Edmund Optics, Inc.v.Semrock, Inc.

Patent Trial and Appeal Board

Sep 16, 2015

11151728 (P.T.A.B. Sep. 16, 2015)

Trials@uspto.gov Paper 72
571-272-7822 Entered: September 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

EDMUND OPTICS, INC.,
Petitioner,

v.

SEMROCK, INC.,
Patent Owner.

____________

Case IPR2014-00599
Patent 7,119,960 C1
__________

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

CAPP, Administrative Patent Judge.

Opinion concurring-in-part and dissenting-in-part filed by WARD,
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 Corrected Petition (Paper 5,
“Pet.”). requesting inter partes review of claims 33–36, 39–41, 44, and 45
of U.S. Patent No. 7,119,960 C1 (Ex. 1001, the “’960 patent”).1 We
instituted an inter partes review of claims 33–36, 39–41, 44, and 45, of the
’960 patent. Paper 9. After institution of trial, Semrock, Inc. (“Semrock”)
filed a Patent Owner’s Response (Paper 20, “PO Resp.”) and Edmund filed a
Reply (Paper 27, “Reply”). This case is before the Board for a Final Written
Decision following an Oral Hearing conducted May 21, 2015, the transcript
for which is entered as Paper 70 (“Tr.”).2
Also before the Board are the following matters:
1. Semrock’s Contingent Motion to Amend [Papers 21, 28, and 32];
2. Edmund’s Motion to Exclude Evidence [Papers 51, 59, and 63];
3. Semrock’s Motion to Exclude Evidence [Papers 46, 52, 58, and
64]; and
4. Edmund’s Objection to the scope of Semrock’s Reply to
Petitioner’s Opposition to Patent Owner’s Contingent Motion to Amend
[Paper 32, 40].
After considering the evidence and arguments of counsel and for the
reasons set forth below, we determine that Edmund has NOT met its burden

1 The ’960 Patent is the subject of litigation captioned Semrock, Inc., v.
Edmund Optics, Inc., 13-cv-06265-DGL-JWF, currently pending in the
United States District Court for the Western District of New York.
2 After the oral hearing, we requested post-hearing briefing from the parties
regarding the burden of proof applicable to establishing enablement of non-
patent, printed publication prior art references in an inter partes review
proceeding. Paper 67. In response thereto, Semrock and Edmund each filed
post-hearing briefs on said issue. Papers 68, 69.
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of showing, by a preponderance of the evidence, that claims 33–36, 39–41,
44, and 45 of the ’960 patent are unpatentable.
I. BACKGROUND
A. The ’960 patent (Ex. 1001)
The ’960 patent, titled Method of Making High Performance Optical
Edge And Laser-Line Filters And Resulting Products, is a continuation-in-
part of U.S. 7,068,430 C1 (the ’430 patent).3 Whereas the ’430 patent is
directed to disclosing and claiming improved edge filters, the ’960 patent
adds new matter to the disclosure of the ’430 patent directed to improved
multi-layer, thin-film, laser-line filters. Ex. 1001, claim 33. The filters have
a transparent substrate such as glass with opposing, flat, parallel, planar
sides. Id. at 17:46–52. The substrate supports a plurality of layers
comprising alternating layers of materials having either: (1) a relatively high
refractive index; or (2) a relatively low refractive index, respectively. Id.
The specification has separate sections directed to: (A) an Apparatus
for Making Optical Edge and Laser-Line Filters (8:39–10:2); (B) Methods of
Making the Improved Edge Filters and Laser-Line Filters (10:3–17:44);
(C) The Improved Filters (17:46–18:28); and (D) Applications of the Filters
(21:24–60). The specification includes six examples. Ex. 1001, 18:28–
20:15. The first two examples are directed to edge filters and the final four
examples are directed to laser-line filters. The ’960 patent has claims
directed to: (1) a method of manufacture of filters (e.g., claims 1, 12, 30);

3 The ’430 patent is the challenged patent in IPR2014-00583, between the
same parties. A copy of the ’430 patent is of record in that inter partes
review proceeding as Exhibit 1001.
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(2) an optical analysis system (e.g., claims 7, 20, 25); and (3) laser-line
filters (e.g., claims 24, 32, 33).
The apparatus disclosed in Section A of the specification includes a
computer-controlled deposition system. Ex. 1001, 8:39–50. The apparatus
includes an ion beam sputtering deposition system that uses a beam assist
source for depositing hard coatings. Id. The apparatus also includes an
integral optical monitoring system to monitor deposition of the optical
coating materials. Id. A data processor, responsive to signals from the
monitoring system, processes these signals and uses them to control the
deposition process. Id. 9:64–10:2.
The method of making the laser-line filters disclosed in Section B of
the specification includes using a data processor to instruct the apparatus
when to stop depositing each layer of the filter. Id. 10:3–11. Disclosed
laser-line filter embodiments are based on a single-substrate, with hard
coatings on one or both sides of the substrate. Id. at 16:30–35. The laser-
line filters are based on a multi-cavity Fabry-Perot type coatings to define
the pass-band and blocking section near the passband. Id. at 16:35–37.
The “Improved Filters” disclosed in Section C of the specification
have the general structure schematically illustrated in Fig. 3B, reproduced
below. Id. at 17:45–48.
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Figure 3B, shown above, is a schematic drawing illustrating the structure of
a conventional laser-line filter. Id. at 7:66–67. The filter includes bandpass
section 301 that comprises a sequence of dielectric layers forming a
sequence of Fabry-Perot cavities combined with coupling layer spacers
between them. Id. 6:11–37. Each Fabry-Perot cavity comprises alternating
layers of high index material 303 and low index material 304. Id. 6:34–35.
Most layers have a thickness of one quarter wavelength at the passband
center wavelength. Id. 6:16–17. When such quarter-wave stacks are
coupled to one another with an intervening half-wavelength cavity layer 305
of high or low index material, a Fabry-Perot cavity is formed and a narrow,
high transmission passband is opened in the center of the stopband region.
Id. 6:17–24.
When multiple Fabry-Perot cavities are combined with coupling
layers between them, the narrow passband region achieves a more
rectangular passband shape, with steeper edges and a wider, flatter region of
high transmission. Id. 6:24–28. The specification states that the improved
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laser-line filters made by the disclosed processes exhibit increased
transmission, steepness, and blocking in the vicinity of the passband over
prior art laser-line filters. Id. 18:24–27.
B. Illustrative Claim
Edmund challenges claims 33–36, 39–41, 44, and 45, all of which are
directed to multi-layer, thin-film, laser-line filters. Claim 33, reproduced
below, is an independent claim:
33. A multi-layer, thin-film laser-line filter exhibiting a
transmission of greater than 90%, a full-width at half-maximum
passband of at least 0.0031 λc, and a blocking of optical density
greater than 5 for wavelengths from 1.01λc to 1.1λc and from
0.92λc to 0.99λc, wherein λc is a wavelength in nm of a laser
directed through the filter.
C. The Asserted Grounds of Unpatentability
Edmund challenges claims 33–36, 39–41, 44, and 45 of the
’960 patent based on the alleged grounds of unpatentability set forth in the
table below, as further supported by the Declaration of Professor Angus
Macleod4 (Ex. 1011) and the Declaration of Mr. Uwe Schallenberg (Ex.
1012).
Reference(s) Basis Claims challenged
Macleod (Ex. 1002)5 §102 33
Macleod §103 33–36, 39–41, 44, and 45

4 Professor Angus MacLeod (hereinafter “Professor MacLeod”) is the author
of the MacLeod Treatise (Ex. 1002).
5 H.A. Macleod, THIN-FILM OPTICAL FILTERS (Taylor & Francis Group, 3rd
ed. 1986) (the “MacLeod Treatise”).
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II. CLAIM INTERPRETATION
In our Decision to Institute, we construed “thin-film, laser-line filter”
as broad enough to encompass both soft and hard coated filters. Paper 9, 7.
Semrock sought rehearing, arguing that the term should be limited to hard
coated filters. Paper 12. We denied Semrock’s request for rehearing,
reiterating our earlier decision that Semrock’s specification does not make
clear that the invention excludes soft coatings. Paper 16, 3.6
In its Patent Owner’s Response, Semrock maintains its earlier position
that claim 33 is limited to hard-coated filters. PO Resp. 28. Semrock argues
that the ’960 patent’s specification disavows filters that are fabricated from
soft-coated materials. Id. Semrock argues that its disavowal requires that
the challenged claims be limited to “hard coated” thin-film laser-line filters.
Id.
In its Preliminary Response and Patent Owner’s Response, Semrock
directs our attention to selected passages of the specification indicating that
the inventive filters are made with hard coatings.
The filters thus provide performance exceeding that of the
highest performing conventional soft-coating filters with a more
robust and durable hard-coated structure.
Ex. 1001, 18:15–18; Paper 7, 9.
The [laser-line] filters according to this embodiment are based
on a single-substrate approach, with hard coatings on one or
both sides of the substrate. The filters are based on a multi-
cavity Fabry-Perot type coating to define the passband and
blocking section near the passband. Furthermore, additional
blocking at wavelengths further away from the passband may
be provided by one or more additional, strictly dielectric,

6 Neither party sought construction of any additional terms in their
respective Patent Owner’s Response and Petitioner’s Reply.
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coatings, where, advantageously, no metals are used. These
one or more additional coatings are referred to herein as
“extended blocking layers.”
Ex. 1001, 16:33–42. Paper 7, 9–10. Semrock also directs our attention to
Table 2 from column 20 of the specification which is described as providing
a summary of the performance characteristics of the inventive laser-line
filters. Paper 7, 10; PO Resp. 29; Ex. 1001, 20:45–46. Table 2 recites a
temperature dependence of <5 ppm/o C and <0.003 nm/o C at 532 nm.
Ex. 1001, 20:63–64.
Semrock argues that known properties of Cryolite and zinc sulfide
(“ZnS”) (soft-coating materials) do not satisfy the performance criteria of
Table 2. Paper 7, 9–10. Semrock directs our attention to a passage in
Edmund’s primary prior art reference, the MacLeod Treatise, as reciting
coefficients of optical thickness as a function of temperature for ZnS soft
coatings . Paper 7, 11, citing Ex. 1002, 344. Semrock argues that
MacLeod’s recited coefficients of optical thickness as a function of
temperature equate to a temperature dependence of greater than 30 ppm/o C
for ZnS coatings. PO Resp. 11. Semrock further argues that the
specification explains that the performance data in Table 2 applies to all
known manufactured and/or theoretically calculated laser-line filters
associated with disclosed embodiments of the invention. PO Resp. 29.
Semrock faults Edmund for failing to provide a proposed construction
or an underlying analysis on the hard versus soft coating clam construction
issue in its Petition. Paper 7, 11. Semrock argues that Edmund’s Petition
fails to identify properly how the challenged claims are to be construed, in
contravention of 37 C.F.R. § 42.104(b)(3). Paper 7, 12. In view of this lack
of a proposed construction, Semrock also argues that Edmund’s Petition fails
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to identify the relevance of its evidence, in contravention of 37 C.F.R.
§ 42.104(b)(5). Paper 7, 12.
Semrock is correct that Edmund’s Petition provides no express
underlying analysis to support a construction of “multi-layer, thin-film laser-
line filter” that is broad enough to encompass soft-coated filters. Instead,
Edmund’s Petition merely states that the terms in claim 33 of the ’960 patent
do not require construction and should be afforded their ordinary and
customary meaning. Pet. 5. This is acceptable practice for purposes of
filing an IPR Petition. See Office Patent Trial Practice Guide, 77 Fed.
48756, 48764 (Aug. 14, 2012).7
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 (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. See id.; Phillips
v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The Federal
Circuit admonishes us that even under the broadest reasonable interpretation,
the Board’s construction cannot be divorced from the specification and the
record evidence. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292,
1298 (Fed. Cir. 2015). Rather, “claims should always be read in light of the

7 “Regarding the need for a claim construction, where appropriate, it may be
sufficient for a party to provide a simple statement that the claim terms are
to be given their broadest reasonable interpretation, as understood by one of
ordinary skill in the art and consistent with the disclosure.” Id.
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specification and teachings in the underlying patent.” Id. Thus, a
construction that is unreasonably broad and does not reasonably reflect the
plain language and disclosure will not pass muster. See id.
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 33 is
directed to a “multi-layer, thin-film laser-line filter.” Ex 1001. The claim
limitations all are directed to optical performance parameters. There is no
mention of either “hard” or “soft” coatings in the claim itself. Indeed, there
are no structural limitations of any kind recited in the claim other than the
recital of a “multi-layer, thin-film laser-line filter” in the preamble.
Ex. 1001.
The specification acknowledges that two basic types of thin-film edge
filters and thin-film laser-line filters exist: those based on “soft coatings”
and those based on “hard coatings.”
Two basic types of thin-film edge filters and thin-film laser-line
filters exist: those based on ‘soft coatings’ and those based on
‘hard coatings,’ both of which are typically manufactured by an
evaporation technique (either thermal evaporation or electron-
beam evaporation).
Ex. 1001, 4:28–34. In view of the foregoing, the ordinary and customary
meaning of thin-film, laser-line filter is not limited to filters with a hard
coating.
Nevertheless, Semrock argues that the specification alters the ordinary
and customary meaning of the term to filters with only hard coatings through
claim scope disavowal in the specification. PO Resp. 30. Semrock relies on
the case of SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems,
Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001), for the proposition that where
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the specification makes clear that the invention does not include a particular
feature, that feature is deemed to be outside of the reach of the claims. PO
Resp. 28.
There are two exceptions to the general rule that patent claims are
given their ordinary and customary meaning to one of skill in the art when
read in the context of the specification and prosecution history: (1) when a
patentee sets out a definition and acts as his own lexicographer, or (2) when
the patentee disavows the full scope of the claim term either in the
specification or during prosecution. See Hill-Rom Services, Inc., v. Stryker
Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). In the instant case, Semrock
has not brought any language from the specification to our attention where
Semrock purported to be its own lexicographer and defined “multi-layer,
thin-film, laser-line filter” in a manner that excludes soft coatings, nor has
Semrock provided any arguments regarding disavowal during prosecution.
This brings us to the question of whether Semrock disavowed claim
scope in the specification. Semrock contends that a disclaimer applies when
the patentee makes statements such as “the present invention is . . .” or “this
invention . . .” in the specification. PO Resp. 28–29, citing Netcraft Corp. v.
eBay, Inc., 549 F.3d 1394, 1397–98 (Fed. Cir. 2008). However, “claims
will not be read restrictively unless the patentee has demonstrated a clear
intention to limit the claim scope using words of expressions of manifest
exclusion or restriction.” Martek Biosciences Corp. v. Nutrinova, Inc., 579
F.3d 1363, 1381 (Fed. Cir. 2009). We note that Semrock’s cited authority,
Netcraft, supra, qualified its holding by stating that use of the phrase “the
present invention” does not automatically limit the meaning of claim terms
in all circumstances, and that such language must be read in the context of
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the entire specification and prosecution history. See Netcraft, 549 F.3d at
1398.
In the instant case, the specification indicates that the invention has
four aspects, each of which is discussed in a separate section: A) apparatus
programmed to make improved optical edge and laser-line filters; B) the
method of making the improved filters; C) the improved filters made by the
method; and D) applications of the improved filters. Ex. 1001, 8:33–37.
In section A, which is related to an Apparatus for Making Optical
Edge and Laser-Line Filters in Accordance with an Embodiment of the
Invention, optical edge filers and laser-line filters of the invention are made
using a computer-controlled deposition system with an integral optical
monitoring system to monitor deposition. Ex. 1001, 9:21–46. The disclosed
deposition apparatus is an ion beam sputtering deposition system. Ex. 1001,
8:44. The specification indicates that hard coating filters, in contrast with
soft coating filters, may be manufactured by non-evaporation techniques
such as ion-beam sputtering. Ex. 1001, 4:33–35. On the other hand, the
specification explains that both soft and hard coating laser line filters can be
manufactured by evaporation techniques, such as thermal evaporation or
electron-beam evaporation. Id. at 4:28:28–32. Semrock’s proposed
construction does not distinguish between hard coated filters made by ion-
beam sputtering deposition processes and hard coated filters made by prior
art evaporation deposition processes.
In section B, which is related to Methods of Making the Improved
Edge Filters and Laser-Line Filters, the specification discloses the manner in
which the data processor 414 controls the apparatus 400 via the deposition
control system 408. Id. 10:5–17:28. The data processor 414 is programmed
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to instruct the apparatus 400 when to stop depositing each layer of the filter
being manufactured. Id. 10:9–11. Section B also discloses that the process
of making a laser-line filter according to an embodiment of the invention is
based on a single-substrate approach with “hard coatings on one or both
sides of the substrate.” Ex. 1001, 16:33–35. This section of the
specification discloses a plurality of embodiments, however, the differences
among the various embodiments are directed to features other than whether
coating materials are hard or soft. Id. at 16:30–17:28.
In section C, which is related to The Improved Filters, the
specification discloses that filters of the invention provide performance
exceeding that of the highest performing conventional soft-coating filters
with a more robust and durable hard-coated structure. Ex. 1001, 18:15–18.
The specification further discloses that the improved laser-line filters “made
by the processes disclosed herein” exhibit increased transmission, steepness,
and blocking over prior art laser-line filters. Id. at 18:19–28. The only
processes disclosed in the specification involve ion beam sputtering, a
process that is used only with hard coating materials. Id. 4:28–34.
The specification discloses four examples of laser-line filters.
Ex. 1001, 19:18–20:3. The coating structures for the recited examples are
given in Appendices C and D. Id. Appendices C and D recite alternating
layers of Nb2O5 and SiO2. Id. The specification describes these as hard
oxide coating materials. Ex. 1001, 17:53–55.
In describing the performance of filters of the ’960 patent, the
specification states that the inventive edge filters are made “exclusively”
with hard oxide materials, which is contrasted with soft-coated filters.
Ex. 1001, 38–44. The specification, however, makes no corresponding
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express disclaimer that the inventive laser-line filters are made “exclusively”
with hard coating materials.
After considering claim 33 in view of the specification, as a whole, we
are not persuaded that the intrinsic record requires a departure from the plain
and ordinary meaning of “multi-layer, thin-film, laser-line filters.” The
standard for finding claim scope disavowal is exacting. See GE Lighting
Solutions, LLC v. Agilight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). It is
not enough that the only embodiments, or all of the embodiments, contain a
particular limitation. See Thorner v. Sony Computer Entm’t Am. LLC, 669
F.3d 1362, 1366 (Fed. Cir. 2012). Mere criticism of a particular
embodiment encompassed in the plain meaning of a claim term is not
sufficient to rise to the level of clear disavowal. See Epistar Corp. v. Int’l
Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009). Furthermore, even
where a particular structure makes it “particularly difficult” to obtain certain
benefits of the claimed invention, this does not rise to the level of disavowal
of the structure. See Spine Solutions, Inc. v. Medtronic Sofamor Danek USA,
Inc., 620 F.3d 1305, 1315 (Fed. Cir. 2010).
It is the claims that define the metes and bounds of the patentee’s
invention. See Phillips, 415 F.3d at 1313. Thus, the patentee is free to
choose a broad term and expect to obtain the full scope of its plain and
ordinary meaning unless the patentee explicitly redefines the term or
disavows its full scope. See Thorner, 669 F.3d at 1366. Each claim does not
need to cover every feature disclosed in a specification. See Ventana Med.
Sys., Inc. v. Biogenex Labs, Inc., 473 F.3d 1173, 1182 (Fed. Cir. 2006).
When a claim addresses only some of the features disclosed in the
specification, it is improper to limit the claim to other, unclaimed features.
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See id. We do not read limitations from the specification into claims and we
do not redefine terms. See Thorner, 669 F.3d at 1367.
In the instant case, there is good reason to reject Semrock’s arguments
for claim scope disavowal. Semrock’s proposed construction narrowly
targets only one aspect of the specification disclosure, namely, hard coating
materials. The specification, however, describes the invention as a
combination of using: (1) hard coating materials; (2) an ion beam sputtering
deposition system; and (3) an optically monitored, computer controlled,
deposition system. Ex. 1001, 8:41–50. The specification acknowledges that
hard coating materials were known in the prior art, yet Semrock argues that
its disavowal of claim scope relates only to using hard coating materials,
without regard to the ion-beam sputtering and optically monitored, computer
controlled, deposition aspects of the invention. Id. at 4:28–34.
In the instant case, all of the recited limitations in claim 33 are
performance criteria. No structure is claimed. This is a strong indication
that Semrock originally intended a broad claim scope so that the claim
covered any multi-layer, thin film, laser-line filter that exhibited the recited
performance characteristics.8 Semrock could have limited the scope of the
claim by reciting structural limitations, but chose not to. Semrock cannot

8 An inter partes review proceeding is limited to grounds of unpatentability
that can be raised under 35 U.S.C. § 102 or 103 and only based on prior art
patents and printed publications. 35 U.S.C. § 311(b). Thus, we do not reach
the issue of whether claim 33 constitutes a “single means claim” that is
subject to a patentability challenge under 35 U.S.C. § 112. See In re Hyatt,
708 F.2d 712, 714–715 (Fed. Cir. 1983) (a single means claim, which
covered every conceivable means for achieving the stated purpose, was held
nonenabling for the scope of the claim because the specification disclosed at
most only those means known to the inventor).
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now, through claim construction, rewrite its patent claims to suit its needs in
this litigation. See Nike, Inc. v. Wolverine World Wide, Inc., 42 F.3d 644,
647 (Fed. Cir. 1994). In view of the foregoing, we maintain our earlier
construction and reiterate that “multi-layer, thin-film, laser-line filters” in
claim 33 are not limited to hard-coated filters.
III. ANTICIPATION BY MACLEOD
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 33, Edmund bears the burden of
proving anticipation by a preponderance of the evidence. See 35 U.S.C.
§ 316(e).
Whether a patent is invalid as anticipated is a two-step inquiry. See
Power Mosfet Tech., LLC. v. Siemens AG, 378 F.3d 1396, 1406 (Fed. Cir.
2004). The first step requires construction of the claims. Id. The second
step in the analysis requires a comparison of the properly construed claim to
the prior art. Id.
A. The MacLeod Treatise (Ex. 1002)
Edmund relies on the MacLeod Treatise (Ex. 1002) as anticipating
claim 33. Pet. 17–28. Edmund furnishes a claim chart that purports to read
all of the limitations of claim 33 onto excerpts from the MacLeod Treatise.
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Id. at 17–19. Edmund supports its case with declaration testimony from its
expert, Professor MacLeod, author of the MacLeod Treatise. Id. at 22;
Ex. 1011.
The MacLeod Treatise is a lengthy textbook. Ex. 1002.9 Edmund
submitted a 184 page excerpt from the treatise in support of its Petition,
including Chapter 6 titled “Edge Filters,” Chapter 7 titled “Band-pass
Filters,” and Chapter 8, titled “Tilted Coatings.” Id.10 The Petition cites to
pages 310–13 in Chapter 7 and sub-chapters 8.1 (pages 348–49) and 8.4
(pages 368–77) in its claim chart. Pet. 17–19.11
Pages 310–13 of the MacLeod Treatise describe an exemplary filter
design whose theoretical performance is shown in Figure 7.26. Ex. 1002,
310–13. In mapping the elements of claim 33, Edmund relies on this filter
design, which uses materials with indices of refraction of 2.35 for H and
1.35 for L. Pet. 20–22. According to Edmund’s expert, Professor MacLeod,
the exemplary filter shown in Figure 7.26 is comprised of layers of Cryolite
and ZnS. Ex. 1011 ¶ 42.

9 Edmund describes the MacLeod Treatise as a “standard text book.”
Pet. 20.
10 Edmund submitted an additional excerpt of the MacLeod Treatise in
support of its Petitioner’s Reply. Reply 3, Ex. 1032.
11 Edmund’s Petition fails to explain or articulate the relevance of sub-
chapters 8.1 and/or 8.4 to the issues in this IPR proceeding. Accordingly,
we assign these sub-chapters no weight in our decision. See 37 C.F.R.
§ 42.104(b)(5) (the Board may give no weight to evidence where a Petitioner
has failed to state its relevance or identify specific portions of the evidence
that support a challenge).
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B. Enablement of the MacLeod Treatise
Semrock does not challenge Edmund’s position that the design of
Fig. 7.26 of the MacLeod Treatise is a soft-coated, multi-layer, thin-film,
laser line filter that, at least in theory, nominally appears to exhibit the
performance parameters recited in claim 33. Semrock disputes Edmund’s
case based on two arguments. First, Semrock argues that claim 33 is limited
to hard-coated filters, a position that we have previously rejected for reasons
discussed above in the claim construction section of this decision. Second,
Semrock argues that the MacLeod Treatise example does not enable the
invention of claim 33. PO Resp. 21, 19–22. “To serve as an anticipating
reference, the reference must enable that which it is asserted to anticipate.”
Elan Pharms., Inc. v. Mayo Found., 346 F.3d 1051, 1054 (Fed. Cir. 2003).
Semrock asserts that the example published in the MacLeod Treatise
assumes ideal conditions where there is no transmission loss. PO Resp. 1.
Semrock characterizes the transmittance curve in Figure 7.26 as merely
“theoretical” and “hypothetical.” PO Resp. 4, 14, 16, and 21. Semrock
contends that claim 33, in contrast, recites the performance parameters of an
actual filter. PO Resp. 2.
Semrock argues that the hypothetical/theoretical filter design
disclosed in the MacLeod Treatise is not properly compared to the
real/actual filters disclosed and claimed in the ’960 patent. PO Resp. 1.
Semrock argues that a person of ordinary skill in the art understands that an
actual optical filter, as opposed to a hypothetical filter design, experiences
less than 100 percent transmission. PO Resp. 4–5. Semrock’s expert, Dr.
Rancourt, testifies that a person of ordinary skill in the art understands that
an actual multi-cavity filter based on ZnS and Cryolite would not achieve
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the “lossless” transmission performance promised by theory. Ex. 2004 ¶ 85.
Dr. Rancourt identifies a variety of sources of transmission loss, including
losses attributable to: absorption (¶¶ 55, 57, 71, 90); scattering (¶¶ 55, 56,
87–90), and manufacturing tolerances (¶¶ 94–111). As an example of
transmission losses experienced in an actual filter, Dr. Rancourt cites to a
MacLeod-Richmond publication. Ex. 2004 ¶¶ 79–84; Ex. 2007.12 Dr.
Rancourt describes Exhibit 2007 as disclosing an example of a “real” ZnS
and Cryolite filter that exhibited a transmittance of less than 90 percent, but
whose design suggested a theoretical transmission of greater than 90 percent.
Ex. 2004, ¶¶ 79–83.
The parties engage in a vigorous dispute over the amount of
transmission loss that would be experienced in manufacturing a real
ZnS/Cryolite filter from the hypothetical filter design of Figure 7.26.
Edmund contends that the resulting transmission loss would be less than
10% and, therefore, a real filter manufactured in accordance with the
hypothetical ZnS/Cryolite soft filter design of Figure 7.26 of the MacLeod
Treatise would be expected to achieve a transmission of 90 percent or
greater and, thus, within the scope of the transmission limitation of claim 33.
Reply 1–8. Edmund supports its position with testimony from Professor
MacLeod. Id. Professor MacLeod relies on a number of items of scientific
literature to support his conclusion as to the amount of transmission loss that
would be experienced in an actual filter. Ex. 1029 ¶¶ 15–27.13 Essentially,

12 H.A. MacLeod & D. Richmond, Moisture Penetration Patterns in Thin
Films, THIN SOLID FILMS, 37 (1976), 163–169. Ex. 2007.
13 Professor MacLeod relies on Ahrens II (Ex. 1024), Czyzak (Ex. 1030),
MacLeod Treatise (Ex. 1002), Tien (Ex. 1031), and Al-Douri (Ex. 2009).
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Edmund’s arguments and evidence do not deny that some loss occurs when
considering an actual filter versus a theoretical design, Edmund merely
advocates that any such loss would nevertheless allow an actual
ZnS/Cryolite filter to achieve a performance of greater than 90 percent
transmission as required by claim 33. Reply 8.
Semrock presents testimony from Dr. Rancourt that disputes the
reliability of Professor MacLeod’s testimony and supporting publications.
See Ex. 2031 ¶¶ 25–55 (suggesting that Professor MacLeod is misled by a
typographical error). Dr. Rancourt relies on different scientific publications
than those relied by Professor MacLeod to conclude that real (as opposed to
theoretical) ZnS/Cryolite filters are not capable of achieving a transmission
of 90 percent. Ex. 2004 ¶¶ 58–70.14
C. Presumption of Enablement
Semrock and Edmund disagree as to which party has the burden of
proof to establish whether the MacLeod Treatise enables the invention of
claim 33. In the first instance, the parties disagree as to whether the
MacLeod Treatise is entitled to a presumption of enablement.
Semrock argues that a presumption of enablement should not apply in
inter partes review proceedings due to the nature of the proceedings. PO
Resp. 1–3. Semrock argues that inter partes review proceedings are
different from both patent prosecution and district court litigation in that a

Id. Professor MacLeod also criticizes the Siqueiros reference (Ex. 2006)
relied on by Dr. Rancourt as unreliable. Id.
14 Dr. Rancourt relies on Pulker I (Ex. 2011), Pulker II (Ex. 2012), Gibson
(Ex. 2010), Kersten (Ex. 2013), Ahrens (Ex. 2008), MacLeod-Richmond
(Ex. 2007)
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Petitioner is required to identify “in writing and with particularity” the
grounds on which a claim is challenged. Id.; 35 U.S.C. § 312(a)(3).
The MacLeod Treatise is a non-patent, printed publication. Edmund
relies on In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012),
for the proposition that a non-patent, printed publication is presumptively
enabled for purposes of an anticipation analysis. Paper 69, 1. Semrock
distinguishes Antor Media as being restricted to the context of patent
prosecution. Paper 68, 3. The Court, in Antor Media, explained the
underlying rationale for permitting a presumption of enablement during
patent prosecution.
[A]n examiner, who has no access to experts or laboratories, is
not in a position to test each piece of prior art for enablement in
citing it, and requiring him to do so would be onerous, if not
impossible. An examiner, therefore, is not required to
anticipate every possible response to a rejection, including
showing that a cited reference is enabling.
Consistent with the statutory frame-work and our precedent, we
therefore hold that, during patent prosecution, an examiner is
entitled to reject claims as anticipated by a prior art publication
or patent without conducting an inquiry into whether or not that
prior art reference is enabling. As long as an examiner makes a
proper prima facie case of anticipation by giving adequate
notice under § 132, the burden shifts to the applicant to submit
rebuttal evidence of nonenablement.
Antor Media, 689 F.3d at 1289.
In the case of Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
1313 (Fed. Cir. 2003), the Federal Circuit held that an accused infringer
should be entitled to have a district court presume the enablement of
unclaimed material in a prior art patent asserted against a patentee. Id. at
1355. In dicta, the Amgen Court stated that its reasoning “might” also apply
to prior art printed publications.
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We note that by logical extension, our reasoning here might
also apply to prior art printed publications as well, but as
Sugimoto is a patent we need not and do not so decide today.
See id. (emphasis added). Thus, the Amgen Court did not reach that issue in
its decision. See id. District Courts are split on this issue. We note that at
least one district court decision has held that a district court should presume
that a prior art printed publication is enabled. See Robocast, Inc. v. Apple
Inc., 39 F. Supp. 3d 552, 565 (D. Del. 2014). Other district courts maintain
otherwise. See e.g., CA, Inc. v. Simple.com., Inc., 780 F. Supp. 2d 196, 250
(E.D.N.Y. 2009); Matsushita Elec. Indus. Co. v. Samsung Electronics Co.,
2006 WL 1794768, *5 (D.N.J. June 26, 2006).
For the reasons discussed more fully below, we find that Semrock has
presented evidence of non-enablement that is sufficient to rebut a
presumption of enablement, if indeed there is one. Consequently, for
purposes of this decision, we need not decide and do not reach the issue of
whether a non-patent, printed publication is entitled to a presumption of
enablement in an IPR proceeding.
D. Extrinsic Evidence of Enablement
As noted previously, even if a Petitioner is entitled to a presumption
that a non-patent, printed publication is enabled, we find that Semrock’s
Patent Owner Response presents sufficient testimonial and documentary
evidence through Dr. Rancourt to rebut a presumption that the MacLeod
Treatise enables the invention of claim 33. Ex. 2004, ¶¶ 55–57, 71, 79–85,
87–90, 94–111). Thus, any such presumption essentially vanishes. See
Fed. R. Evid. 301; St Mary’s Honor Center v. Hicks, 509 U.S. 502, 508
(1993) (presumption drops from the case); Aukerman Co. v. R.L. Chaides
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Constr. Co., 960 F.2d 1020, 1037 (Fed. Cir.1992) (presumption completely
vanishes upon the introduction of evidence sufficient to support a finding of
the nonexistence of the presumed fact)
Semrock argues that, where a Patent Owner presents sufficient
evidence to show that a reference is not enabled, a Petitioner is precluded
from offering additional extrinsic evidence to overcome the Patent Owner’s
showing. Paper 68, 6. Semrock argues that Amgen stands for the
proposition that a court should exclude prior art from an anticipation inquiry
if the patentee presents persuasive evidence of non-enablement. PO Resp. 7,
citing Amgen, 314 F.3d at 1355.
If a patentee presents evidence of nonenablement that a trial
court finds persuasive, the trial court must then exclude that
particular prior art patent in any anticipation inquiry, for then
the presumption has been overcome.
Id. Semrock interprets Amgen as maintaining that a patent challenger is not
permitted to present evidence of enablement to overcome a patentee’s
evidence of non-enablement. Id. Thus, according to Semrock, the only
party that is permitted to introduce extrinsic evidence on the issue on
enablement of a prior art anticipation reference is the Patent Owner.15
Edmund argues that a patent challenger may rely on extrinsic
evidence to establish that a prior art, non-patent, printed publication enables
a claimed invention. In support thereof, Edmund relies on, among other

15 Semrock filed a Motion to Exclude Evidence. Paper 52. However, in its
motion to exclude, Semrock did not rely on the evidentiary exclusion theory
articulated in its post-hearing brief on non-enablement to exclude Edmund’s
extrinsic evidence of enablement, both testimonial and documentary,
submitted with Edmund’s Petitioner’s Reply. Paper 68.
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things, the case of Bristol-Meyers Squibb Co. v. Ben Venue Labs., 246 F.3d
1368, 1379 (Fed. Cir. 2001).
To be enabling, a prior art reference must sufficiently describe a
claimed invention to have placed the public in possession of that invention.
In re Elsner, 381 F.3d 1125, 1128 (Fed. Cir. 2004).
The proper test of a publication as a § 102(b) bar is “whether
one skilled in the art to which the invention pertains could take
the description of the invention in the printed publication and
combine it with his own knowledge of the particular art and
from this combination be put in possession of the invention on
which a patent is sought.”
Id. quoting In re LeGrice, 301 F.2d 929, 939 (1962). The disclosure must be
sufficient that a person of ordinary skill in the art can make the claimed
invention without undue experimentation. See id. “The factors relevant to
whether experimentation is undue are discussed in, e.g., In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988).” Sanofi-Sytnelabo v. Apotex, Inc., 50 F.3d
1075, 1085 (Fed. Cir. 2008).
Every patent application and reference relies to some extent upon the
knowledge of persons skilled in the art to complement that disclosed in order
that it be “enabling” within the meaning of § 112 and to satisfy the
requirements of a reference under § 102. See In re Wiggins, 488 F.2d 538,
543 (CCPA 1973). A court may consider a secondary reference to show that
a primary reference is, in fact, enabled. See Elsner, 381 F.3d at 1129; In re
Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985); In re Samour, 571 F.2d 559,
562 (CCPA 1978).
An IPR differs somewhat from District Court litigation in that, in
District Court, a patent challenger is afforded discovery of the Patent
Owner’s case before presenting its case at trial. In an IPR, however, a
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Petitioner essentially presents its case-in-chief in its Petition, prior to
institution of a trial and generally prior to any meaningful discovery by
either party. The procedural differences between district court litigation and
IPR proceedings raises the question, if extrinsic evidence such as secondary
references or expert testimony is needed to show enablement of a primary
reference, whether such evidence must be presented with the Petition or
whether Petitioner may present such evidence at a later time in the
proceedings, such as in its Reply to the Patent Owner’s Response after
institution of a trial. See 37 C.F.R. § 42.23(b). In this regard, Semrock
argues that a Petitioner, in its Reply, cannot raise new issues, such as new
evidence necessary to make out a prima facie case for the unpatentability of
a claim. Paper 68, 7. Semrock contends that extrinsic evidence of
enablement presented in a Reply would constitute “new evidence.” Id.
Semrock contends that such evidence is prohibited from being presented in a
Petitioner’s Reply, unless the Petitioner can show that the new evidence
complies with the supplemental information rule of 37 C.F.R. § 42.123(b).
Id.
This argument is unpersuasive. In the case of Dynamic Drinkware,
LLC v. National Graphics, Inc., – F.3d –, 2015 WL 5166366, *5 (Fed.Cir.
Sept. 4, 2015). the parties disputed whether a prior art reference was entitled
to the filing date of its provisional application. The court held that the
Petitioner did not have the burden of providing evidence relating to the
provisional application until after the Patent Owner raised the issue. Id.
Thus, it was not necessary for the Petitioner to prove, at the time of filing its
Petition, that the reference was entitled to the filing date of its provisional
application. Id.
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Our Office Patent Trial Guide provides the following guidance on the
scope of a Petitioner’s Reply to a Patent Owner Response.
A reply may only respond to arguments raised in the
corresponding opposition. § 42.23. While replies can help
crystalize issues for decision, a reply that raises a new issue or
belatedly presents evidence will not be considered and may be
returned. The Board will not attempt to sort proper from
improper portions of the reply. Examples of indications that a
new issue has been raised in a reply include new evidence
necessary to make out a prima facie case for the . . .
unpatentability of an original . . . claim, and new evidence that
could have been presented in a prior filing.
77 Fed. Reg. 48,767 (Aug. 14, 2012). If a Patent Owner, in its Patent
Owner’s Response, presents evidence and argument that a reference on
which a grounds of unpatentability in an inter partes review Petition
depends does not enable the claimed invention, evidence submitted by the
Petitioner to rebut Patent Owner’s evidence and argument of non-
enablement falls within the permissible scope of a reply. This follows, in
part, from our determination, infra, that the ultimate burden of persuasion on
non-enablement of a prior art references belongs to the Patent Owner. Thus,
we will allow Edmund to rebut Semrock’s evidence of non-enablement with
extrinsic evidence submitted in connection with its Petitioner’s Reply.
Contrary to Semrock’s position, we interpret Amgen consistent with
our holding here. We interpret the Federal Circuit’s reference in Amgen to a
patentee presenting “evidence of nonenablement that a trial court finds
persuasive” as referring to evidence that is found to be persuasive after both
parties have had a full and fair opportunity to present competing evidence on
the issue. See Amgen, 314 F.3d at 1355. We do not interpret Amgen as
limiting the patent challenger to a mere evidentiary presumption
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unaccompanied by an opportunity to present extrinsic evidence in rebuttal to
the patentee’s case. This is all the more true in the case of non-patent,
printed publication prior art where the Federal Circuit has yet to recognize
expressly a presumption of enablement for non-patent, printed publication
prior art references outside of the context of patent prosecution. Moreover,
it is consistent with the larger body of case authority that considers
enablement evidence that is extrinsic to the primary reference. Elsner, 381
F.3d 1125; Donohue, 766 F.2d 531; Samour, 571 F.2d 559 .
E. Ultimate Burden of Persuasion
Having determined that Edmund is entitled to present extrinsic
evidence of enablement in an effort to rebut Semrock’s evidence of non-
enablement, we turn now to the question of whether Edmund or Semrock
bears the ultimate burden of persuasion as to enablement or non-enablement
of the MacLeod Treatise. Once again, the parties engage in a vigorous
dispute as to which party bears the burden of persuasion.
Semrock argues that Edmund bears the ultimate burden of persuasion.
Paper 68, 8. Semrock argues that, in an IPR, the Petitioner has the burden of
proving a “proposition of unpatentability by a preponderance of the
evidence.” Id., quoting 35 U.S.C. § 316(e). Semrock argues that such
burden requires a Petitioner to establish that a reference teach every element
of the claimed invention and is enabling. Paper 68, 8, citing Donohue, 766
F.2d at 533. We agree that Donohue stands for the proposition that an
anticipating prior art reference must teach every element of the claimed
invention and must be enabling. However, we do not read Donohue as
affirmatively placing the burden on a patent challenger to establish that a
reference is enabling. Donohue arose in the context of patent prosecution
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where, as we have previously discussed, a patent examiner is given the
benefit of a presumption that a prior art reference cited in an Office Action
rejection is enabled, in large part, due to the lack of resources available to an
examiner. See supra, at 21 (discussing and quoting passage of Antor Media,
689 F.3d at 1289).
Semrock also relies on district court case authority as supporting its
position. Paper 68, 9–10, citing Jacobs Vehicle Equip. Co. v. Pac. Diesel
Brake Co., 829 F. Supp. 2d 11, 19 (D. Conn. 2011); Forest Labs. Inc., v.
Ivax Pharm., Inc., 438 F. Supp. 2d 479, 487 n.3 (D. Del. 2006). Semrock
argues that “while a patentee may have the burden of going forward with
rebuttal evidence once the challenger has shown a prima facie case of
invalidity, the ultimate burden of invalidity remains with the challenger
throughout the litigation.” Paper 68, 9, quoting Abbott Labs v. Diamedix
Corp., 969 F. Supp. 1064, 1067 (N.D. Ill. 1997).
Edmund contends that Semrock, as the party challenging enablement
of the MacLeod Treatise, bears the ultimate burden of persuasion.
Paper 69, 8. Edmund argues that the following language from Amgen places
the burden of persuasion on the patentee.
[I]t was Amgen [the patentee] who bore the burden of proving
the nonenablement of Sugimoto before the district court. TKT
[the patent challenger] did not bear a burden of proving
enablement.
Paper 69, 9 (quoting Amgen, 314 F.3d at 1355).
Edmund articulates the correct position on this issue. In the case of
Impax Labs, Inc. v. Aventis Pharma, Inc., 545 F.3d 1312 (Fed. Cir. 2008),
the Federal Circuit explained that, in Amgen, it assigned error to a district
court that placed an affirmative burden of proving enablement of a prior art
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reference on the patent challenger. Id. at 1316. The Federal Circuit further
noted in Impax that the district court correctly placed the burden of proving
non-enablement on the patentee. See id.
In this case, we will follow the Federal Circuit’s decisions in Amgen
and Impax. After receiving competing evidence of enablement and non-
enablement from the respective parties, we place the ultimate burden of
persuasion on Semrock as the patentee.
F. Analysis of the Enablement Evidence
Analysis of enablement of an anticipation reference contemplates
consideration of whether undue experimentation would be required to
practice an invention. See, e.g., Elan Pharms, 346 F.3d at 1054 (the
reference must teach how to carry out the invention without undue
experimentation). The factors relevant to whether experimentation is undue
are discussed in, e.g., In re Wands, 858 F.2d 731; Cephalon, Inc. v. Watson
Pharma, Inc., 707 F.3d 1330, 1336 (Fed. Cir. 2013). These factors include:
(1) the quantity of experimentation necessary,
(2) the amount of direction or guidance presented,
(3) the presence or absence of working examples,
(4) the nature of the invention,
(5) the state of the prior art,
(6) the relative skill of those in the art,
(7) the predictability or unpredictability of the art, and
(8) the breadth of the claims.
Cephalon, 707 F.3d at 1336.
In the instant case, Semrock points out that Figure 7.26 of the
MacLeod Treatise merely shows a textbook, theoretical example that fails to
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take into account optical transmission losses that would occur in the making
of an actual filter. PO Resp. 2–17. Such losses include transmission losses
in ZnS layers resulting from absorption (Id. at 8), scattering (Id. at 9), and
manufacturing tolerances (Id. at 12).
Edmund does not deny the reality of absorption losses or that the
MacLeod Treatise fails to take absorption losses into account. Instead,
Edmund dismisses Semrock’s evidence on the amount of absorption loss as
exaggerated and maintains that the Figure 7.26 example of the MacLeod
Treatise would still exhibit more than 90 percent transmission under real, as
opposed to theoretical, conditions. Reply 2–4 (characterizing transmission
losses as “negligible”). Edmund presents calculated estimates of
transmission loss attributable to absorption and scattering prepared by
Professor MacLeod for purposes of this litigation and using, as an entering
argument, a value for the extinction coefficient of ZnS (“k”) derived from
Professor MacLeod’s review of scientific literature. Reply 7 (citing
Ex. 1029 ¶¶ 25–35). Finally, Edmund attacks Semrock’s position on the
amount of expected transmittance loss attributable to manufacturing
tolerances with additional theoretical calculations prepared by Professor
MacLeod for purposes of this litigation. Reply 11 (citing Ex. 1029 ¶¶ 41–
44). Edmund dismisses Semrock’s evidence on manufacturing losses as
“grossly over exaggerated.” Id.
In response to Semrock’s case on non-enablement of the MacLeod
Treatise, Edmund does not address the Wands factors. As to the first Wands
factor “quantity of experimentation necessary,” Edmund’s case assumes that
a person of ordinary skill in the art would experience no difficulty in making
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a ZnS/Cryolite laser-line filter using conventional, prior art fabrication
techniques without undertaking any experimentation.
With respect to the second Wands factor, “amount of guidance
provided in the reference,” Edmund does not direct us to any passage in the
MacLeod Treatise that purports to teach one how to actually make a filter
that exhibits the performance of Figure 7.26. Furthermore, although
Edmund relies on a plethora of secondary references for establishing a value
of the extinction co-efficient k of ZnS, Edmund does not direct our attention
to any teaching disclosure in its secondary references that would instruct a
person of ordinary skill in the art to make an actual ZnS/Cryolite laser-line
filter that exhibits 90 percent transmission. With respect to the seventh
Wands factor concerning the predictability or unpredictability of the
underlying science or technology, the evidence shows that the k value of
ZnS is derived experimentally and is subject to experimental error in its
determination, such that the k value of ZnS is not presently known to a
reasonable degree of scientific certainty.
This brings us to consideration of the third and fifth Wands factors:
(3) the presence or absence of working examples; and (5) the state of the
prior art. The evidence shows that ZnS/Cryolite soft-coated, laser-line filters
were known in the prior art. While the Figure 7.26 example in the MacLeod
Treatise may be a hypothetical example, Semrock’s specification concedes
that ZnS/Cryolite laser-line filters were known in the art and fabrication
techniques to make them were also known. Ex. 1001, 4:28–32 (“typically
manufactured by either thermal evaporation or electron-beam evaporation).
However, it is one thing to know how to make a ZnS/Cryolite laser-line
filter. It is another thing to make one that performs as claimed in claim 33.
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Altogether missing from Edmund’s case is evidence of a working
example of a ZnS/Cryolite laser line filter that actually achieves the
performance claimed in claim 33. Given the undisputed evidence that
ZnS/Cryolite laser-line filters were known in the prior art, if Edmund’s
theoretical calculations are correct, evidence of actual, working examples of
filters meeting the criteria of claim 33 presumably would be available.
Instead, Edmund’s evidentiary presentation at trial relies heavily on
theoretical calculations performed by Professor MacLeod specifically for
purposes of this litigation. Edmund presents no evidence of the optical
performance of any actual, ZnS, laser-line filter.
G. Ultimate Determination of Enablement
A patent claim “cannot be anticipated by a prior art reference if the
allegedly anticipatory [disclosure] cited as prior art [is] not enabled.” In re
NTP, Inc., 654 F.3d 1279, 1301 (Fed. Cir. 2011). Although anticipation is a
question of fact, whether a prior art reference is enabling is a question of law
with underlying factual inquiries. Id.
The standard for what constitutes proper enablement of a prior art
reference for purposes of anticipation under section 102 differs from the
enablement standard for a patent application under section 112. See Verizon
Services Corp., v. Cox Fibernet Virginia, Inc., 602 F.3d 1325, 1337 (Fed.
Cir. 2010). Anticipation does not require the actual creation or reduction to
practice of the prior art subject matter; anticipation requires only an enabling
disclosure. See Schering Corp., v. Geneva Pharma, Inc., 339 F.3d 1373,
1380 (Fed. Cir. 2003); citing In re Donohue, 766 F.2d 531, 533 (Fed. Cir.
1985).
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Nevertheless, we determine that the MacLeod Treatise does not
enable claim 33. Claim 33 is directed to optical performance parameters.
There is no dispute that multi-layer, thin-film, laser-line filters comprised of
alternating layers of ZnS and Cryolite were known in the prior art. Thus,
Semrock distinguishes its invention over prior art soft-coated filters on the
basis of optical performance, not on the basis of using the basic structure of
alternating layers of refractive materials with Fabry-Perot cavities. Upon
consideration of the various Wands factors, including the absence of any
working examples that demonstrate that Edmund’s theoretical calculations
are capable of realization, we conclude that Semrock has carried its burden
of showing that the MacLeod Treatise does not enable claim 33.
In view of the foregoing, we find that Edmund has failed to establish,
by a preponderance of the evidence, that the MacLeod Treatise anticipates
claim 33.
IV. OBVIOUSNESS OVER MACLEOD
Edmund asserts that claims 33–36, 39–41, 44, and 45 would have
been obvious over the MacLeod Treatise as a standalone reference. A patent
is invalid for obviousness:
if the differences between the subject matter sought to be
patented 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.
35 U.S.C. § 103. Obviousness is a question of law based on underlying
factual findings: (1) the scope and content of the prior art; (2) the differences
between the claims and the prior art; (3) the level of ordinary skill in the art;
and (4) objective indicia of nonobviousness. See Graham v. John Deere Co.
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of Kansas City, 383 U.S. 1, 17–18 (1966). Courts must consider all four
Graham factors prior to reaching a conclusion regarding obviousness.
See Eurand, Inc. v. Mylan Pharms., Inc. (In re Cyclobenzaprine
Hydrochloride Extended-Release Capsule Patent Litig.), 676 F.3d 1063,
1076–77 (Fed. Cir. 2012). As the party challenging the patentability of the
claims at issue, Edmund bears the burden of proving obviousness by a
preponderance of the evidence. See 35 U.S.C. § 316(e).
A. Scope and Content of the Prior Art
Edmund relies on the MacLeod Treatise (Ex. 1002) as a stand-alone
obviousness reference. The MacLeod Treatise is discussed above in the
section regarding the anticipation ground of invalidity.
B. Differences Between the Prior Art
and the Claimed Invention
Edmund’s Petition does not admit to any differences between the prior
art and the claimed invention. Indeed, Edmund contends that the MacLeod
Treatise anticipates claim 33. Pet. 17–19.
In its Reply, Edmund, for the first time, relies on an alternative
embodiment of tantala and silica mentioned briefly in the MacLeod Treatise.
Reply 12, Ex. 1002, 310. The obviousness ground of unpatentability in
Edmund’s Petition does not provide a claim chart that purports to map a
tantala/silica filter embodiment from the MacLeod Treatise onto claim 33.
Neither does the Petition identify the differences between the MacLeod
Treatise tantala/silica embodiment and the invention of claim 33. We have
reviewed the excerpt from the MacLeod Treatise relied on in Edmund’s
obviousness ground of unpatentability. Ex. 1002, 310–313. Other than
mentioning the use of tantala and silica, the MacLeod Treatise does not
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provide a structure or a recitation of the expected performance parameters of
such a filter.
In its Reply, Edmund concedes that meeting the performance
parameters of claim 33 with a tantala/silica filter necessarily would involve
more than a simple substitution of tantala and silica for the ZnS/Cryolite
materials used in the Figure 7.26 example in the MacLeod Treatise.
Reply 12. Edmund contends that person of ordinary skill in the art would
have attempted to redesign the filter to account for the properties of the
different materials. Id. Although Edmund’s Petition does not describe how
or why a person of ordinary skill in the art would have redesigned the
ZnS/Cryolite filter of Figure 7.26 to achieve the performance criteria of
claim 33, Edmund argues, for the first time in its Reply, that the MacLeod
Treatise provides a systematic approach to the design of multiple cavity
filters, regardless of the material used. Id.
C. Enablement of the MacLeod Treatise
as an Obviousness Reference
In conjunction with our consideration of the MacLeod Treatise under
the Graham factors of scope and content of the prior art and differences
between the prior art and the claimed invention, we also take into account
issues of enablement. We previously determined that, for purposes of an
anticipation analysis, the MacLeod Treatise does not enable claim 33.
However, it does not follow necessarily that the MacLeod Treatise also is
not enabling for purposes of an obviousness analysis. Under § 103, a
reference need not be enabled, for it qualifies as prior art for whatever is
disclosed therein. See Amgen, 314 F.3d at 1357; see also Beckman
Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989)
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(“Even if a reference discloses an inoperative device, it is prior art for all
that it teaches”).
Edmund relies on, among things, Amgen, to support an argument that
enablement is not relevant to an obviousness analysis. Paper 69, 10.
Edmund argues that, to the extent we find that the MacLeod Treatise is non-
enabling for the subject matter it discloses, for obviousness purposes, such
non-enablement is moot. Id.
Semrock takes a different view. Semrock argues that, to render a
claimed method or apparatus obvious, a stand-alone reference must enable a
person of ordinary skill in the art to make and use the claimed invention.
Paper 68, 11, citing Beckman, 892 F.2d at 1551. Semrock also argues that
no presumption of enablement exists in an obviousness analysis; that a
Petitioner cannot introduce new extrinsic evidence in a Reply; and that
Petitioner bears the ultimate burden of persuasion on the enablement of an
obviousness reference. Paper 68, 12.
In the case of Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d
1289, 1297 (Fed. Cir. 2010), vacated-in-part on other grounds, 649 F.3d
1276 (Fed. Cir. 2011) (en banc), the Federal Circuit reiterated that an
individual prior art reference need not be enabled as it qualifies as prior art
for what is disclosed therein. Id. (citing Amgen, 314 F.3d at 1357). The
Therasense Court also reiterated that, in order to render a claimed apparatus
or method obvious, the cited prior art as a whole must enable one skilled in
the art to make or use the apparatus or method. See id. (citing Beckman
Instruments, 892 F.2d at 1551). “References relied upon to support a
rejection under [35 U.S.C. § 103] must provide an enabling disclosure, i.e.,
they must place the claimed invention in the possession of the public.” In re
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Payne, 606 F2d 303, 314 (CCPA 1979). An invention is not “possessed”
absent some known or obvious way to make it. In re Hoeksema, 399 F.2d
269, 274 (CPA 1968).
Thus, notwithstanding our determination that the MacLeod Treatise
does not enable claim 33 for purposes of an anticipation analysis, we will
consider it as prior art for all that it does teach. We will also require
Edmund, as the party challenging the patentability of claim 33, to prove, by
a preponderance of the evidence, that the prior art, as a whole, enables one
skilled in the art to practice the invention of claim 33. In this regard, we will
consider the background knowledge possessed by a person of ordinary skill
in the art, including background knowledge that may be evidenced through
secondary references. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63
(Fed. Cir. 2013). We will also consider other evidence that tends to
establish the level of ordinary skill in the art, including expert testimony.
D. Level of Ordinary Skill in the Art
Edmund’s Petition does not articulate a position as to the level of
ordinary skill other than to conclude that such a person would have found it
obvious to achieve the invention claimed in the ’960 patent. Pet. 1.
Edmund’s experts, Mr. Schallenberg and Professor MacLeod, testify that a
person of ordinary skill in the art would have had sufficient knowledge of
basic physics and interference optics to appreciate and understand the
principles of optical coatings. Ex. 1012 ¶¶ 11–12; Ex. 1011 ¶¶ 13–14. They
each opine, using almost identical language, that a person of ordinary skill in
the art would have had a bachelor’s degree in physics, optical engineering,
or electrical engineering and would have an unstated amount of
“experience” in thin-film optics. Id.
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Semrock’s Patent Owner Response does not articulate a position as to
the level of ordinary skill. Semrock’s expert, Dr. Rancourt, testifies that a
person of ordinary skill in the art at the time of the invention would have had
a bachelor’s degree in physics, optical engineering, electrical engineering, or
equivalent, and three to five years of experience designing and
manufacturing thin film optical filters. Ex. 2004 ¶ 25. According to
Dr. Rancourt, a person of ordinary skill in the art would have been familiar
with techniques for monitoring the layer thickness for optical multilayer
coatings.
Neither party presents a detailed evidentiary showing under the
factors recited in Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d
693, 696–97 (Fed. Cir. 1983).16 Notwithstanding the scant evidence on skill
level presented by the parties, the level of skill in the art often can be
determined from a review of the prior art. See Litton Indus. Prods., Inc. v.
Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985). Based on our
review of the prior art, the applicable field of endeavor is optical filter
technology. The person of ordinary skill in this field would have been
generally familiar with hard and soft coating materials used in optical filters.
Ex. 1001, 4:28–32; Ex. 1002, 310. The person of ordinary skill in the art

16 Factors pertinent to a determination of the level of ordinary skill in the art
include: (1) educational level of the inventor; (2) type of problems
encountered in the art; (3) prior art solutions to those problems; (4) rapidity
with which innovations are made; (5) sophistication of the technology; and
(6) educational level of workers active in the field. Not all such factors may
be present in every case, and one or more of these or other factors may
predominate in a particular case. See id. These factors are not exhaustive
but are merely a guide to determining the level of ordinary skill in the art.
See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir.
2007).
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would have been familiar with techniques for depositing filter materials,
such as thermal evaporation, electron-beam evaporation, and ion-beam
sputtering. Id. at 4:28–34. The ordinary artisan also would have been
familiar with techniques for monitoring the thickness of a deposition layer.
Ex. 1002, 275; Ex. 1001, 5:18–6:3. Such an artisan also would have been
familiar with the basic principles underlying the structure of an optical filter,
including designs incorporating alternating layers of materials of high and
low refractive indices, the creation of Fabry-Perot cavities, and the effects of
varying the thickness of the respective layers. Ex. 1001, 4:12–27;
Ex. 1002, 257.
E. Secondary Considerations of Non-Obviousness
Evidence of secondary considerations of non-obviousness, when
present, must always be considered en route to a determination of
obviousness. See Cyclobenzaprine, 676 F.3d at 1075–76. However, the
absence of secondary considerations is a neutral factor. See Custom
Accessories, Inc., Jeffrey-Allan Industries, Inc., 807 F.2d 955, 960 (Fed. Cir.
1986). Neither party introduced evidence on secondary considerations of
non-obviousness. Consequently, we will focus our attention on the first
three Graham factors.
F. Whether the Prior Art Could Have Been Modified
to Achieve the Claimed Invention
The Supreme Court instructs courts to take an expansive and flexible
approach in determining whether a patented invention was obvious at the
time it was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415
(2007). The existence of a reason for a person of ordinary skill in the art to
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modify a prior art reference is a question of fact. See In re Constr. Equip.
Co., 665 F.3d 1254, 1255 (Fed. Cir. 2011). A reason to modify a prior art
reference may be found explicitly or implicitly in market forces; design
incentives; the “interrelated teachings of multiple patents”; “any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent”; and the background knowledge, creativity, and
common sense of the person of ordinary skill. Perfect Web Techs., Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR, 550
U.S. at 418–21)).
In the instant case, Edmund’s Petition fails to present persuasive
evidence, argument, or technical reasoning as to why or how a person of
ordinary skill in the art would have modified the Figure 7.26 hypothetical
filter example of the MacLeod Treatise to achieve a filter with the
performance criteria recited in claim 33. Indeed, Edmund’s Petition does
not acknowledge that there are any differences between the prior art and the
claimed invention that require modification.
With respect to tantala and silica filters mentioned in the MacLeod
Treatise (Ex. 1002, 310) and Edmund’s Reply, Dr. Rancourt testifies that
such hard coated materials have a different index ratio than the ZnS and
Cryolite filter of Figure 7.26 in the MacLeod Treatise. Ex. 2004 ¶ 42.
Consequently, according to Dr. Rancourt, there will be less blocking for a
given number of layers for a stack made from materials with a lower index
ratio. Id. Dr. Rancourt further testifies that changing the materials of the
filter layers also will alter the spectral width of the pass band. Id. ¶¶ 42–44.
Thus, Dr. Rancourt concludes that a person of ordinary skill in the art would
be faced with a significant amount of redesign to get the performance of a
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hard material design to match the performance of the soft materials used in
Figure 7.26. Id.
In its Reply, Edmund argues that a person of ordinary skill in the art
would not have made a simple substitution of tantala and silica for the ZnS
and Cryolite for the design of Figure 7.26. Reply 12. Edmund argues that a
person of ordinary skill in the art also would have attempted to optimize the
design taking into account the properties of the new materials using
unspecified “methods of MacLeod Ex. 1002.” Id. Edmund argues that the
MacLeod Treatise provides a systematic approach to the design of multiple
cavity filters, regardless of the material. Id. Edmund argues that a person of
ordinary skill in the art would have used the Essential MacLeod software,
TFCalc, or another commercially available filter design software from 2003
to redesign the Figure 7.26 filter using hard-coating materials to achieve
filter designs that satisfy claim 33. Id. at 13. Edmund relies on testimony
from Professor MacLeod in support of these contentions. Id. citing Ex. 1029
¶¶ 45–48. Edmund also argues that a person of ordinary skill in the art
would have known the proper manufacturing techniques to make such a
filter, citing declaration testimony from Professor MacLeod. Reply 13;
Ex. 1029 ¶ 49.
Although Edmund’s Petition is essentially silent on tantala/silica
filters mentioned briefly in the MacLeod Treatise, Professor MacLeod
submits declaration testimony in support of Edmund’s Petitioner’s Reply
regarding the ease of substituting tantala and silicon for the ZnS and Cryolite
of Figure 7.26 design. Ex. 1029 ¶¶ 49–56. Professor MacLeod offers the
results of a computer filter design that he prepared specifically for use in this
proceeding and, more particularly, for purposes of his declaration testimony
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in support of Edmund’s Reply. Id. Professor MacLeod opines that the
results of his computer design example meet the requirements of claim 33.
Id. ¶ 56.
Professor MacLeod’s Reply declaration testimony is unpersuasive for
numerous reasons, which we discuss in detail below. First, such evidence
should have been submitted contemporaneous with the Petition rather than
waiting until the Reply. Second, the quantitative data reported by Professor
MacLeod relates to a hypothetical design, as opposed to empirical data
obtained from an actual filter. Ex. 1029 ¶¶ 49–56. Third, the parameters
used in Professor MacLeod’s study admit of post hoc hindsight reasoning.
Ex. 1029 ¶ 52. Fourth, Professor MacLeod’s testimony regarding the ability
of a person of ordinary skill in the art to manufacture an actual hard-coating
filter that satisfies the performance limitations of claim 33 is unsubstantiated
and conclusory.
Professor MacLeod’s Exhibit 1029 declaration was not submitted
contemporaneously with the Petition and, instead was submitted in
connection with Edmund’s Reply. A Reply to a Patent Owner’s Response is
authorized by our Rules. See 37 C.F.R. § 42.23(b). However, “[a] reply
may only respond to arguments raised in the corresponding opposition.”
Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767. Under the rules
governing IPR proceedings, a Petition must provide a full statement of the
relief requested, including a detailed explanation of the significance of the
evidence, including material facts. See 37 C.F.R. § 42.22(a)(2). It is
axiomatic that a Petition cannot provide a detailed explanation of the
significance of evidence when that evidence is not presented until the
Petitioner files its Reply. Among other things, one indication that a new
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issue has been raised in a Reply is “new evidence that could have been
presented in a prior filing.” Office Patent Trial Practice Guide, 77 Fed.
Reg. at 48,767.
By waiting and filing its expert declaration after Semrock filed its
Patent Owner Response, Edmund effectively precluded Semrock from
addressing Professor MacLeod’s Exhibit 1029 declaration in its Response.
This also effectively precluded Semrock’s expert, Dr. Rancourt, from
responding to Professor MacLeod’s belated testimony in his declaration that
was filed in support of Semrock’s Response. We will not countenance such
tactics. See Murphy v. Village of Hoffman Estates, 1999 U.S. Dist. LEXIS
3320, at *5–6 (N.D. Ill. 1999) (“[I]t is established beyond peradventure that
it is improper to sandbag one’s opponent by raising new matter in reply.”).
A Reply that belatedly presents evidence will not be considered. Office
Patent Trial Practice Guide, 77 Fed. Reg. at 48,767. Edmund’s original
Petition asserted a ground of unpatentability over the ZnS/Cryolite of Figure
7.26 of the MacLeod Treatise. If Edmund wanted to present a ground of
unpatentability over the ZnS/Cryolite embodiment of Figure 7.26 in
combination with a tantala/silica embodiment, Edmund should have
presented evidence as to how and why a person of ordinary skill in the art
would have combined the two embodiments to achieve the invention of
claim 33 contemporaneous with the filing of its original Petition. See KSR,
550 U.S. at 418 (requiring articulated reasoning with rationale underpinning
as to how or why a person of ordinary skill in the art would have combined
or modified the teachings of the prior art). Presenting such evidence and
argument for the first time in a Reply is untimely.
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Professor MacLeod’s belated testimony relates to a hypothetical
design, not an actual filter. Ex. 1029 ¶¶ 49–56. As we discussed previously,
Semrock presented persuasive evidence through Dr. Rancourt that an actual
filter will exhibit transmission losses due to various factors. Ex. 2004 ¶¶ 55,
57, 71, 90 (absorption); ¶¶ 55, 56, 87–90 (scattering); ¶¶ 94–111
(manufacturing tolerances).
During the Oral Hearing, Semrock’s counsel argued, persuasively,
that Professor MacLeod’s tantala/silicon theoretical design example employs
hindsight reasoning. Tr. 51. As we understand Professor MacLeod’s
testimony, in order to generate his proposed design, Professor MacLeod
essentially input the performance parameters claimed in claim 33 into
computer design software and then had the software work backward to
generate the design.
Precedent recognizes the pitfalls of judicial hindsight exercised
at the time of litigation, the Court cautioning in KSR that “[a]
factfinder should be aware, of course, of the distortion caused
by hindsight bias and must be cautious of arguments reliant
upon ex post reasoning.” 550 U.S. at 421. See also, e.g.,
Diamond Rubber [Co. of N.Y. v. Consol. Rubber Tire Co.], 220
U.S. [428,] []434–35 [(1911)] (“Many things, and the patent
law abounds in illustrations, seem obvious after they have been
done, and, in the light of the accomplished result, it is often a
matter of wonder how they so long eluded the search of the
discoverer and set at defiance the speculations of inventive
genius.” (quotation omitted)); Arkie Lures, Inc. v. Gene Larew
Tackle, Inc., 119 F.3d 953, 956 (Fed. Cir. 1997) (“Good ideas
may well appear ‘obvious’ after they have been disclosed,
despite having been previously unrecognized.”).
Outside the Box Innovations, LLC v. Travel Caddy Inc., 695 F.3d 1285,
1298 (Fed. Cir. 2012). Professor MacLeod’s attempt to “design” a hard-
coated filter by using the performance criteria recited in claim 33 as entering
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parameters to his design software is a classic example of hindsight
reasoning.
Finally, Edmund argues that “A [person of ordinary skill in the art]
would have known the proper manufacturing techniques.” Reply 13.
Edmund cites a single paragraph from Professor MacLeod’s testimony in
support of this conclusory statement. Id.; Ex. 1029 ¶ 49. Professor
MacLeod’s testimony from this paragraph, in its entirety, is reproduced
below:
One of ordinary skill in the art would know that evaporation
techniques are appropriate for the deposition of soft coating
materials such as ZnS using turning point monitoring, and that
other techniques, such as ion beam sputtering with known
optical monitoring, would be appropriate for the deposition of
hard coating materials such as Ta2O5. A person of ordinary
skill in the art would expect negligible, if any, transmission loss
using tantala and silica for the filter.
Ex. 1029 ¶ 49. Under our rules, expert testimony that does not disclose the
underlying facts or data on which an opinion is based is entitled to little or
no weight. See 37 C.F.R. § 42.65(a); Office Patent Trial Practice Guide,
77 Fed. Reg. at 48,763; Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089,
1092 (Fed. Cir. 1997) (nothing in the Federal Rules of Evidence or Federal
Circuit jurisprudence requires the fact finder to credit unsupported assertions
of an expert witness). We are not inclined to credit such unsubstantiated
testimony.
In an obviousness analysis, some kind of reason must be shown as to
why a person of ordinary skill would have thought of modifying a reference
to achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs.,
512 F.3d 1363, 1374 (Fed. Cir. 2008). Furthermore, an obviousness
determination requires not only a reason to modify a prior art reference, but
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also that a skilled artisan in doing so would have perceived a reasonable
expectation of success in making the invention. See Medichem, S.A., v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). On the record before
us, we determine that Edmund fails to persuasively establish that a person of
ordinary skill in the art would have been able to modify the Figure 7.26
example of the MacLeod Treatise to achieve the invention of claim 33.
G. Ultimate Conclusion of Obviousness
as to Claim 33
After considering all of the underlying factual considerations, the
ultimate conclusion of obviousness is a question of law. See Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1359 (Fed. Cir. 2007). “[T]he great challenge
of the obviousness judgment is proceeding without any hint of hindsight.”
Star Scientific, Inc., v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375
(Fed. Cir. 2011). After considering Edmund’s obviousness presentation
under the Graham factors and Edmund’s lack of evidence on how or why a
person of ordinary skill in the art would have modified the hypothetical
ZnS/Cryolite soft-coated filter design of Figure 7.26 to achieve the patented
invention, we conclude that Edmund has failed to establish, by a
preponderance of the evidence, that claim 33 is obvious.
H. Ultimate Conclusion of Obviousness as to
Claims 34–36, 39–41, 44, and 45
Claims 34–36, 39–41, 44, and 45 depend, directly or indirectly, from
claim 33. Ex. 1001. In view of our determination that Edmund has failed to
establish that independent claim 33 would have been obvious, it necessarily
follows that Edmund has failed to establish that dependent claims 34–36,
39–41, 44, and 45 are unpatentable as obvious. See In re Fritch, 972 F.2d
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1260, 1266 (Fed. Cir. 1992) (dependent claims are nonobvious if the
independent claims from which they depend are nonobvious).
V. MOTIONS TO EXCLUDE EVIDENCE
A. Edmund’s Motions to Exclude
Edmund moves the Board to exclude the following testimony:
1. Dr. Rancourt declaration (Exhibit 2004): ¶¶ 42–44, 57–64, 82–84, 90–
93, 100–108, and 114–118;
2. Dr. Rancourt declaration (Exhibit 2005): ¶ 49;
3. Dr. Rancourt declaration (Exhibit 2030): ¶¶ 29 and 37–38;
4. Dr. Rancourt declaration (Exhibit 2031): ¶¶ 20, 22, and 25–55; and
5. Ms. Kruschwitz declaration (Exhibit 2014): ¶¶ 11, 12, 14–21.
Paper 51. Semrock opposes Edmund’s motion. Paper 59. Edmund replies
to Semrock’s opposition. Paper 63.
B.Semrock’s Motions to Exclude
Semrock moves the Board to exclude paragraphs 15–21 and 24–35 of
Exhibit 1029, the declaration of Edmund’s expert, Professor MacLeod,
submitted in support of Edmund’s Reply. Paper 52. Edmund opposes the
motion. Paper 58. Semrock replied to Edmund’s opposition. Paper 64.
C. Analysis of Edmund’s and Semrock’s Motions
Although Edmund and Semrock each advance separate arguments for
the exclusion of separate paragraphs or groups of paragraphs of expert
declaration testimony submitted by their opponents, we find it expedient to
dispose of both motions to exclude in a single discussion. Edmund and
Semrock each urge us to exclude their opponent’s expert testimony in the
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exercise of our “gatekeeping” function under the auspices of Federal Rule of
Evidence 702 and Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 589
(1993). Paper 51, 1, 2, 4–15; Paper 52, 2–3. The Federal Rules of Evidence
permit receipt of expert testimony at trial under certain prescribed
circumstances, providing that
[i]f scientific, technical, or other specialized knowledge will
assist the trier of fact to understand the evidence or to determine
a fact in issue, a witness qualified as an expert by knowledge,
skill, experience, training, or education, may testify thereto in
the form of an opinion or otherwise, if (1) the testimony is
based upon sufficient facts or data, (2) the testimony is the
product of reliable principles and methods, and (3) the witness
has applied the principles and methods reliably to the facts of
the case.
Fed. R. Evid. 702; accord Daubert, supra; Kumho Tire Co. v. Carmichael,
526 U.S. 137 (1999).
When faced with expert scientific testimony, a court must first
determine “whether the expert is proposing to testify to (1) scientific
knowledge that (2) will assist the trier of fact to understand or determine a
fact at issue.” Daubert, 509 U.S. at 592. This requires an assessment of the
reasoning and methodology underlying the testimony to determine whether
it is scientifically valid. See id. Daubert outlines four factors for courts to
consider when evaluating the validity and relevance of scientific evidence
pursuant to Rule 702 of the Federal Rules of Evidence. See id. at 592–93.
These factors include (1) whether the methodology can and has been tested,
(2) whether the methodology is subject to peer review, (3) the potential rate
of error, and (4) the general acceptance of the methodology. See id. at 593–
94.
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Under Daubert and Rule 702 of the Federal Rules of Evidence, courts
are charged with a “gatekeeping role,” the objective of which is to ensure
that expert testimony admitted into evidence is both reliable and relevant.
Daubert, 509 U.S. at 597. “The focus, of course, must be solely on
principles and methodology, not on the conclusions that they generate.”
Id. at 595. We note that the concerns relative to the “gatekeeping role” are
less important in a bench trial, such as an IPR proceeding, where no
screening of the factfinder can take place. See Seaboard Lumber Co. v.
United States, 308 F.3d 1283, 1301–02 (Fed. Cir. 2002). The Daubert
standards of relevance and reliability must nevertheless be met. See id.
A trial judge is given considerable leeway in deciding how to
determine whether the expert’s testimony is sufficiently reliable for
admission. See Kumho Tire 526 U.S. at 152. Thus, the Daubert inquiry is
“a flexible one,” depending on the nature of the issue, the witness’s
expertise, and the subject of the testimony. Id. at 150. “[R]ejection of
expert testimony is the exception, rather than the rule, and [the court] will
generally permit testimony based on allegedly erroneous facts when there is
some support for those facts in the record.” In re Scrap Metal Antitrust
Litig., 527 F.3d 517, 530 (6th Cir. 2008) (internal quotations and citations
omitted).
In the instant case, Edmund relies on the MacLeod Treatise
(Ex. 1002) as the sole reference for its challenges to the ’960 patent on the
grounds of anticipation and obviousness. The MacLeod Treatise is a
textbook that Semrock essentially characterizes as theoretical in nature.
Semrock challenges the MacLeod Treatise, as an anticipation and
obviousness reference, among other things, on the grounds that it is non-
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enabled. PO Resp. 1. Semrock contends that, in the real world as opposed
to the theoretical world of the MacLeod Treatise, a filter using layers of ZnS
could not achieve the 90% transmission limitation of claim 33 of the ’960
patent. PO Resp. 20. Semrock’s contention relies on Dr. Rancourt’s
testimony. Id. at 20–21; Ex. 2004 ¶ 111. Dr. Rancourt, in turn, relies on
published literature to support his opinion that scattering losses and
absorption would preclude a ZnS filter from achieving transmittance of 90%.
Among other things, Dr. Rancourt relies on Al-Douri (Ex. 2009), Ahrens
(Ex. 2008), Pulker I (Ex. 2011), Pulker II (Ex. 2012), Gibson and Wilson
(Ex. 2010), Kersten (Ex. 2013), Siqueiros (Ex. 2006), and MacLeod and
Richmond (Ex. 2007) as authoritative, published literature in the field that
supports his opinions and conclusions. See Ex. 2004, 8–10; Ex. 2005, 7–9.
Similarly in its Reply, Edmund relies on testimony from its expert,
Professor MacLeod. In connection with his opinion that the MacLeod
Treatise (Ex. 1002) is enabling, Professor MacLeod opines that the
extinction coefficient k for ZnS, a component in the calculation to estimate
light absorption of ZnS layers in an optical filter, is extremely small,
generally on the order of 10-6. Ex. 1029 ¶ 15, 18, 19. Professor MacLeod
relies on Ahrens II (Ex. 1024) and Czyzak (Ex. 1030) as authoritative
literature in the field to support his opinion. Ex. 1029 ¶¶ 18, 19.
We have reviewed the challenged portions of the parties’ respective
expert witness declarations. We also have reviewed the respective motions,
and oppositions, and replies of the parties. Neither party presents an
analysis under the factors enumerated in Daubert. See Daubert, 509 U.S. at
593–94. Each of the parties’ primary experts, Professor MacLeod and
Dr. Rancourt, appear to be well qualified in the field of optical filter
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technology. However, Dr. Rancourt and Professor MacLeod rely on
different, and seemingly inconsistent, if not contradictory, articles of
published literature to bolster their respective opinions concerning the
absorption, reflectance, and transmittance of light by ZnS layers in optical
filters. For example, Professor MacLeod relies on Ahrens II as disclosing a
k value of 9 x 10-6. Ex. 1029 ¶ 18. Dr. Rancourt dismisses this k value as a
typographical error. Ex. 2031 ¶¶ 35, 38, 43–55. In turn, Dr. Rancourt relies
on Pulker I, Pulker II, Gibson, Kersten, Ahrens, and Siqueiros as
establishing a much higher k value. Ex. 2004 ¶¶ 57–64, 90–92. Professor
MacLeod criticizes Dr. Rancourt’s sources as reporting extinction
coefficients for ZnS that are “high and unsupported.” Ex. 1029 ¶ 16.
The parties’ dispute over the value of k is not a Daubert issue. It is
not the court’s role under Daubert to evaluate the correctness of facts
underlying an expert’s testimony. See i4i Ltd. P’ship v. Microsoft Corp.,
598 F.3d 831, 856 (Fed. Cir. 2010). Although Professor MacLeod vouches
for the results in certain publications and Dr. Rancourt vouches for the
results in a divergent set of publications, there is no evidence that either
Professor MacLeod or Dr. Rancourt personally participated in the scientific
experiments and data gathering reported in their respective sources.
In an IPR proceeding, the credibility of an expert witness’ testimony
may be tested by cross-examination. See 37 C.F.R. § 42.53. Vigorous cross
examination, presentation of contrary evidence, and careful adherence to the
burden of proof are the traditional means of dealing with shaky but
admissible evidence, including shaky expert testimony. See Daubert, 509
U.S. at 595–96. It is well settled that determinations on admissibility should
not supplant the adversarial process. See Gayton v. McCoy, 593 F.3d 610,
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616 (7th Cir. 2010) (citing Daubert, 509 U.S. at 596). In the instant case,
each party has availed itself of the opportunity to cross-examine its
opponent’s expert. Exs. 1027, 1028, 1045, 1046, 2028.
With the foregoing in mind, we determine that the issues raised in the
parties’ respective motions to exclude more properly go to the weight, rather
than the admissibility, of the evidence. Accordingly, we DENY, in its
entirety, Edmund’s Motion to Exclude. For essentially the same reasons, we
DENY, in its entirety, Semrock’s Motion to Exclude.
VI. SEMROCK’S CONTINGENT MOTION TO AMEND
Inasmuch as we find that Edmund has failed to establish that any of
the challenged claims are unpatentable, we do not reach Semrock’s
Contingent Motion to Amend or Edmund’s Objection to Semrock’s Reply to
Contingent Motion to Amend.
VII. ORDER
In view of the foregoing, it is ORDERED as follows:
1. Claim 33 of U.S. Patent No. 7,119,960 C1 has not been shown to
be unpatentable as anticipated by the MacLeod Treatise; and
2. Claims 33–36, 39–41, 44, and 45 of U.S. Patent No. 7,119,960 C1
have not been shown to be unpatentable as obvious over the MacLeod
Treatise.
This is a final decision. 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.

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UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

EDMUND OPTICS, INC.,
Petitioner,

v.

SEMROCK, INC.,
Patent Owner.

____________

Case IPR2014-00599
Patent 7,119,960 C1
__________

WARD, Administrative Patent Judge, concurring-in-part and dissenting-in-
part.

I concur with my fellow judges on this case except with respect to
(1) the majority’s failure to provide a presumption of enablement for a prior
art printed publication in an inter partes review proceeding, and (2) the
majority’s conclusion that the ultimate burden of persuasion with respect to
the enablement of a prior art printed publication in such a proceeding should
be placed upon the patent owner. Majority Opinion (“Maj. Op.”), 20–22 and
27–29.
First, in Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F. 3d 1313,
1355 (Fed. Cir. 2003), the Federal Circuit held “that an accused infringer
should be [] entitled to have the district court presume the enablement of
unclaimed (and claimed) material in a prior art patent defendant asserts
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against a plaintiff.” The Federal Circuit extended that logic in In re Antor
Media Corp., 689 F.3d 1282 (Fed. Circ. 2012) to presume the enablement of
a prior art printed publication. Id. at 1288 (“there is no reason why printed
publications . . . should not logically receive the same presumption and for
the same reasons”). I see no basis for ignoring the Federal Circuit’s
instructions in an inter partes review proceeding; thus, the petitioner in an
inter partes review proceeding should receive a presumption of enablement
with respect to a prior art printed publication. A presumption which the
patent owner may rebut with evidence and/or argument that the prior art
printed publication is not enabled. See e.g., Antor, 689 F.3d 1289 (“the
burden shifts to the applicant to submit rebuttal evidence of
nonenablement.”)
Second, the majority incorrectly places the ultimate burden of
persuasion with respect to the nonenablement on the patent owner in an inter
partes review proceeding. Maj. Op., 29. In placing the ultimate burden of
persuasion on the patent owner, the majority fails to provide a proper burden
shifting framework involving a burden of production and a burden of
persuasion.
“[T]here are two distinct burdens of proof: a burden of persuasion
and a burden of production.” Dynamic Drinkware, LLC v. National
Graphics, Inc., – F.3d –, 2015 WL 5166366, *2 (Fed.Cir. Sept. 4, 2015)
(citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed.
Cir. 2008)). Furthermore, “[i]n an inter partes review, the burden of
persuasion is on the petitioner to prove ‘unpatentability by a preponderance
of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the
patentee.” Id. at *2 (emphasis added). The burden of production, however,
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may shift between the parties and involves “‘producing additional evidence
and presenting persuasive argument based on new evidence or evidence
already of record.’” Id. at *3 (quoting Tech. Licensing, 545 F.3d at 1327).
In Dynamic Drinkware, the Federal Circuit affirmed the Board’s use
of the burden shifting framework in the analysis of a prior art reference
relied upon in an anticipation challenge. Id. at *3. Specifically, the Federal
Circuit determined that the burden of production correctly shifted to the
Patent Owner to argue or produce evidence that the challenged claims were
reduced to practice prior to the filing date of the allegedly anticipating prior
art. Id. at *4. However, the ultimate burden of persuasion to prove
unpatentability based on the allegedly anticipating prior art “never shifted”
and remained with the Petitioner. Id.
Here, the majority’s decision fails to follow the burden shifting
framework set forth in Dynamic Drinkware and assigns the ultimate burden
of persuasion for proving nonenablement on the patent owner. In reaching
its conclusion, the majority cites to Impax Labs, Inc. v. Aventis Pharma, Inc.,
545 F.3d 1312, 1316 (Fed. Cir. 2008), as noting that the district court placed
the burden of proving nonenablement on the patentee. Maj. Op. 28. The
cited language from Impax, however, identifies that a burden of production
is to be placed on the patentee, not the ultimate burden of persuasion. See
Impax, 545 F.3d 1316. As the Federal Circuit noted in Impax, the “infringer
enjoys a presumption that the anticipating disclosure enables the claimed
invention.” Id. The infringer is provided with this presumption because it
bears the ultimate burden of persuasion. If the ultimate burden of persuasion
was on the patentee, as the majority concludes, the infringer would not
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require a presumption because the failure or success of the enablement proof
would rest with patentee.
As the Federal Circuit identified in Impax, a proper enablement
analysis involves a “burden-shifting framework.” Id. For example, in the
prosecution context evaluated in In re Morsa, 713 F.3d 104, 110 (Fed. Cir.
2013), the Federal Circuit enumerated this burden-shifting framework in a
proper prior art enablement analysis. The Federal Circuit stated that “the
burden [is] on the applicant in the first instance to challenge the prior art”
and “[o]nce an applicant makes a non-frivolous argument that the cited prior
art is not enabling,” the PTO must address that challenge and come forward
with evidence of enablement. Id. (vacating the Board’s finding of
anticipation for failure to engage in the proper enablement analysis).
A similar burden-shifting framework for a proper prior art enablement
analysis is appropriate in inter partes review. Like the antedating analysis in
the inter partes review in Dynamic Drinkware, a proper enablement analysis
in an inter partes review shifts the burden back and forth between the
petitioner and patent owner. Specifically, in a proper prior art printed
publication enablement analysis, the petitioner receives the benefit of the
presumption that an asserted prior art printed publication is enabling,
shifting the burden to the patent owner to meet a burden of production. This
burden of production requires patent owner to present evidence and/or
arguments, which establish concrete reasons why the prior art printed
publication is not enabled. See c.f., Dynamic Drinkware, 2015 WL
5166366, *4 (“[t]he burden of production then shifted to National Graphics
[Patent Owner] to argue or produce evidence . . . that Raymond is not prior
art”). If the patent owner is able to meet its burden of production, the burden
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shifts back to the petitioner, the party bearing the ultimate burden of
persuasion, to overcome patent owner’s evidence and argument and
establish “beyond a preponderance of the evidence” that the prior art printed
publication is enabled. 35 U.S.C. § 316(e); see c.f., Dynamic Drinkware,
2015 WL 5166366, *4 (“the burden of production returned to [Petitioner]
Dynamic to prove . . . the benefit of filing date prior to the date of National
Graphics’ reduction to practice.”)
Here, Patent Owner Semrock presented arguments and supporting
evidence that the MacLeod Treatise does not enable the invention of
claim 33. PO Resp. 19–22 (citing Ex. 2004 ¶¶ 58–83, 111). Petitioner
Edmund then presented arguments and evidence in an attempt to overcome
the nonenablement issues raised by Patent Owner Semrock. Reply 1–8
(citing Ex. 1029, ¶¶15–27). The majority reviewed this evidence under the
factors set forth in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) and
determined that the MacLeod Treatise does not enable claim 33. Maj.
Op. 33. I agree, but not because Patent Owner Semrock met its burden,
rather that Petitioner Edmund failed to satisfy the ultimate burden of
persuasion, requiring proof “beyond a preponderance of the evidence” that
the prior art printed publication of MacLeod is enabled. 35 U.S.C. § 316(e). 

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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