Lumentum Holdings, Inc. v. Capella Photonics, Inc.

Trials@uspto.gov 	Paper 38
571-272-7822 	Entered: March 4, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
LUMENTUM HOLDINGS, INC., LUMENTUM, INC., and
LUMENTUM OPERATIONS LLC,
Petitioner,
v.
CAPELLA PHOTONICS, INC.,
Patent Owner.
____________
Case IPR2015-00739
Patent RE42,678 E
____________
Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
JAMES A. TARTAL, Administrative Patent Judges.
TARTAL, Administrative Patent Judge.
DECISION
Motion to Terminate
37 C.F.R. § 42.71(a)

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Patent Owner Capella Photonics, Inc. was authorized to file a motion
to terminate “limited only to Patent Owner’s contention that the Board
lacked jurisdiction to institute inter partes review in this proceeding.” Paper
31, 5. Patent Owner filed a Motion to Terminate, and, as the moving party,
has the burden of proof to establish that it is entitled to the requested relief,
here, termination of the proceeding. Paper 35 (“Motion” or “Mot.”), see
also 37 C.F.R. § 42.21(c). Upon consideration of Patent Owner’s
arguments, for the reasons discussed below, the Motion is denied.
By way of background, the Petition was filed on February 14, 2015,
and identified JDS Uniphase Corporation (“JDSU”) as the petitioner and real
party-in-interest. Paper 1, 1. During late July and early August, 2015, as
part of a reorganization, JDSU was renamed Viavi Solutions Inc. (“Viavi”).
Ex. 1048, 345. Additionally, certain assets and obligations associated with
communications and commercial optical products were spun out to
Lumentum Holdings Inc., Lumentum, Inc. and Lumentum Operations LLC.
Paper 21, 1–5; Ex. 1048, 2–3 (stating that pursuant to a series of agreements
entered July 31, 2015, Viavi transferred certain business segments to
Lumentum Holdings Inc. pursuant to a distribution effective August 1,
2015).
On August 25, 2015, a decision instituting trial in this proceeding was
entered. Paper 7. On September 15, 2015, an updated mandatory notice was
filed stating that, as a result of a reorganization involving JDSU, the real
parties-in-interest to this proceeding are now Lumentum Holdings Inc.,
Lumentum, Inc. and Lumentum Operations LLC. Paper 10. Petitioner’s
updated mandatory notice was not filed within 21 days of the change in

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name of the real parties-in-interest, as required by 37 C.F.R. §42.8(a)(3). On
January 15, 2016, we conducted a teleconference with the parties in response
to a request by Petitioner to re-caption the proceeding to reflect the change
in name of the real parties-in-interest. During that call we authorized
Petitioner to file a motion to re-caption the proceeding, and accepted
Petitioner’s late-filing of the updated mandatory notice. See 37 C.F.R.
§42.5(c)(3). On January 22, 2016, Petitioner filed a Motion to Re-Caption
the Proceeding (the “Re-Caption Motion”). Paper 21. Patent Owner did not
oppose the Re-Caption Motion. The Re-Caption Motion was granted on
January 29, 2016. Paper 27. During a teleconference on February 2, 2016,
Patent Owner conceded that it has no evidence to dispute the identification
of the real parties-in-interest provided by Petitioner.
Patent Owner contends that “Petitioner failed to meet its statutory
requirements under § 312(a)(2) and that the petition was incomplete,” and
reasons that “[s]ince the Board should not have considered the petition when
it instituted review, this proceeding should be terminated.” Mot. 1. We
disagree.
The statutory provision at issue, 35 U.S.C. § 312(a), states:
A petition filed under section 311 may be considered only
if-
(1) the petition is accompanied by payment of the fee
established by the Director under section 311;
(2) the petition identifies all real parties in interest;
(3) the petition identifies, in writing and with particularity,
each claim challenged, the grounds on which the challenge to
each claim is based, and the evidence that supports the grounds
for the challenge to each claim, including-
(A) copies of patents and printed publications that
the petitioner relies upon in support of the petition; and

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(B) affidavits or declarations of supporting evidence
and opinions, if the petitioner relies on expert opinions;
(4) the petition provides such other information as the
Director may require by regulation; and
(5) the petitioner provides copies of any of the documents
required under paragraphs (2), (3), and (4) to the patent owner
or, if applicable, the designated representative of the patent
owner.
Contrary to Patent Owner’s argument that, under § 312(a)(2), the Board
lacked jurisdiction to institute inter partes review in this proceeding, Patent
Owner has not shown that § 312(a) is jurisdictional. In Elekta, Inc. v.
Varian Medical Systems, Inc., IPR2015-01401, slip op. 6–7, (December 31,
2015) (Paper 19) (“Elekta”), the decision explained, and we agree, that:
[T]he [Supreme] Court has “adopted a readily administrable
bright 	line 	for 	determining 	whether 	to 	classify 	a 	statutory
limitation as jurisdictional.” Sebelius [v. Auburn Reg’l Med.
Ctr.], 133 S. Ct. [817,] 824 [(2013)] (internal quotation marks
omitted). 	That determination turns on “whether Congress has
clearly stated that the rule is jurisdictional; absent such a clear
statement, 	. 	. 	. 	courts 	should 	treat 	the 	restriction 	as
nonjurisdictional in character.” Id. (internal quotation marks and
alteration 	omitted). 	Section 	312(a)’s 	emphatic 	“may 	be
considered only if” language does not make those requirements
jurisdictional. 	See Henderson [ex rel. Henderson v. Shinseki],
562 U.S. [428,] [] 439 [(2011)] (“[W]e have rejected the notion
that all mandatory prescriptions, however emphatic, are properly
typed jurisdictional.”) (internal quotation marks and alterations
omitted, emphasis added). 	Because Congress has not clearly
stated 	that 	it 	is 	jurisdictional, 	we 	treat 	§ 312(a) 	as
nonjurisdictional 	in 	character. 	In 	particular, 	§ 312(a)’s
“Requirements of the Petition” are “[a]mong the types of rules
that should not be described as jurisdictional” because they are
“‘claim-processing rules’ . . . that seek to promote the orderly
progress of litigation by requiring that the parties take certain
procedural steps at certain specified times.” 	Henderson, 562

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U.S. at 435; see id. at 438 (holding that a statutory notice of
appeal deadline required “[i]n order to obtain review by the Court
of Appeals for Veterans Claims” was not jurisdictional); see also
Achates Reference Publ’g, Inc. v. Apple Inc., 803 F.3d 652, 658
(Fed. Cir. 2015) (holding that the § 315(b) time-bar does not
implicate the Board’s jurisdiction because the time bar “does not
itself give the Board the power to invalidate a patent”).
Simply stated, § 312(a) sets forth requirements that must be satisfied
for the Board to give consideration to a petition, however, a lapse in
compliance with those requirements does not deprive the Board of
jurisdiction over the proceeding, or preclude the Board from permitting such
lapse to be rectified. Applying Patent Owner’s contrary logic that § 312(a)
is jurisdictional would lead to absurd results. For example, if § 312(a) were
jurisdictional, a patent owner could show at the conclusion of trial that a
petitioner failed to attach to the petition a copy of a patent “relied upon in
support of the petition,” as required by § 312(a)(3)(A), and we would have
no choice but to terminate the proceeding. Such a result contrary to the
interests of justice weighs heavily against Patent Owner’s contention that
§ 312(a) is jurisdictional.
The Board’s rules further make clear that jurisdiction is not “lost” the
moment a petition no longer identifies “all real parties in interest,” as
required by § 312(a)(2). It is apparent readily that over the course of a trial
the identity of a real party in interest may change. Accordingly, 37 C.F.R.
§42.8(a)(3) allows a party 21 days to provide the Board notice of a change in
its identification of the real party in interest, without the loss of
“jurisdiction” over the proceeding.
Patent Owner provides no argument in its Motion to undermine the
reasoning in Elekta, with which we agree, that § 312(a) is not jurisdictional.

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Patent Owner contends that Elekta is “distinguishable” because in that case
the “Board was able to consider the new [real party in interest] listed in the
mandatory notice before it instituted review,” is “not controlling” (as it is not
a precedential decision), and “is inconsistent with many other Board cases
that treat § 312(a) as a threshold issue.” Mot. 8–10. None of these
arguments demonstrate that § 312(a) is jurisdictional, the very premise upon
which Patent Owner’s Motion is founded. Patent Owner directs us to no
decision finding § 312(a) is jurisdictional, and simply stating that an issue is
a “threshold” issue does not make it “jurisdictional,” nor does the timing of
the institution decision. Thus, having failed to demonstrate that § 312(a) is
jurisdictional, Patent Owner has not shown it is entitled to the relief
requested.
Patent Owner’s additional arguments generally fall outside the scope
of what was authorized for the Motion, but do not otherwise support Patent
Owner’s request that the proceeding be terminated. Mot. 1–13. Patent
Owner’s argument that the Petition was incomplete is not correct. Id. at 1–5.
There is no dispute that the Petition, when filed, identified all real parties in
interest, and, therefore, the Petition was complete, was properly accorded a
filing date, and was available to be “considered” under § 312(a).
Accordingly, Patent Owner’s argument that the Petition cannot be
“corrected” under 37 C.F.R. § 42.106(b) is misplaced, as there was no need
to “correct” the Petition (as opposed to updating the Petition with additional
information concerning circumstances that arose after the Petition was filed).
Thus, Patent Owner has not shown a need to assign a new filing date to the
Petition. Id. at 3–4.

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Fundamentally, Patent Owner seeks to create an obligation on
Petitioner to notify the Board of any change in the identity of a real party in
interest before the Board issues an institution decision, notwithstanding that
Petitioner does not know the date such a decision will be issued, and in
disregard of our rule which provides 21 days to provide such notice. See id.
at 6–8; see also 37 C.F.R. §42.5(c)(3) (providing the Board discretion to
permit late-filing of the updated mandatory notice). Patent Owner has
shown no sufficient support for imposing such an obligation, much less a
jurisdictional requirement that would compel us to do so.
Similarly, Patent Owner’s contention that the Board is offering
Petitioner “a fully furnished opportunity for gamesmanship” has no merit.
See Mot. 10–11. Petitioner disclosed on September 15, 2015, the new name
of the real party in interest following the corporate reorganization. Patent
Owner raised no issue with that disclosure for over four months, waiting
until after we granted Petitioner’s Re-Caption Motion, without opposition
from Patent Owner, on January 29, 2016. We have considered all of Patent
Owner’s arguments and conclude that Patent Owner has failed to make the
necessary showing that it is entitled to the extraordinary relief it seeks of
termination of this proceeding.
Accordingly, it is:
ORDERED that Patent Owner’s Motion to Terminate is denied.

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For PETITIONER:
Walter C. Linder
FAEGRE BAKER DANIELS LLP
patentdocketing@faegrebd.com
For PATENT OWNER:
Jason D. Eisenberg
Robert Greene Sterne
Jon E. Wright
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
jasone-PTAB@skgf.com
rsterne-PTAB@skgf.com
jwright-PTAB@skgf.com