Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 40
`Entered: October 1, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PANDUIT CORP.,
`Petitioner,
`v.
`CORNING OPTICAL COMMUNICATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01074
`Patent RE45,482 E1
`____________
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, DANIEL J. GALLIGAN, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`Petitioner, Panduit Corp. (“Petitioner”), filed a Petition (Paper 1,
`“Pet.”) requesting an inter partes review of claims 15, 16, 18–24, 49, 50,
`63–68, and 71 of U.S. Patent No. RE45,482 E1 (Ex. 1001, “the ’482 patent”)
`pursuant to 35 U.S.C. §§ 311–319. Patent Owner, Corning Optical
`Communications LLC (“Patent Owner”), filed a Preliminary Response
`(Paper 8, “Prelim. Resp.”) to the Petition. Taking into account the
`
`
`Tel: 571-272-7822
`
`Paper 40
`Entered: October 1, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PANDUIT CORP.,
`Petitioner,
`v.
`CORNING OPTICAL COMMUNICATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01074
`Patent RE45,482 E1
`____________
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, DANIEL J. GALLIGAN, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`Petitioner, Panduit Corp. (“Petitioner”), filed a Petition (Paper 1,
`“Pet.”) requesting an inter partes review of claims 15, 16, 18–24, 49, 50,
`63–68, and 71 of U.S. Patent No. RE45,482 E1 (Ex. 1001, “the ’482 patent”)
`pursuant to 35 U.S.C. §§ 311–319. Patent Owner, Corning Optical
`Communications LLC (“Patent Owner”), filed a Preliminary Response
`(Paper 8, “Prelim. Resp.”) to the Petition. Taking into account the
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`Patent RE45,482 E1
`arguments presented in Patent Owner’s Preliminary Response, we
`determined that the information presented in the Petition established that
`there was a reasonable likelihood that Petitioner would prevail in
`challenging claims 15, 16, 18–24, 49, 50, 63–68, and 71 of the ’482 patent
`under 35 U.S.C. § 103(a) on certain grounds of unpatentability presented.
`Pursuant to 35 U.S.C. § 314, we instituted this proceeding on October 2,
`2017, as to claims 15, 16, 18–24, 49, 50, 63–68, and 71 of the ’482 patent.
`Paper 9 (“Dec. on Inst.”).
`During the course of trial, Patent Owner filed a Patent Owner
`Response (Paper 14, “PO Resp.”), and Petitioner filed a Reply to the Patent
`Owner Response (Paper 271, “Pet. Reply”). An oral hearing was held on
`June 27, 2018, and a transcript of the hearing is included in the record.
`Paper 39 (“Tr.”).
`Petitioner filed a Declaration of Casimer DeCusatis, Ph.D. (Ex. 1003)
`with its Petition. Patent Owner filed Declarations of Brandon Barnes
`(Ex. 2002), Sean Kelly (Ex. 2003), and Eric Pearson (Ex. 2004) with its
`Response. The parties also filed transcripts of the depositions of
`Dr. DeCusatis (Ex. 2005), Mr. Barnes (Exs. 10232, 20193), Mr. Kelly
`(Exs. 10212, 20183), and Mr. Pearson (Ex. 10221).
`In light of the U.S. Supreme Court’s decision in SAS Institute, Inc. v.
`Iancu, 138 S. Ct. 1348 (2018), we modified the Institution Decision to
`
`
`1 These papers were unsealed pursuant to our Order of June 21, 2018.
`Paper 37.
`2 These papers are sealed pursuant to our Order of June 21, 2018. Paper 37.
`3 These papers are public versions pursuant to our Order of June 21, 2018.
`Paper 37.
`
`2
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`Patent RE45,482 E1
`institute on all of the grounds presented in the Petition. Paper 29.
`Subsequently, the parties filed a joint motion to limit the Petitions to the
`grounds that were originally instituted. Paper 31. We granted the motion.
`Paper 32. As a result, the remaining instituted grounds are the same as they
`had been at the time of the Institution Decision. See id. at 2.
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of
`claims 15, 16, 18–24, 49, 50, 63–68, and 71 of the ’482 patent. For the
`reasons discussed below, Petitioner has demonstrated by a preponderance of
`the evidence that claims 15, 16, 18–24, 49, 50, 63–68, and 71 of the
`’482 patent are unpatentable.
`
`
`
`I. BACKGROUND
`
`Related Proceedings
`A.
`The parties identify the following district court case related to the
`
`’482 patent (Pet. 1; Paper 4, 1):
`Corning Optical Comms. LLC v. Panduit Corp., No. 1:16-cv-00268-
`GMS (D. Del. filed Apr. 15, 2016).
`We also instituted an inter partes review of claims 25, 32–34, 36, and
`43 of the ’482 patent in co-pending Case IPR2017-01073.
`
`The ’482 patent
`The ’482 patent is a reissue of U.S. Patent No. RE42,094, which in
`turn is a reissue of U.S. Patent No. 6,816,661 (“the ’661 patent”). Ex. 1001,
`[64], 1:29–34. The application that led to the ’661 patent was filed on
`March 22, 2000. Id. As discussed below, Petitioner establishes that, at a
`
`B.
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`minimum, its asserted references qualify as prior art relative to that
`March 22, 2000, filing date.
`The ’482 patent relates to “multifiber connectors, installation tools
`and associated methods for validating optical fiber continuity during the
`connectorization process.” Id. at 1:39–42. Figure 1 of the ’482 patent is
`reproduced below.
`
`
`
`Figure 1 depicts a multifiber connector 10 (specifically, the MT-RJ
`UNICAM fiber optic connector) having multifiber ferrule 12, through which
`a number of optical fiber stubs extend and by which these optical fiber stubs
`are secured. Id. at 7:62–63, 8:41–45. Multifiber connector 10 also includes
`sleeve/ferrule holder 22, which defines a passageway for at least partially
`receiving ferrule 12.4 Id. at 9:6–9. Multifiber connector 10 additionally
`includes splice components positioned proximate the rear face of the
`multifiber ferrule for aligning optical field fibers with respective optical
`fibers stubs. Id. at 6:17–21. Cam member 20 is adapted to actuate the splice
`
`4 Sleeve/ferrule holder 22 appears to be mismarked with reference numeral
`32 in Figure 1.
`
`4
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`components by urging the splice components toward one another as the cam
`member is rotated relative to ferrule holder 22. Id. at 9:59–10:1.
`Figure 6 of the ’482 patent is reproduced below.
`
`
`Figure 6 is a flowchart illustrating the operations performed to validate the
`continuity of optical field fibers with their respective optical fiber stubs. Id.
`at 8:12–15. At block 82, a light source is introduced into the optical fiber
`stub in each optical fiber stub–optical field fiber pair. Id. at 12:58–60.
`While the optical fiber stubs and optical field fibers are apart, a glow
`emanates from the end portions of the optical fiber stubs within the splice
`components. Id. at 13:29–33. The optical fiber stubs and optical field fibers
`are advanced into the connector in block 84. Id. at 13:21–25. When the
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`glow has dissipated sufficiently to indicate optical contact between the
`optical fiber stubs and optical field fibers in block 86, the cam member is
`actuated to secure the optical field fibers in position relative to the optical
`fiber stubs in block 88. Id. at 13:52–58. Then, at block 90, fiber optic
`connector 10 is evaluated to determine if the glow that previously emanated
`from the optical fiber stub completely disappears, thereby indicating that the
`optical field fiber and the optical fiber stubs are continuous. Id. at 14:1–7.
`“[C]ontinuity is presumed to have been established once the glow
`dissipates.” Id. at 4:39–40.
`If the glow has not been extinguished, the cam member is deactuated
`at block 92. Id. at 14:7–9. Then, the optical field fibers may be recleaved
`and cleaned (block 94) prior to reinsertion and repositioning in fiber optic
`connector 10. Id. at 14:12–20. The cam member is then reactuated to secure
`the optical field fibers in position relative to the optical fiber stubs, and
`continuity can again be tested. Id. at 14:26–32. Repositioning and retesting
`can be repeated as many times as necessary until acceptable continuity is
`achieved. Id. at 14:32–36.
`
`Illustrative Claims
`Of the challenged claims, claims 15 and 18 of the ’482 patent are
`independent. Claims 16 and 63–68 depend from claim 15. Claims 19–24,
`49, 50, and 71 depend directly or indirectly from claim 18. Claims 15 and
`18 are illustrative of the challenged claims and recite:
`
`C.
`
`6
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`15. An optical fiber connector comprising:
`a ferrule extending lengthwise between opposed front
`and rear faces for receiving an optical fiber stub;
`splice components disposed proximate the rear face of
`said ferrule for aligning a field fiber to the optical fiber stub;
`a sleeve in which said splice components are disposed;
`a cam mechanism for activating said splice components
`together to operably interconnect the aligned field fiber and the
`optical fiber stub, said cam mechanism disposed about said
`sleeve, wherein movement of the cam mechanism relative to
`said sleeve aligns the field fiber and the optical fiber stub; and
`wherein the cam mechanism and at least one of the splice
`components are translucent such that a glow emanating from
`therewithin is indicative of a discontinuity between the field
`fiber and optical fiber stub.
`
`18. A method of validating the continuity of one or more
`optical fibers upon which a fiber optic connector is mounted
`comprising:
`providing a fiber optic connector including a ferrule
`defining at least one bore extending between opposed front and
`rear faces, an optical fiber stub at least partially disposed within
`the bore and having an end portion extending beyond the rear
`face of the ferrule, and at least one splice component;
`securing an end portion of an optical field fiber relative
`to the end portion of the optical fiber stub within the at least one
`splice component;
`evaluating the continuity of the optical field fiber and the
`optical fiber stub;
`repositioning and re-securing the end portion of the
`optical field fiber relative to the end portion of the optical fiber
`stub when the continuity of the optical field fiber and the
`optical fiber stub is unacceptable; and
`re-evaluating the continuity of the optical field fiber and
`the optical fiber stub after repositioning and re-securing the end
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`portion of the optical field fiber relative to the end portion of
`the optical fiber stub.
`
`
`D.
`
`The Prior Art
`Petitioner relies on the following prior art:
`de Jong et al., U.S. Patent No. 5,040,867, filed Mar. 21,
`1990, issued Aug. 20, 1991 (Ex. 1004, “de Jong”);
`Knecht et al., U.S. Patent No. 4,787,704, filed July 27,
`1987, issued Nov. 29, 1988 (Ex. 1005, “Knecht”);5
`Takizawa et al., U.S. Patent No. 6,179,482 B1, PCT
`application filed Jan. 16, 1998, issued Jan. 30, 2001 (Ex. 1006,
`“Takizawa”);
`Siecor® CamLite™ Connector Laser Assembly Aid
`Instructions, Siecor Recommended Procedure SRP-006-046,
`Siecor Corporation, Issue 1, April 1991 (Ex. 1007, “CamLite”);
`Assembly Manual,
`Siecor
`Siecor
`CamSplice
`Recommended Procedure SRP-006-038, Siecor Corporation,
`Issue 6, July 1994 (Ex. 1008, “CamSplice”);
`Dean, U.S. Patent No. 4,923,274, filed June 26, 1989,
`issued May 8, 1990 (Ex. 1009, “Dean”); and
`Siecor UniCam™ SC/ST®/FC Connector Assembly
`Instructions, Siecor® Recommended Procedure SRP-006-277,
`Siecor Corporation, Issue 1, February 1996 (Ex. 1010,
`“UniCam”).
`
`
`
`5 Although Knecht is not asserted expressly in the enumerated grounds of
`unpatentability below, Panduit contends Knecht is incorporated by reference
`in de Jong and Dean. See, e.g., Pet. 8 (citing Ex. 1004, 2:15–29, 2:64–65,
`Fig. 2), 21 (citing Ex. 1009, 1:9–10). Patent Owner does not dispute this
`contention. Based on the disclosure in de Jong and Dean, we agree with
`Panduit’s contention and treat the cited portions of Knecht as if they were a
`part of de Jong and Dean.
`
`8
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`E.
`Remaining Instituted Grounds
`The following instituted grounds remain at issue in this case (Pet. 41;
`Paper 32, 2):
`References
`
`Claims Challenged
`
`Basis
`
`35 U.S.C. § 103(a) 63
`
`35 U.S.C. § 103(a) 18, 20–24, and 49
`
`35 U.S.C. § 103(a) 18, 20–24, and 49
`
`35 U.S.C. § 103(a) 50 and 71
`
`35 U.S.C. § 103(a) 50 and 71
`
`35 U.S.C. § 103(a) 19
`
`35 U.S.C. § 103(a) 19
`
`35 U.S.C. § 103(a) 15, 16, and 64–68
`
`de Jong, CamLite, and
`Takizawa
`de Jong, CamLite,
`Takizawa, Dean, and
`CamSplice
`CamSplice, CamLite,
`and de Jong
`CamSplice, CamLite,
`de Jong, and Dean
`CamSplice, CamLite,
`de Jong, and Takizawa
`CamSplice, CamLite,
`de Jong, Dean, and
`Takizawa
`CamSplice, CamLite,
`de Jong, and UniCam
`CamSplice, CamLite,
`de Jong, Dean, and
`UniCam
`
`Claim Interpretation
`In an inter partes review, we construe claims by applying the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b);
`see Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2144–46 (2016).
`Under the broadest reasonable interpretation standard, and absent any
`special definitions, claim terms are given their ordinary and customary
`
`F.
`
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`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech. Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms or
`phrases must be set forth “with reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`The parties did not propose any claims for construction, and we
`determine that no terms require explicit construction. See Vivid Techs., Inc.
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy”).
`
`
`A.
`
`II. ANALYSIS
`Obviousness Ground Based on de Jong, CamLite, and Takizawa
`Petitioner contends claims 15, 16, and 64–68 would have been
`obvious over de Jong, CamLite, and Takizawa. Pet. 23–47. Petitioner also
`relies on Knecht based on Knecht’s incorporation into de Jong by reference.
`Id. at 36.
`
`Principles of Law
`1.
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time the invention was
`made to a person having ordinary skill in the art to which said subject matter
`pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying factual
`determinations, including (1) the scope and content of the prior art; (2) any
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`differences between the claimed subject matter and the prior art; (3) the level
`of skill in the art; and (4) where in evidence, so-called secondary
`considerations. See Graham v. John Deere Co. of Kansas City, 383 U.S. 1,
`17–18 (1966). We also recognize that prior art references must be
`“considered together with the knowledge of one of ordinary skill in the
`pertinent art.” In re Paulsen, 30 F.3d at 1480 (citing In re Samour, 571 F.2d
`559, 562 (CCPA 1978)). We analyze Petitioner’s obviousness grounds with
`the principles identified above in mind.
`
`Level of Skill in the Art
`2.
`Citing testimony from Dr. DeCusatis, Petitioner contends a person of
`ordinary skill in the art would have had “(a) a Bachelor’s Degree in
`Mechanical Engineering or similar, with at least 5 years of experience
`designing or installing fiber optic equipment; or (b) a Master’s Degree in
`Mechanical Engineering or similar, with at least 3-5 year[s] of experience
`designing or installing fiber optic equipment.” Pet. 6–7 (citing Ex. 1003
`¶¶ 9–19). Patent Owner cites Mr. Pearson’s testimony and contends an
`ordinarily skilled artisan would have had “a bachelor’s degree in mechanical
`engineering, materials science, or a related field; and 2 years of experience
`in fiber optic equipment.” PO Resp. 1 (citing Ex. 2004 ¶¶ 12–14). In
`particular, Mr. Pearson cites Dr. DeCusatis’s statement that “the level of
`sophistication in this field” is not “particularly high” as supporting a lower
`level of practical experience. Ex. 2004 ¶ 14 (quoting Ex. 1003 ¶ 15).
`Mr. Pearson is correct that the basis for Dr. DeCusatis’s opinion
`requiring 3–5 years of experience is unclear. Ex. 2004 ¶ 14. Instead, we
`credit Mr. Pearson’s statement that “2 years is sufficient for a person to
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`obtain an understanding of cam design and structure typical of those in the
`field.” Id. This also comports with Dr. DeCusatis’s testimony about the
`level of sophistication in the field. See Ex. 1003 ¶ 15. Accordingly, we
`apply Patent Owner’s proposed level of ordinary skill for purposes of this
`Decision. We are satisfied the Patent Owner’s proposal comports with the
`qualifications a person would have needed to understand and implement the
`teachings of the ’482 patent and the prior art of record.
`
`De Jong
`3.
`De Jong is a patent directed to a fiber optic connector designed for use
`in the field with which “the steps to complete connectorization are similar to
`those for installing a mechanical splice.” Ex. 1004, 1:7, 1:31–36. Figures 1
`and 2 of de Jong are reproduced below.
`
`12
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`
`
`Figures 1 and 2 depict, respectively, perspective and sectional views of the
`disclosed connector having housing 11. Id. at 1:49–54. Optical fiber 12 is
`placed in ferrule 10. Id. at 2:8–9. The centering assembly of Knecht
`(described below) is placed in housing 16, and first rib 40 is inserted in
`housing 16 through slot 41. Id. at 2:15–18, 2:21–29.
`Figure 7 of de Jong is reproduced below.
`
`
`
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`
`
`
`Figure 7 depicts a sectional view of a completed connector. Id. at 1:65–66.
`Prior to completion of the connector, cable 28 is inserted through boot 26
`and crimp ring 32. Id. at 2:52–53. The end portion of cable 28 is stripped
`away, revealing buffered optical fiber 30. Id. at 2:58–60. Optical fiber 30 is
`stripped, cleaved, and loaded through crimp tube 18 until it meets the
`terminal end of optical fiber 12. Id. at 2:60–62. Using a tool, slider/locking
`member 14 is “urged inward to slide to the second position over tab 40,
`urging tab 40 radially inward through slot 41 to center the connector.” Id. at
`2:62–65. Crimp ring 32 is then crimped. Id. at 3:2.
`Petitioner contends de Jong qualifies as prior art under 35 U.S.C.
`§ 102(b) based on its issue date of August 20, 1991. Pet. 8. We agree.
`De Jong’s issue date of August 20, 1991, is more than one year before the
`earliest possible effective filing date for the challenged claims of the
`’482 patent, which is March 22, 2000. See Ex. 1001, [64]; Ex. 1004, [45].
`
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`4.
`CamLite
`The CamLite reference from Siecor Corporation relates to the
`installation of the CamLite connector, which “incorporates a mechanical
`splice and a fiber stub within the connector.” Ex. 1007, 1. The installation
`process includes “cleaving the field fiber, inserting it into the connector until
`its cleaved end contacts the end of the fiber stub in the connector, and
`crimping it in place.” Id.
`The CamLite reference also “describes the use of a helium neon laser
`as an assembly aid for the CamLite multimode connector.” Id. “The laser
`gives the installer visual feedback when the fibers are successfully butted in
`the connector.” Id. According to this reference, there will be very little light
`visible at the rear of the connector housing if the connector has been
`installed correctly. Id. at 7. On the other hand, if there is a bright glow, then
`the fibers are not touching inside the connector, which will result in high
`attenuation. Id. In the latter scenario, the CamLite reference advises the
`installer to cut off the connector and to begin again. Id.
`Petitioner contends “CamLite is a printed publication dated April
`1991” that “constitutes prior art to the ’482 Patent under at least 35 U.S.C.
`§ 102(b).” Pet. 14 (citing Ex. 1007, 1, 8). Petitioner notes CamLite includes
`a 1991 copyright date and is identified on an Information Disclosure
`Statement from the prosecution of U.S. Patent No. 5,261,020 (“the
`’020 patent”). Pet. 14–15 n.1 (citing Ex. 1010, 1; Ex. 1011, 28, 52–59); see
`also Ex. 1011, 1 (CamLite listed as a reference cited on the ’020 patent,
`which issued on November 9, 1993). Citing testimony from Alan J.
`McFarland, Petitioner contends CamLite is a “Siecor Recommended
`Procedure[]” that was “widely disseminated . . . upon publication” and
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`included “with each unit of product sold covered by such a manual,” which
`made CamLite “freely available without restriction to distributors,
`customers, and potential customers.” Id. (citing Ex. 1013 ¶¶ 9–10). Patent
`Owner does not dispute the prior art status of CamLite.
`Based on Petitioner’s evidence, we determine that CamLite qualifies
`as a prior art printed publication under 35 U.S.C. § 102(b). Petitioner’s
`evidence establishes that CamLite was publicly disseminated more than one
`year before the earliest possible effective filing date for the challenged
`claims of the ’482 patent, which is March 22, 2000. See Ex. 1001, [64].
`
`Knecht
`5.
`Knecht is a patent directed to optical fiber splicing. Ex. 1005, 1:12.
`Knecht discloses “an optical splice having a frame with a channel; two rods
`each having a resilient exterior surface disposed in the channel; and a lid
`adapted to be received on the frame over the channel.” Id. at Abstract.
`Figure 1 of Knecht is reproduced below.
`
`
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`Figure 1 depicts a perspective view of the frame, lid, and rods of an optical
`splice. Id. at 2:67–68; 3:51–52. Plastic lid 10 fits over plastic frame 11,
`which contains rectangular channel 19. Id. at 3:52–54. Glass rods 15 and
`16, which are covered by resilient coatings 17 and 18, respectively, rest in
`channel 19. Id. at 3:54–56. Lid 10 also has a resilient coating 12. Id. at
`3:58.
`
`“In use, two optical fiber terminal end portions are disposed in the
`groove delimited by the coated rods, the optical fibers being in end wise
`abutting relationship with each other.” Id. at 1:43–46. The frame and lid are
`compressed into a mating relationship, whereupon pressure from the frame
`and lid compresses the optical fiber terminal ends within the coated portion
`of the lid and the coated rods. Id. at 1:53–55, 2:10–14. This centers the
`optical fibers, which may be of different diameters, with each other. Id. at
`2:14–15.
`Knecht is incorporated by reference in de Jong and Dean. Ex. 1004,
`2:15–18; Ex. 1009, 1:9–10.
`
`6.
`
`Takizawa
`a.
`Overview
`Takizawa is a U.S. patent directed to an optical connector that can be
`assembled easily and quickly at a field connection site. Ex. 1006, 1:36–39.
`Takizawa describes the need to check the connection condition for a pair of
`optical fibers after they are joined in an optical connector. Id. at 4:30–34.
`With reference to a Japanese patent application, Takizawa describes a
`member/component section for clamping an optical fiber in a connection
`mechanism that has “transparent or suitably translucent properties so that the
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`accommodation condition and connection condition of the optical fiber can
`be verified.” Id. at 4:35–41. Specifically, “when a visible light ray is input
`to the optical fiber after completion of the optical fiber connection, then
`preferably the leakage light from the connection point of the pair of optical
`fibers can be observed by eye from outside of the connection mechanism.”
`Id. at 4:41–45. Minimal light leakage is correlated with “positional
`displacement between the cores of the connected optical fiber pairs [being]
`within a permissible range,” whereas significant light leakage is correlated
`with “positional displacement [being] outside of the permissible range.” Id.
`at 4:50–55.
`
`
`Status of Takizawa as Prior Art
`b.
`Petitioner contends Takizawa qualifies as prior art under 35 U.S.C.
`§ 102(e). Pet. 13. Petitioner notes that Takizawa arose from a PCT
`application, and that its corresponding U.S. national stage application was
`filed on October 6, 1999. Id. That date is before March 22, 2000, the filing
`date of the earliest application to which the ’482 patent claims priority. See
`supra § I.B. Notwithstanding, Patent Owner contends Takizawa does not
`qualify as prior art because Patent Owner can antedate Takizawa. PO Resp.
`26–27. As such, we must consider whether the claims of the ’482 patent are
`entitled to a priority date earlier than October 6, 1999, based on the evidence
`produced by Patent Owner.
`Petitioner has met its initial burden to show Takizawa is prior art, so
`the burden of production shifts to Patent Owner to argue or produce
`evidence that the asserted reference is not prior art. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015). If Patent
`
`18
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`IPR2017-01074
`Patent RE45,482 E1
`Owner meets that burden of production, the burden shifts back to Petitioner.
`Id. We emphasize that the ultimate burden of establishing unpatentability
`always remains with Petitioner.
`An inventor can swear behind a reference by proving the inventor
`conceived the invention before the effective filing date of the reference and
`was diligent in reducing the invention to practice after that date. Apator
`Miitors ApS v. Kamstrup A/S, 887 F.3d 1293, 1295 (Fed. Cir. 2018). When
`proving conception via the oral testimony of an inventor, a party must
`proffer evidence corroborating that testimony. Shu-Hui Chen v. Bouchard,
`347 F.3d 1299, 1309 (Fed. Cir. 2003). Whether an inventor’s testimony has
`been sufficiently corroborated is determined by a “rule of reason” analysis,
`in which an evaluation of all pertinent evidence must be made so that a
`sound determination of the credibility of the inventor’s story may be
`reached. Id.
`Citing a declaration from inventor Brandon Barnes, Patent Owner
`contends that the inventors of the ’482 patent “conceived the subject matter
`of claims 15, 16, 50, 63–68, and 71 in July 1999.”6 PO Resp. 26 (citing
`Ex. 2002 ¶¶ 36–54). In particular, Patent Owner relies on a Siecor project
`known as “Project C333,” which allegedly launched on July 19, 1999, and
`sought to modify a new UniCam connector “such that a light
`injection/detection system or similar light device could be used to evaluate
`
`
`6 At oral argument, Patent Owner’s counsel appeared to back away from a
`July 1999 conception date and instead asserted a conception date that was
`merely “before October 6th, 1999.” Tr. 63:22–64:6. This distinction does
`not affect our analysis because we conclude that Patent Owner has not
`produced evidence sufficient to corroborate a conception date before
`October 6, 1999.
`
`19
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`IPR2017-01074
`Patent RE45,482 E1
`optical continuity.” Id. at 26–27 (citing Ex. 2002 ¶¶ 41–45; Ex. 2007).
`Patent Owner supports its assertion of an earlier conception date with the
`following evidence (see id. at 27): (1) a “Project Approval Form” for
`Project C333 dated July 19, 1999 (Ex. 2007); (2) certain drawings that are
`alleged to “closely resembl[e] the figures in the ’482 patent” (Ex. 2006);
`(3) certain testing notes and a molding test run report that allegedly show the
`creation of “working prototypes to test various materials and designs”
`(Exs. 1024, 2008–2010); and (4) a report related to Project C333 (Ex. 2011).
`With reference to these documents, Mr. Barnes testifies as follows:
`I have been asked to say whether we, prior to October 6,
`1999, had the idea of using a translucent cam mechanism with
`our MTRJ UniCam connectors to allow technicians to evaluate
`fiber continuity through the cam as described [in the]
`“RE45,482” patent. After reviewing these documents, it is
`clear to me that we did.
`Ex. 2002 ¶ 54.
`Petitioner argues Patent Owner “has not provided affirmative inventor
`testimony or even a single document that establishes conception prior to
`Takizawa.” Pet. Reply 7. Petitioner notes that Exhibit 2007 is Patent
`Owner’s only supporting document that predates Takizawa. Id. at 8.
`Petitioner contends Exhibit 2007 “says nothing about using the glow from a
`connector as a measure of continuity” and “is silent about the design of any
`connector, the design of a translucent connector, or which parts of any such
`connector (i.e., the splice components and cam mechanism) should be
`translucent.” Id. (emphases in original). Petitioner also argues that Patent
`Owner’s first translucent cam was not produced until October 18, 1999. Id.
`at 9 (citing Ex. 1024). Petitioner additionally quotes a “Preliminary Design
`Review” document dated December 10, 1999, stating that Patent Owner
`20
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`IPR2017-01074
`Patent RE45,482 E1
`“still needed ‘to make a decision on the material used for the UniCam cam
`molded part.’” Pet. Reply 10 (quoting Ex. 2011, 7).
`Our reviewing court has stated: “[T]he conception inquiry asks
`whether the inventors embraced the invention in their minds as of the date
`alleged. Whether or not subsequent testing succeeded or failed, or even took
`place, does not determine whether conception was complete as of that date.”
`In re Jolley, 308 F.3d 1317, 1325 (Fed. Cir. 2002). Following this
`framework, we must consider whether the evidence arising from before
`October 6, 1999, corroborates conception, regardless of whether subsequent
`testing by Patent Owner succeeded. The only evidence from before
`October 6, 1999, that Patent Owner provides to corroborate Mr. Barnes’s
`testimony regarding conception is the Project Approval Form for
`Project C333. See Ex. 2007. This form states that the objective of
`Project C333 is to “[b]rainstorm” designs for a “continuity verification
`device for use by the installer.” Id. No particular designs are set forth in
`Exhibit 2007, and Patent Owner does not attempt to link the substance of
`this document to the inventive limitations of the challenged claims. For
`example, as noted by Petitioner (Pet. Reply 8), the Project Approval Form
`does not describe translucent components that use the glow from the
`connector as a measure of continuity. Accordingly, Exhibit 2007 by itself is
`not sufficient to corroborate conception because it fails to establish that the
`inventors had settled on any particular design to confirm continuity, let alone
`the claimed connector and methods of validating continuity.
`And, even if we were to additionally consider Patent Owner’s
`evidence arising after October 6, 1999, this evidence does not substantiate
`conception before Takizawa’s priority date. For example, in the absence of
`
`21
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`IPR2017-01074
`Patent RE45,482 E1
`a specific link to earlier inventive activity, the fact that Patent Owner
`produced prototypes with translucent cams by October 18, 1999 (see
`Ex. 1024) does not corroborate conception before Takizawa. In addition,
`Patent Owner’s own Project C333 document from December 1999 states
`that Patent Owner still had yet to “to make a decision on the material used
`for the UniCam cam molded part.” Ex. 2011, 7. Such a statement casts
`doubt that the inventors had arrived at the complete invention even two
`months after October 6, 1999.
`Furthermore, we agree with Petitioner (Pet. Reply 10–11) that
`Mr. Barnes’s testimony regarding conception is unpersuasive. Rather than
`starting with his own recollection of the events surrounding conception and
`corroborating it with contemporaneous evidence, Mr. Barnes’s testimony
`about the conception date is based on “reviewing . . . documents,” meaning
`the documents cited by Patent Owner that are discussed above. Ex. 2002
`¶ 54. As such, we agree with Petitioner that Mr. Barnes’s testimony on
`conception lacks “independent recollection of conception activity prior to
`the Takizawa reference” and amounts to “a post hoc (and incomplete)
`corroboration of various disjointed documents.” Pet. Reply 11. Because the
`documents on which Mr. Barnes bases his testimony have the deficiencies
`mentioned above, we do not credit Mr. Barnes’s testimony on conception.
`Therefore, we determine that Patent Owner’s evidence is insufficient
`to establish conception before October 6, 1999. Accordingly, we determine
`that Takizawa qualifies as prior art under 35 U.S.C. § 102(e) because
`Takizawa’s national stage application date of October 6, 1999, is before the
`earliest possible effective filing date for the challenged claims of the
`’482 patent, which is March 22, 2000. See Ex. 1001, [64]; Ex. 1006, [86].
`
`22
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`IPR2017-01074
`Patent RE45,482 E1
`7.
`Claim 15
`a.
`Comparison of de Jong, CamLite, Takizaw
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