Takeaway: Choosing not to submit declaration testimony when the opposing party does leaves the opposing party’s declaration testimony uncontested, because attorney argument is not evidence.

In its Final Written Decision, the Board determined that all of the challenged claims (1, 4, 13-15, 17, and 19) of the ’674 Patent are unpatentable, and denied Patent Owner’s Motion to Amend. The ’673 Patent is directed to systems and methods for generating infrared light with wavelength in the mid-infrared (IR) range. The Board noted that no oral hearing was held, because neither party desired it.

The grounds of unpatentability included anticipation by Sanders (USP 6,229,828) of claims 1, 4, 13, 15, 17, and 19, and obviousness over Sanders of dependent claim 14. The Board began with claim construction, stating claims must be interpreted using the broadest reasonable construction in the context of the specification unless the patentee acts as his own lexicographer or the patentee disavows the full scope of a claim term. The Board first addressed the meaning of the term “gain fiber,” adopting a construction that the term means “an optical fiber that is operable as a gain medium (i.e., amplifies an input signal),” which is slightly different from what was applied in the Decision to Institute. Patent Owner argued that the construction at institution improperly narrowed the claims, stating that the Specification states that gain fiber may comprise any waveguide structure capable of wavelength shifting pump signal to a longer wavelength, and that the Specification does not contain the terms “amplify” or “amplifies.” Patent Owner proposed that “gain fiber” should be construed as “an optical fiber comprising any waveguide structure.” Petitioner responded that Patent Owner’s proposed construction renders the term “gain” surplusage. The Board agreed with Petitioner. However, the Board also agreed with Patent Owner that the Specification states that the gain fiber is “operable” to facilitate shifting a signal to a desired wavelength, so the Board amended its initial construction to mean that the optical fiber is operable as a gain medium instead of the optical fiber functions as a gain medium. The only other term interpreted in the Decision on Institution was not disputed by either party, and thus was maintained.

The Board then turned to the anticipation grounds of unpatentability. Petitioner included expert testimony to supports its conclusion of anticipation. Patent Owner relied solely on attorney argument that the Board did not find persuasive, at least because the argument attempted to explain, without any evidence, why the express statements in the reference were not accurate. By the Patent Owner not producing its own expert, Petitioner’s expert testimony was left uncontested.

The Board then discussed Patent Owner’s Motion to Amend. The Motion was contingent, meaning that a proposed substitute claim it at issue only if the claim it replaces is found unpatentable. The Board found that Patent Owner failed to set forth the support in the original disclosure of the patent for each claim that is added and the support in an earlier-filed disclosure for each claim for which the benefit of the filing date of the earlier filed disclosure is sought. For example, Patent Owner referred to the ’673 Patent Specification instead of the original Specification, and only alleged support for the added limitation, instead of the entire substitute claim. Further, the Board found that Patent Owner did not show that proposed substitute claims are patentable. For example, Patent Owner stated that it searched for the term “Q switch” in references provided by Petitioner in the related litigation. Further, the Board found Petitioner’s response that included a proposed combination of references for showing the unpatentability of the proposed substitute claims. Patent Owner submitted declaration testimony that Petitioner’s proposed combination would not work, but the Board was not persuaded because the testimony included merely conclusory statements without sufficient evidence to support those conclusions.

BAE Systems Information and Electronic Systems Integration, Inc. v. Cheetah Omni, LLC, IPR2013-00175
Paper 45: Final Written Decision
Dated: June 19, 2014
Patent 7,633,673 B1
Before: Stephen C. Siu, Justin T. Arbes, and Rama G. Elluru
Written by: Elluru