Edmund Optics, Inc.v.Semrock, Inc.

Patent Trial and Appeal Board

Sep 9, 2015

10840134 (P.T.A.B. Sep. 9, 2015)

Trials@uspto.gov Paper 50
571-272-7822 Entered: September 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

EDMUND OPTICS, INC.,
Petitioner,

v.

SEMROCK, INC.,
Patent Owner.

____________

Case IPR2014-00583
Patent 7,068,430 C1
__________

Before WILLIAM A. CAPP, TRENTON A. WARD, and
DAVID C. McKONE, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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Edmund Optics, Inc. (“Edmund”) filed a Petition (Paper 1, “Pet.”)
requesting inter partes review of claims 1, 18, 21, 26, 27, 30, and 34–41 of
US Patent 7,068,430 C1 (Ex. 1001, the “’430 patent”). We instituted an
inter partes review of claim 1 of the ’430 patent. Paper 9. After institution
of trial, Semrock, Inc. (“Semrock”) filed a Patent Owner’s Response (Paper
18, “PO Resp.”) and Edmund filed a Reply (Paper 24, “Reply”). This case
is before the Board for a Final Written Decision following an Oral Hearing
on the merits conducted May 21, 2015, the transcript for which is entered as
Paper 49. (“Tr.”).
Also before the Board are the following matters:
1. Edmund’s Motion to Exclude Evidence (Papers 42, 45, 47)
2. Semrock’s Contingent Motion to Amend (Papers, 19, 25, and 29);
and
3. Edmund’s Objection to the scope of Semrock’s Reply to
Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend
(Paper 34).
After considering the evidence and arguments of counsel and for the
reasons set forth below, we determine that Edmund has NOT met its burden
of showing, by a preponderance of the evidence, that claim 1 of the ’430
patent is unpatentable.
I. BACKGROUND
A. The ’430 patent (Ex. 1001)
The ’430 patent, titled Method of Making Highly Discriminating
Optical Edge Filters and Resulting Products, relates to making optical filters
that block unwanted light and are used in Raman spectroscopy and
fluorescence microscopy. Ex. 1001, 1:22–28. The patent discloses optical
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edge filters with alternating layers of material disposed over a transparent
substrate and where the thickness of the various layers affects the
performance of the filter. Id. at claim 18; 3:14–28. There are four aspects to
the invention: A) an apparatus programmed to make improved optical edge
filters; B) a method of making the improved filters; C) improved filters
made by the method; and D) applications of the improved filters. Id.
at 6:4–9.
In the claimed method, a data processor receives deposition rate data
as an input. Id. at 8:24–25. The data processor calculates a theoretical
transmission of light through a layer of the filter. Id. at claim 1. For at least
some layers, the data processor calculates an expected time for deposition of
material to achieve the desired thickness related to the desired optical
properties of a layer. Id. at 9:24–26. For these layers, their deposition
durations are controlled using an expected deposition time based on a
designed thickness and deposition rate. Id. For other layers, deposition
duration is controlled by optically monitoring transmission levels through
the layer. Id. at 9:19–23. The data processor determines which layers are
optically monitored and which layers are timed using an expected deposition
time. Id. at 9:26–29.
According to the Specification, the invention achieves edge steepness
in optical filters of less than about 0.8%. Id. at 14:23–27. The Specification
states that the steepness of edge slope achieved by the invention “permits
return of response wavelengths closer to excitation wavelength providing an
increase in the information content of the returned response, and that the
reduction in transmission loss means that the enhanced information return
response will be at higher brightness.” Id. at 16:46–51. Furthermore, the
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Specification describes that the greater hardness and durability of the filters
permits a more robust and versatile optical analytical instrument. Id. at
16:51–54.
B. Challenged Claim and Instituted Ground of Unpatentability
We instituted an inter partes review on Edmund’s challenge to
claim 1 of the ’430 patent as anticipated by Starke (Ex. 10031). Decision on
Institution (Paper 29), 33. Edmund supports its challenge with declaration
testimony from Angus Macleod (Ex. 1011) and Uwe Schallenberg
(Ex. 1012). Claim 1, an independent claim, is reproduced below:
1. A method of manufacturing an optical filter by
determining when deposition of a layer of the optical filter is to
terminate, the method comprising:
calculating, with a data processor, a theoretical transmission
Ti of light through the layer;
calculating, with the data processor, an expected deposition
time ti of the layer,
measuring, during deposition of the layer for a period less
than ti, a measured transmission Tm of light through the
layer;
determining, with the data processor, when deposition of the
layer is to terminate based upon the theoretical
transmission Ti and the measured transmission Tm.
II. CLAIM INTERPRETATION
In its Petition, Edmund stated that the terms of claim 1 do not require
construction and should be afforded their ordinary and customary meaning.
Pet. 5. In its Patent Owner Response, Semrock proposes a construction for

1 Starke et al., Rapid Prototyping of Optical Thin Film Filters, 4094 PROC.
OF SPIE 83–92 (2000).
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“expected deposition time ti of the layer.” PO Resp. 7–11. Semrock also
proposes a construction for “measuring during deposition for a period less
than ti, a measured transmission Tm.” PO Resp. 11–16. In its Reply,
Edmund proposes a competing construction for each term. Reply 3–11.
1. “expected deposition time ti of the layer”
Edmund’s proposed construction:
a calculated prediction of when to expect deposition to cease.
Semrock’s proposed construction:
total expected time to deposit the layer.
The difference between Semrock’s proposed construction and
Edmund’s proposed construction is that Semrock’s proposed construction
contemplates calculating ti one time for each layer based on the design
thickness of the entire layer. In contrast, Edmund’s proposed construction
contemplates an iterative process whereby ti is periodically recalculated
during deposition of the layer based on progressive changes in the thickness
of the layer at different points in time during deposition.
Semrock maintains that “the layer” in the disputed phrase finds
antecedent basis in the preamble of claim 1. Semrock argues that “the layer”
refers to an entire layer and that expected deposition time ti, therefore, refers
to the amount of time required to deposit the entire layer. PO Resp. 9.
Semrock relies on Varco LP v. Pason Systems USA Corp., 436 F.3d 1368,
1373 (Fed.Cir. 2006), to support an argument that its proposed construction
is necessary to remain consistent with the preamble of the claim.
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Semrock directs our attention to specific passages in the specification
as supporting its proposed construction. Id. For example, Semrock directs
our attention to the following passage:
The expected deposition time ti for layer i is calculated as the
desired thickness di divided by estimated deposition rate ri for
the layer or from an average of the rates of the previous layers
of like material at 507.
PO Resp. 9–10; Ex. 1001, 9:58–60. Also, for layers that are not optically
monitored: “their deposition durations are controlled using an expected
deposition time ti based upon designed (“theoretical”) thickness di and
deposition rate ri. Ex. 1001, 9:24–26. Semrock argues that the expected
deposition time must be the total expected time for deposition of an entire
layer. PO Resp. 10–11.
Edmund argues that claim 1 merely requires a calculated prediction of
when to expect deposition to cease. Reply 3. In other words, it is the
estimated remaining duration to deposit the layer, which can be calculated
after the system begins to deposit the layer. Edmund argues that expected
deposition time need only be longer than the period during which optical
monitoring measurements are taken, as such measurements are used to
calculate the remaining deposition duration. Id. at 3–4. Edmund argues that
the specification equates the expected deposition time ti of the layer with the
expected remaining deposition duration for the layer. Id. at 6. Edmund
argues that since the expected deposition time ti “may” be calculated prior to
beginning of actual deposition, calculation may occur either before or after
deposition of the layer begins. Id. at 4. Edmund supports its proposed
construction with declaration testimony from its expert, Professor MacLeod.
Reply 3; Ex. 1022 ¶¶ 21–23.
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The patentability analysis is a two-step process: first, the claim scope
is determined in accordance with the principles of claim construction and
second, the properly construed claim is compared to the prior art.
See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351
(Fed. Cir. 2001). Semrock’s contention as to why claim 1 does not read on
Starke for purposes of an anticipation analysis is largely a matter of claim
construction.
In an inter partes review, claims are given their broadest reasonable
interpretation consistent with the specification. See 37 C.F.R. § 42.100(b);
In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015).
Within this framework, terms generally are given their ordinary and
customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007). The “ordinary and customary meaning of a claim term” is
that meaning that a person of ordinary skill in the art in question, at the time
of the invention, would have understood the claim to mean. Id.; accord
Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir. 2005). The Federal
Circuit admonishes us that the Board’s construction cannot be divorced from
the specification and the record evidence. See Microsoft Corp. v.
Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015). Rather, “claims should
always be read in light of the specification and teachings in the underlying
patent.” Id. at 1298. Thus, a construction that is “unreasonably broad” and
which does not “reasonably reflect the plain language and disclosure” will
not pass muster. See id.
At the outset, we have considered the claim construction testimony of
both Patent Owner’s Declarant, Dr. Rancourt, and Petitioner’s Declarant,
Professor MacLeod. We note, however, that “conclusory, unsupported
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assertions by experts as to the definition of a claim term are not useful to a
court.” Phillips, 415 F.3d at 1318.2 In the instant case, the experts’
testimony does little more than repeat, without citation to additional
evidence, the conclusory arguments of their respective counsel. Thus, we
focus primarily on the intrinsic record to construe the term at issue. Id.
(“extrinsic evidence in general is less reliable than the patent and its
prosecution history in determining how to read claim terms”).
A claim construction analysis begins with, and is centered on, the
claim language itself. See Interactive Gift Express, Inc. v. Compuserve, Inc.,
256 F.3d 1323, 1331 (Fed.Cir. 2001). In the instant case, claim 1 is directed
to a method of manufacturing an optical filter by determining when
deposition of the layer of the optical filter is to terminate. Ex. 1001, claim 1
preamble. Aspects of time or temporal duration appear in three limitations
of the claim:
(1) calculating . . . an expected deposition time ti;
(2) measuring . . . for a period less than ti; and
(3) determining . . . when deposition . . . is to terminate.
Ex. 1001, claim 1. The first two instances where time is mentioned in the
claim, it is in reference to expected deposition time or “ti“. We note that, in
these two specific instances, the claim element “ti” is recited. The third

2 “[E]xpert testimony can be useful to a court for a variety of purposes, such
as to provide background on the technology at issue, to explain how an
invention works, to ensure that the court’s understanding of the technical
aspects of the patent is consistent with that of a person of skill in the art, or
to establish that a particular term in the patent or the prior art has a particular
meaning in the pertinent field.” Phillips, 415 F.3d at 1318. In the instant
case, the expert testimony relied upon by each of the parties provides no
such assistance to the Board.
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mention of time relates to determining “when the deposition of the layer is to
terminate.” In this third instance, there is no corresponding express
association with “ti “.
We turn now to the patent specification, which is always relevant,
usually dispositive, and the single best guide to the meaning of a disputed
term. See In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir.
2012) (quoting Phillips, 415 F.3d at 1315). The ’430 patent divides the
layers of an optical filter into two categories: (1) layers that are optically
monitored during manufacture; and (2) layers that are not optically
monitored.
the data processor 414 determines which layers are to be
optically monitored and which layers are to be timed using an
expected deposition time.
Ex 1001, 9:27–29; see also id. at 9:30–10:6.
Layers that are not optically monitored have their deposition
terminated at the expiration of ti. Id. at 10:1–4. The specification explains
that ti is calculated as a function of designed (theoretical) thickness and
deposition rate.
For layers that are predicted to have little error between the
designed thickness d and a simulated actual thickness,
deposition duration is controlled by optically monitoring
transmission levels Tm through the layer during deposition. For
the other layers, their deposition durations are controlled using
an expected deposition time ti based upon designed
(“theoretical”) thickness di and deposition rate ri.
Id. at 9:19–26.
In view of the foregoing, with respect to layers that are not optically
monitored, ti has a fixed and unambiguous meaning. Namely, it is the
expected deposition time for an entire layer and is calculated with respect to
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the designed thickness of the entire layer and expected deposition rate
applicable to deposition of an entire layer. This follows from explanation in
the specification that the thickness parameter in the calculation is the
designed, or theoretical, thickness of the entire layer as opposed to a
measured or derived intermediate thickness determined sometime during the
deposition process.
We now turn to whether ti has an alternative, broader meaning when
used in connection with optically monitored layers. The specification
explains that if a current layer is to be optically monitored, the actual
transmission Tm is measured as a function of actual time transpired t. Id. at
10:7–9. This continues until about 95% of ti has elapsed. Id. at 10:7–12. At
this time (95% of ti), a “new deposition duration” is calculated. Id. This
calculated “new deposition duration” is never referred to in the specification
as “ti”.
From this disclosure, we conclude that the ti referred to in line 10 of
column 10 is the same ti referred to in connection with layers that are not
optically monitored. If, as Edmund contends, ti represents an estimated
remaining time until deposition is terminated and is calculated repeatedly
and intermittently reset during deposition, the time represented by ti
becomes a moving target and the time represented by 95% of ti becomes
increasingly smaller until it approaches and becomes essentially equal to the
“new deposition time” identified in line 11 as the time difference between a
hypothetical continually recalculated ti and a “new deposition time”
approaches zero. See Ex. 1001, 10:11.
We think the better interpretation is that the ti identified in line 11 is a
different and distinct time from the “new deposition duration” identified
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later in the same line of the specification. In other words, for optically
monitored layers, ti is calculated one time at or before commencement of
deposition of an optically monitored layer. Another time, represented by
95% of ti is then calculated one time such that it becomes a fixed moment in
time for initiation of a calculation of a “new deposition duration.” Thus,
based on our review of the specification, the term “expected deposition
time ti” has the same meaning for layers that are optically monitored and
layers that are not optically monitored.
In view of the foregoing, we construe “expected deposition time ti of
the layer” to mean a time based upon the designed (“theoretical”) thickness
di and deposition rate ri where the designed thickness di represents the
thickness of an entire layer, not a portion thereof.
2. “measuring during deposition for a period less than ti, a measured
transmission Tm”
Semrock’s proposed construction:
continually ascertaining during deposition throughout a period less
than ti, a measured transmission Tm
Edmund’s proposed construction:
a sufficient number of measurements are taken in order to generate a
suitable transmission curve for the layer
The parties’ dispute centers on the frequency with which
measurements are taken during the deposition period. Semrock contends
that measurements are taken “continually.” Semrock contends that its
proposed construction represents the plain meaning of the term, however,
Semrock provides no cogent explanation of what it means to measure
“continually.” PO Resp. 13–16. Semrock does not identify any language in
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the specification that discloses how long it takes to complete a
“measurement.” Semrock does not identify any particular number of
measurements that are needed. Neither does Semrock identify any language
in the specification that specifies a minimum frequency for taking
measurements or that delineates the permissible length of an interlude
between taking measurements, if any. Semrock merely argues that
transmission measurement produces a measured curve of Tm vs. t until about
95% of ti has elapsed. PO Resp. 15 (citing Ex. 1001, 13:24–28). Semrock
argues that such disclosure indicates that measurement occurs continually
through the time period ending at 95% of the expected deposition time ti,
otherwise it would not be possible to produce a curve. PO Resp. 15.
Edmund contends that the broadest reasonable interpretation requires
only that a sufficient number of measurements be taken in order to generate
a suitable transmission curve for the layer. Reply 7. We agree. Claim 1
requires that the data processor determines when deposition of the layer is to
terminate based on the theoretical transmission Ti and the measured
transmission Tm. Ex. 1001, claim 1. The claim does not require that any
particular number of transmission measurements Tm must be taken for the
data processor to make its determination. Neither does the specification
teach that the measurements be taken at any particular interval. Thus, any
number of measurements that are sufficient to permit the data processor to
determine when deposition of the layer is to terminate satisfies the claim
limitation.
Thus, we construe “measuring during deposition for a period less
than ti, a measured transmission Tm.” to mean “a sufficient number of
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measurements are taken in order to determine, with a data processor, when
deposition of the layer is to terminate.”
III. ANTICIPATION BY STARKE
To anticipate a patent claim under 35 U.S.C. § 102, “a reference must
describe . . . each and every claim limitation and enable one of skill in the art
to practice an embodiment of the claimed invention without undue
experimentation.” Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d
1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed.
Cir. 2009)). Anticipation of a patent claim is a question of fact. See In re
Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). As the party
challenging the patentability of claim 1, Edmund bears the burden of
proving anticipation by a preponderance of the evidence. See 35 U.S.C.
§ 316(e).
Whether a patent is anticipated is a two-step inquiry. Power Mosfet
Tech., LLC. v. Siemens AG, 378 F.3d 1396, 1407 (Fed.Cir. 2004). The first
step requires construction of the claims. See id. The second step in the
analysis requires a comparison of the properly construed claim to the prior
art. See id.
Starke describes an ion beam sputtering coating process for the
automated fabrication of optical coatings. Ex. 1003, 83. Starke discloses
that several procedures and devices are commonly used in the coating
industry for layer thickness control. Id. Starke discloses that single-
wavelength optical monitoring devices are commercially available. Id.
Starke discloses an optical monitoring system that includes a data
acquisition and processing environment known as LabVIEW. Id. at 85.
During deposition, the LabVIEW program triggers a spectrophotometer to
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perform transmittance measurements. Id. at 86. After plotting the actual
thickness of a layer against the measurement time, the actual coating rate is
computed for estimation of the remaining coating duration. Id.
Edmund furnishes a claim chart that purports to read all of the
limitations of claim 1 onto Starke. Pet. 23–33. Edmund supports its
contentions with declaration testimony from Professor MacLeod and Uwe
Schallenberg. Ex. 1017 ¶¶ 53–54; Ex. 1018 ¶¶ 51–54. Semrock argues that
Starke fails to satisfy two limitations of claim 1: (1) the “measuring, during
deposition . . .” limitation; and (2) the “calculating . . . an expected
deposition time ti” limitation.
A. The “Measuring, During Deposition . . .” Limitation
Semrock argues that Starke does not measure “continually” during
deposition. PO Resp. 19–20. Semrock contends that Starke rotates a filter
substrate intermittently into and out of a measurement beam and that
measurements are only taken when the substrate is rotated into position in
the measurement beam. Id. According to Semrock, because the
measurements are only taken intermittently when the substrate is rotated into
position, the measurements are not taken “continually.” Id. Semrock argues
that measurements must be taken “continually” to satisfy the claim language.
Id.
Edmund argues that the claim language is satisfied by the taking of
periodic, intermittent measurements during deposition. Reply 12–15. We
agree.
The dispute between Semrock and Edmund over this limitation is a
matter of claim construction. According to our construction, the claim
language is satisfied by periodic, intermittent measurements during
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deposition, provided that they are sufficient in number to permit a data
processor to determine when deposition of the layer is to terminate. Starke
deposits coating material on substrates that are rotated into and out of a
measurement beam. Ex. 1003, 85. Measurements are taken “during each
rotation cycle” until there is less than 15 seconds remaining in a deposition
cycle. Id. Deposition is then terminated based on a calculated duration of
time.
After plotting the actual thickness against the measurement
time, the actual coating rate is computed for the estimation of
the remaining coating duration. If this remaining time is shorter
than 15 seconds, the program waits until it terminates the actual
layer and changes the coating material if needed.
Ex. 1003, 86.
In view of the foregoing, Edmund has demonstrated that this claim
limitation is satisfied by Starke.
B. The “Expected Deposition Time ti” Limitation.
Semrock argues that Starke fails to disclose “calculating . . . an
expected deposition time ti of the layer.” PO Resp. 17. Semrock argues that
Starke first determines the thickness of a layer that is already in the process
of being deposited, compares that intermediate/in-process thickness with a
time to determine a deposition rate, and then uses that information to
compute an estimated remaining coating duration. PO Resp. 17–18.
Edmund concedes that Starke does not start calculating the remaining
deposition time until after deposition has commenced. Tr. 13 (“It is after
deposition”). Edmund relies on the fact that Starke calculates estimated
remaining deposition time during deposition as satisfying the claim
limitations directed to “expected deposition time ti.” Reply 11.
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Edmund’s position on whether Starke calculates an “expected
deposition time ti” is predicated on the Board adopting Edmund’s proposed
claim construction. We do not adopt that construction. Starke’s system
depends on taking optical monitoring transmission measurements after
deposition has commenced. Edmund fails to identify any disclosure in
Starke that a data processor calculates an expected deposition time ti based
on the design thickness of an entire layer. Thus, Starke does not satisfy the
limitation directed to calculating an “expected deposition time ti” as we have
construed that limitation.
“Anticipation requires the presence in a single prior art disclosure of
all elements of a claimed invention arranged as in the claim.” Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Inasmuch as
Starke fails to disclose all elements of claim 1, we find that Edmund has
failed to establish, by a preponderance of the evidence, that Starke
anticipates claim 1.
IV. EDMUND’S MOTION TO EXCLUDE EVIDENCE
Edmund moves the Board to exclude the following testimony of the
parties’ respective experts, Professor MacLeod and Dr. Rancourt:
1. Exhibit 2008, a deposition transcript of Professor MacLeod, taken in
IPR2014-00599 (the ’599 case) on April 7, 2015;
2. Exhibit 2013, an excerpt from the declaration testimony of Professor
MacLeod, originally submitted by and on behalf of Edmund in the
’599 case;
3. Exhibit 2009, 90:3–21, deposition testimony of Professor MacLeod;
4. Exhibit 2010 ¶¶ 32–34, declaration testimony by Dr. Rancourt; and
5. Exhibit 2010 ¶¶ 36–37, declaration testimony by Dr. Rancourt.
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A. MacLeod’s Deposition Testimony from the ’599 Case
Edmund seeks to exclude cross-examination testimony elicited from
its own expert, Professor MacLeod, in a different, but related, inter partes
review. Edmund argues that it is improper to take cross-examination
testimony obtained in one case and then use it another case. Edmund also
argues that the cross-examination exceeds the scope of direction
examination. Paper 45. The testimony in question goes to an issue of claim
construction. We have previously explained that our claim construction in
this case is based primarily on the intrinsic record and that the parties’
proffered expert testimony is neither needed nor helpful in assisting our
claim construction efforts.3
Nevertheless, we DENY Edmund’s motion to exclude Professor
MacLeod’s Exhibit 2008 deposition testimony, but afford the testimony little
weight.
B. MacLeod’s Declaration Testimony from the ’599 Case
Edmund seeks to exclude Exhibit 2013, an excerpt from Professor
MacLeod’s declaration testimony in the ’599 case, among other things, on
the grounds of relevancy. Semrock did not cite to this declaration testimony
in its Patent Owner’s Response. In opposing Edmund’s motion to exclude,
Semrock did not explain the relevancy of this testimony. The relevance of
this testimony is not readily apparent to us.

3 We are not, however, inclined to adopt a blanket rule that cross-
examination testimony obtained in one case can never be used in another
case. For example, it may permissible, in an appropriate situation, to
impeach a witness with a prior inconsistent statement made in another
proceeding.
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Nevertheless, we DENY the motion to exclude Professor MacLeod’s
Exhibit 2013 declaration testimony, but afford such testimony little weight.
C. MacLeod’s Exhibit 2009 Deposition Testimony
Edmund seeks to exclude cross-examination of its own expert,
Professor MacLeod taken in the instant inter partes review. Paper 42, 4–6.
Edmund contends that Professor MacLeod does not understand the legal
significance of the term “disclosed” in a patent lawsuit. Edmund argues that
the term “disclose” has a separate, distinct, and specialized meaning in
patent litigation than in other contexts in the English language. Id.
Professor MacLeod is an expert witness, hired by Edmund, among
other things, to give expert testimony on whether certain patent claim
limitations are disclosed in the prior art. Professor MacLeod uses the word
“disclose,” or variations thereof, more than 50 times in his initial declaration
submitted in support of Edmund’s Petition. See Exhibit 1017. Edmund does
not explain how the meaning of the word “disclose” is materially different
when used by Professor MacLeod in his declaration as compared to his
challenged deposition testimony.
Edmund’s Motion to Exclude testimony from Exhibit 2009 is
DENIED.
D. Dr. Rancourt’s Declaration Testimony
1. Ex. 2010 ¶¶ 32–34.
Edmund moves to exclude this testimony as an improper attempt to
rehabilitate a witness following cross-examination. Edmund contends that,
after Dr. Rancourt, was cross-examined during his deposition, any attempt to
rehabilitate him as a witness should have been accomplished by re-direct
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examination during the deposition rather than through subsequent
declaration testimony.
In the instant case, Edmund concedes that Semrock did not cite or
otherwise rely on this testimony in its briefs. We accord this testimony little,
if any weight, but otherwise DENY Edmund’s Motion to Exclude
paragraphs 32–34.
2. Exhibit 2010 ¶¶ 36, 37
Edmund seeks to exclude declaration testimony of Dr. Rancourt,
Semrock’s expert, directed to an issue of claim construction. The challenged
testimony of Dr. Rancourt is expert opinion testimony. In paragraphs 36
and 37, Dr. Rancourt expresses an observation and opinion on certain expert
testimony that Edmund elicited from its own expert, Professor MacLeod, in
the ’599 case. Edmund seeks its exclusion as hearsay. Paper 42, 2–4.
However, Edmund has not shown that Dr. Rancourt’s statements, in the first
instance, constitute hearsay. See Fed. R. Evid. 801(d)(2)(D).
We have previously explained that our claim construction in this case
is based primarily on the intrinsic record and that the parties’ proffered
expert testimony is neither needed nor helpful in assisting our claim
construction efforts. Thus, we accord Dr. Rancourt’s challenged testimony
little or no weight, but otherwise, DENY Edmund’s motion to exclude the
paragraph 36, 37 declaration testimony.
V. SEMROCK’S CONTINGENT MOTION TO AMEND
Semrock moved to amend claim contingent upon a finding of
unpatentability of claim 1. Paper 19, 1. Inasmuch as we find that Edmund
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has failed to establish that claim 1 is unpatentable, we do not reach
Semrock’s Contingent Motion to Amend.
VI. EDMUND’S OBJECTION TO THE SCOPE OF
SEMROCK’S REPLY TO PETITIONER’S OPPOSITION TO
PATENT OWNER’S CONTINGENT MOTION TO AMEND
Inasmuch as we do not reach Semrock’s Contingent Motion to
Amend, we DISMISS Edmund’s Objection to the scope of Semrock’s Reply
to Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend
as MOOT.

VII. ORDER
In view of the foregoing, it is ORDERED that Claim 1 of US Patent
7,119,430 C1 has not been shown to be unpatentable as anticipated by the
Starke. This is a Final Written Decision under 35 U.S.C. § 318(a). Parties
to the proceeding seeking judicial review of the decision must comply with
the notice and service requirements of 37 C.F.R. § 90.2.

IPR2014-00583
Patent 7,068,430 C1

21
For Petitioner:

Lynn E. Rzonca
Daniel A. Nadel
John Chionchio
BALLARD SPAHR LLP
rzoncal@ballardspahr.com
nadeld@ballardspahr.com
chionchioj@ballardspahr.com

For Patent Owner:

James Boyle
Anthony Lombardi
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, LLP
james.boyle@finnegan.com
anthony.lombardi@finnegan.com