility, the manufacturing facility. So the field
`technician doesn't need to deal with that. So both of these --
`
`
`JUDGE HUDALLA: So what is Patent Owner saying? Like
`are they -- you know, I guess I could ask them as well, but are they saying
`that there's still epoxy in the connector, and you're saying that the technician
`doesn't have to use epoxy, is that kind of where we are?
`
`
`MR. EBERSPECHER: That's right. Well, that's what we're
`saying is going to -- that's one of the points again, but mainly that goes to
`combinability of these two pieces of prior art is that, yes, it's -- that's all been
`exported to the manufacturing facility. And so the field technician,
`somebody designing this is going to know that neither one of these requires
`the actual installer to actually epoxy the -- they don't have to deal with the
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`Cases IPR2017-01073 and IPR2017-01074
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`epoxy process in the field.
`
`
`JUDGE HUDALLA: Okay.
`
`
`MR. EBERSPECHER: And I was going to hop ahead, but -- I
`tell you what, I can quickly go through slides 8 and 9 where we just show
`some of the physical characteristics or some of the drawings from the patent
`itself, and then I will -- I was going to jump to slide 10, which they've taken
`issue with. They're saying, well, one is a mechanical splice and the other is
`a connector and so apples and oranges, but that's not apples and oranges.
`And the fact is, if you look at the de Jong reference itself, which is the
`connector, it's saying "in the field, the steps to complete connectorization are
`similar to those for installing mechanical splice." Again, these are the type
`of -- it is this explicit statement in the reference that's going to draw one of
`ordinary skill in the art to look at both these references when they're trying --
`when they're determining what they would combine. They're going to say,
`well, okay, this is -- there is similarity here.
`
`
`And if we go back to physical similarities, you know, I think
`this takes it outside the realm of whether -- one of ordinary skill in the art
`would be looking at, it takes the question out, is that they're both referring to
`the same type of -- they're both referring to Knecht, incorporated by
`reference. We've also, you know, talked about there's similarity in inventors
`and whatnot. But if we look here and there's just -- we've got a comparison
`here where we've got a connector here and a connector here, you're centering
`optical fibers and again to connect them in the field.
`
`
`If we go to slide 12, we see -- again, I won't read it verbatim,
`but we've got testimony from Dr. DeCusatis, and then on the right we have
`testimony from Mr. Barnes. And I think this goes to the question you just
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`Cases IPR2017-01073 and IPR2017-01074
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`asked, Judge Hudalla, which is, you know, Mr. Barnes is saying they did not
`require field epoxy, application of field epoxy in the field. And, again, that
`was the time-consuming process, that's something that's going to take, I
`think the testimony was along the line of ten to fifteen minutes. And so,
`again, if you don't have to do this field epoxy application in the field that's --
`again, that's a benefit and that would draw one of ordinary skill in the art to
`these two references.
`
`
`And then we go to slide 13 and this is probably one of the
`crucial issues, is that CamSplice's reversibility would have motivated the
`combination, because you have an admission in the CamLite manual that
`talks about, look, if you don't have a satisfactory connection, then you have
`to cut the connector off and start over again, to where you have a rotational
`camming mechanism as you do in CamSplice and you don't have to do that.
`
`
`JUDGE HUDALLA: How do you respond to Patent Owner's
`argument that, you know, looking at this reversibility angle is hindsight? I
`mean, it's the same sort of thing that the background of the patent tells us,
`you know, took the inventor to these patent claims. I mean, how do you
`respond to the hindsight argument?
`
`
`MR. EBERSPECHER: I would point to it's not hindsight when
`the CamLite manual itself has this explicit acknowledgment. It tells you
`that, look, if you don't have a satisfactory connection you have to cut off the
`connector. So this isn't something that in the '482 patent they're going back
`and saying, oh, look, we've spotted this problem that we have with CamLite.
`CamLite itself, the manual itself acknowledges the problem, so that's not
`hindsight.
`
`
`
`And that's it, that's -- when you know you have this problem
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`Cases IPR2017-01073 and IPR2017-01074
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`spelled out in the reference, again, this admission in the CamLite manual
`that tells you, look, you have to cut off the connector and redo it, that's going
`to drive somebody to say, well, look, one of ordinary skill in the art, is there
`an improved mechanism? Can I do something where I don't have to go
`through and cut off the connector?
`
`
`And what I would -- I would draw the Board's attention to
`Exhibit 1022 -- and I'll just state this for the record, I know the panel can
`review this at their own time and whatnot, but it's pages -- it's page 84, line
`22 through page 85, line 15. And there we asked Mr. Pearson, we said, well,
`okay, how many different ways are there to have a camming mechanism? I
`mean, how many options are there? Is it infinite or is it -- and what he
`admitted was it's very -- it's a finite, you know, amount; you can have a
`linearly actuated mechanism, you can have a rotational cam mechanism, he
`talked about a crimping tool. I think he identified four and that's all he could
`identify. In other words, you have a very finite amount of options to
`actually have a camming mechanism.
`
`
`And so when you have this bare acknowledgment in the
`CamLite manual saying, look, you've got to cut off the entire connector and
`redo it, one of ordinary skill in the art would have said, well, if I use a
`rotational camming mechanism like in the CamSplice, I can avoid that
`problem altogether.
`
`
`There's also -- I'll move to slide 14 -- there's a -- Corning talks
`about OTDR testing. Maybe the best way to put it, this is the final check,
`this is -- and we'll talk about in the other petition, but if you're talking about
`visually, you know, assessing light, that's objective, but an OTDR test is
`something that you're going to -- once you've put in all your connectors and
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`all your splices, you're going to make a final test, and what we see here it's --
`that that's what you're going to do anyway. Even if you have a visual fault-
`locator device, you're actually going to do an OTDR test -- or you're going
`to do it most of the time, because again this is your final check to make sure
`that all of your connections are sound, if you will. And so their point about
`how there's this difference there because, you know, visual fault location is
`different or the visual-fault locator is different, at the end of the day the
`testimony is -- from Mr. Pearson and from Mr. Kelly, you're going to do that
`anyway. It's not going to lead anybody astray and I'm talking about it's not
`going to lead one of ordinary skill in the art to look at these references as
`dissimilar, they're going to look at it and still consider them and still think
`about combinality.
`
`
`And so page 15 is just the -- basically a summary of our
`arguments. I won't go through each of them, but again we are talking about
`very similar references. In one instance they again incorporate by reference
`the very same reference, one of ordinary skill in the art would have
`considered them both because they're addressing mating two optical fibers in
`the field. CamSplice's reversibility would have motivated the combination,
`because, again, it's not hindsight, CamLite itself acknowledged the problem.
`And, again, their reliance on OTDR is inapposite.
`
`
`Quick words about secondary consideration, long-felt need.
`We've just got testimony there that there was no long-felt need. They've
`pointed out to a few instances about Dr. DeCusatis saying, well, you've
`always got this problem of having a better splice, but that's -- you know, that
`-- it's a general problem that's been around forever. It's much like fuel
`efficiency in a car, you know, there -- you want a vehicle to have better fuel
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`efficiency, that's a -- it was a problem 20 years ago, it's still people look at it
`as a problem. There was no long-felt need, though, for this technology, they
`certainly haven't established it.
`
`
`And, again, slides 18 and 19 just kind of weigh in on this point
`again. I won't burden the panel with reading all of this, but again, it shows
`that there was no long-felt need.
`
`
`There's some discussion about the subjectivity. Slide 20 just
`identifies the fact that still -- there's still subjectivity, you know, you're still
`talking about an individual installer in the field looking at a light, if you will,
`it's inherently subjective. So there was never a teaching away or a problem
`with subjectivity because it still exists.
`
`
`Slide 21 is the same thing.
`
`
`Quickly, I'll just -- I'll talk about slides 22 and 23, where we
`redacted all the information, as we discussed last week, but all they've given
`the panel is just raw sales figures, there's not even an attempt to establish
`any kind of nexus. And so, again, just as a matter of plain law, there is --
`again, they haven't met their burden. Sales figures alone don't do it.
`
`
`The failure of others, quickly to slides 24 and 25. And this kind
`of goes back to, you know, they say, well, it did more harm than good
`because, you know, the light was -- you know, there was a subjective
`component to it again, as we pointed out, that's still there. So --
`
`
`JUDGE HUDALLA: Could I ask you about that?
`
`
`MR. EBERSPECHER: Sure.
`
`
`JUDGE HUDALLA: The -- you know, you've talked about
`Mr. Barnes' testimony with regard to what a person of ordinary skill in the
`art would do, earlier we had that discussion. Now, here Patent Owner brings
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`up, okay, we had all this technology in-house and we didn't put it together.
`So how would you respond to that? I mean, there seems to be some force to
`that argument.
`
`
`MR. EBERSPECHER: Well, that argument I would say only
`has force if you prove it up through secondary considerations. The Patent
`Owner, they do make this argument repeatedly like, well, if it wasn't obvious
`-- if it was obvious, why didn't somebody else do it, but that argument in a
`vacuum carries no weight, I would say, in the patent law, because it's -- there
`are capital expenditure budgets, there are marketing departments. There are
`a myriad of reasons as to why obvious technology sits on a shelf, you know,
`it has nothing to do with any kind of inventive nature. The only way you
`prove that up, the only way that you can say, well, if it was -- you know, if it
`was obvious, why didn't somebody do it, it's through secondary
`consideration evidence.
`
`
`You know, that's the place of commercial success, if you will,
`to say that, look, we can specifically tie commercial sales to a patentable
`feature, we can -- you know, we can demonstrate that through a nexus, the
`patent law recognizes that. It says, well, okay, if you can actually make
`money doing this and it's tied to the patentable feature, well, then that would
`be some indicia of nonobviousness, that's the place for that argument. If
`you're going to make the argument, well, look, if it wasn't obvious, why
`didn't somebody else do it, you need to prove that up through secondary
`considerations, that's what they're there for. And so in a vacuum that
`argument of, well, okay, they had the CamLite and the CamSplice
`technology, why didn't they do it, who knows? Again, you know --
`
`
`JUDGE HUDALLA: Well, doesn't that fact alone as they
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`presented it -- I mean, they have made the argument, so they're bringing it up
`in secondary considerations, shouldn't we consider that to some degree?
`
`
`MR. EBERSPECHER: Well, again, only if it's supported by
`secondary considerations. In a vacuum saying that, look, it's --
`
`
`JUDGE HUDALLA: But isn't that -- it is a secondary
`consideration. They're coming forth and they're saying, hey, we had this
`technology in-house, we didn't put it together. I mean, they're putting -- they
`made that argument. You're saying, you know, should we weigh that or not,
`I guess is the question.
`
`
`MR. EBERSPECHER: Well, but again it's got to be one of the
`-- I would say you've got to talk to one of the enumerated secondary
`considerations. Have they established the failure of others? Have they
`established a long-felt need or commercial success, or anything else? It's --
`
`
`JUDGE HUDALLA: So is it your position that their own
`failure to put it together should not be considered for failure of others?
`
`
`MR. EBERSPECHER: I don't think they've established that
`they failed to put it together. We have bare testimony, we see nothing else;
`we see no other kind of evidentiary showing of this. This is a bare statement
`that, well, we couldn't put it together. You know, I think we pointed out to
`it, saying, you know, our own failure is somehow a failure of others, I think
`that's an unorthodox argument. But, again, it's -- consider that if that's all
`that was shown -- if that was all is required for patentability is to say, well,
`look, if it was -- if it was -- we did it first, so it couldn't be obvious, you
`know. If it was --
`
`
`JUDGE HUDALLA: Oh, I understand that, sir. I just want to
`know what your position is on as to how much we should look at that or
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`consider that in our weighing secondary considerations.
`
`
`MR. EBERSPECHER: In a vacuum, it shouldn't be considered
`at all, unless it's supported by the traditional secondary consideration factors.
`Again, to say that if it was obvious, somebody else would have done it, well,
`you've got to prove that up through showing, you know, recognition by third
`parties, commercial success, to some kind of -- again, indicia of -- you
`know, again, the traditional secondary consideration factors. In and of itself,
`just saying that, well, we didn't do it, you know, we had both these
`technologies, but we waited five years to do it, so it can't be obvious, that in
`and of itself I would say is completely irrelevant. That is completely in the
`purview of secondary consideration-type evidence and they haven't given
`you that, because otherwise, again, any patentee could sit up here and say,
`well, look, you know, we had all this technology, but we waited six years to
`do it, so it couldn't have been obvious. Well, okay, but show us again the
`commercial success that's tied to a nexus, show us the industry praise, show
`us -- again, show us how others have, you know, adopted the technology,
`show us something, but here they haven't.
`
`
`So a roundabout way of saying again to your argument that that
`statement in and of itself is that, well, it can't be obvious because we didn't
`do it, it's not relevant unless it's supported by secondary considerations
`evidence and they haven't given you that.
`
`
`With that, I will entertain other questions or I'll reserve the
`balance of my time.
`
`
`JUDGE HUDALLA: Judge Galligan, do you have any
`questions?
`
`
`
`JUDGE GALLIGAN: Nothing right now, thanks.
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`JUDGE HUDALLA: Okay, thank you.
`
`
`You can start, Mr. Hayes, whenever you'd like.
`
`
`MR. HAYES: Good morning again, Eric Hayes on behalf of
`
`
`Patent Owner, Corning Optical Communications.
`
`
`Just to kind of reframe, where I'd like to start is just to take a
`minute to talk about the '482 patent. You know, the '482 patent is about
`solving this problem and how to efficiently attain a low-loss connector, and
`the '482 patent puts forth both method and apparatus claims that in fact
`disclose a unique method and connector that solve that problem.
`
`
`This is obviously an obvious case -- obviousness case, 103
`case. All the grounds deal with a combination of CamSplice and CamLite.
`And therefore, because it's a 103 case, I think it's important to focus on
`Petitioner's reasons or motivation to combine and secondary considerations
`of nonobviousness.
`
`
`JUDGE HUDALLA: Let me just ask you just to clear it off the
`table at the beginning here, you're not making any arguments about whether
`or not the claim limitations are taught by the art, you're only going to go talk
`about reasons to combine and secondary considerations?
`
`
`MR. HAYES: That's correct. With respect to this first hearing
`this morning, the 01073, the focus is reasons and motivation to combine and
`secondary considerations. The second one we will talk about missing the
`claim elements.
`
`
`JUDGE HUDALLA: Okay.
`
`
`MR. HAYES: So I'd like to focus on the new evidence that's
`come on the record since institution decision that the Board has not had a
`chance to take a look at. And that new evidence is going to go to reasons
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`MR. HAYES: So the evidence I'm going to go through on my
`
`JUDGE HUDALLA: Okay.
`MR. HAYES: -- with respect to reasons and motivation to
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`and motivation to combine, which we think when we look at the new
`evidence we'll see that the reasons and motivation to combine are both
`factually and legally incorrect, and also secondary considerations. There's
`all new secondary considerations evidence and, as the Federal Circuit has
`said, evidence of secondary considerations can oftentimes be the most
`probative and cogent with respect to the 103 analysis.
`
`
`JUDGE HUDALLA: What new evidence are you referring to
`right now?
`
`
`slides --
`
`
`
`
`combine.
`JUDGE HUDALLA: This is all in your brief, right?
`
`
`MR. HAYES: That's right, all -- right.
`
`
`JUDGE HUDALLA: Okay. When you said new evidence, you
`
`
`made me -- I thought there was something we hadn't seen.
`
`
`MR. HAYES: No. I'm sorry, maybe I misspoke. New
`evidence since institution --
`
`
`JUDGE HUDALLA: I see.
`
`
`MR. HAYES: -- that was not in front of the Board at the time
`of institution.
`
`
`JUDGE HUDALLA: Understood.
`
`
`MR. HAYES: Okay. So I'd like to turn to my slide deck now
`with that introduction and start with slide 13.
`
`
`Slide 13 is an exemplary method claim of the '482 patent, just
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`to kind of recenter us on the claims here. Claim 43 is "a method of
`validating continuity of an optical fiber upon which a fiber optic connector is
`mounted." The first limitation there in gray, "providing a fiber optic
`connector, including a ferrule defining at least one bore extending between
`opposed front and rear faces, an optical fiber stub disposed within the bore,
`and a cam mechanism."
`
`
`The next step is introducing light into at least one of an optical
`fiber, field fiber and an optical fiber stub, then "actuating the cam
`mechanism to secure the optical field fiber in position relative to the optical
`stub, evaluating the continuity of the optical field fiber and the optical fiber
`stub once the cam mechanism has been actuated by observing an amount of
`dissipated light."
`
`
`Then you deactuate the cam essentially if the connection is
`unacceptable and then you reposition the field fiber relative to the stub and
`reactuate the cam, and then reevaluate.
`
`
`If we turn to the next slide, slide 14, this kind of is a flow
`diagram, if you will, of the claimed method that we just went through, and
`you can follow down there from box 82 do