Takeaway: Expert testimony that “does little more than repeat, without citation to additional evidence, the conclusory arguments of their respective counsel” will be accorded little or no weight.

In its Final Written Decision, the Board found that Petitioner had not shown by a preponderance of the evidence that claim 1 of the ’430 patent is unpatentable. Petitioner had challenged claims 1, 18, 21, 26, 27, 30, and 34-41 in its Petition, but trial was only instituted as to claim 1 on the ground of alleged anticipation by Starke. Because claim 1 was not found to be unpatentable, the Board did not reach Patent Owner’s Contingent Motion to Amend.

“The ’430 patent, titled Method of Making Highly Discriminating Optical Edge Filters and Resulting Products, relates to making optical filters that block unwanted light and are used in Raman spectroscopy and fluorescence microscopy.” Challenged claim 1 recites “[a] method of manufacturing an optical filter by determining when deposition of a layer of the optical filter is to terminate.”

The Board first addressed claim construction, noting that “claims are given their broadest reasonable interpretation consistent with the specification.” “A claim construction analysis begins with, and is centered on, the claim language itself.” Petitioner indicated in its Petition that the claim terms should be given their ordinary and customary meaning, and Patent Owner proposed an explicit construction for two terms. Petitioner then asserted competing constructions in its Reply. The Board noted that although both parties submitted expert declaration testimony in support of their respective claim construction positions, “the experts’ testimony does little more than repeat, without citation to additional evidence, the conclusory arguments of their respective counsel.” Thus, the Board focused on the intrinsic record.

With respect to the term “expected deposition time t_i of the layer,” Patent Owner argued that the term should mean “total expected time to deposit the layer,” and Petitioner proposed a definition of “a calculated prediction of when to expect deposition to cease.” As the Board summarized, Patent Owner’s proposal “contemplates calculating t_ione time for each layer based on the design thickness of the entire layer,” and Petitioner’s proposal “contemplates an iterative process whereby t_i is periodically recalculated during deposition of the layer based on progressive changes in the thickness of the layer at different points in time during deposition.” After reviewing the claim language and the specification, the Board found that the expected deposition time “is calculated with respect to the designed thickness of the entire layer and expected deposition rate applicable to deposition of an entire layer” and that Petitioner’s proposal was not consistent with the claim language. Thus, the term was defined to mean “a time based upon the designed (‘theoretical’) thickness di and deposition rate ri where the designed thickness di represents the thickness of an entire layer, not a portion thereof.”

With respect to the term “measuring during deposition for a period less than t_i, a measured transmission T_m,” Patent Owner proposed a definition of “continually ascertaining during deposition throughout a period less than t_i, a measured transmission T_m,” and Petitioner proposed “a sufficient number of measurements are taken in order to generate a suitable transmission curve for the layer.” The Board noted that the dispute “centers on the frequency with which measurements are taken during the deposition period.” Focusing on the claim language, the Board agreed with Petitioner’s arguments and construed the term to mean “a sufficient number of measurements are taken in order to determine, with a data processor, when deposition of the layer is to terminate.”

Turning to the instituted ground of anticipation based on Starke, Patent Owner contended that Starke failed to disclose two limitations of claim 1: “(1) the ‘measuring, during deposition . . .’ limitation; and (2) the ‘calculating . . . an expected deposition time t_i’ limitation.”

First, the Board agreed with Petitioner’s arguments related to the “measuring, during deposition” limitation, finding that the dispute was a matter of claim construction. As discussed above, the Board agreed with Petitioner’s claim construction position related to this claim term, and therefore, agreed with Petitioner that Starke disclosed the limitation.

Second, regarding the “calculating . . . an expected deposition time t_i” limitation, the Board again found the dispute to be one “predicated on the Board adopting [Petitioner’s] proposed claim construction.” However, because the Board rejected Petitioner’s claim construction proposal, the Board found that Petitioner had not shown that Starke discloses the limitation. Therefore, the Board found that Petitioner did not establish by a preponderance of the evidence that Starke discloses all elements of claim 1.

With regard to the Contingent Motion to Amend, the Board never reached the Motion because the only challenged claim was not found to be unpatentable.

Finally, the Board denied Petitioner’s Motion to Exclude Evidence, and further dismissed Petitioner’s objection to the scope of Patent Owner’s Reply related to the Motion to Amend because the Board did not consider the Contingent Motion to Amend. In particular, the Board found that much of the objected-to evidence in the Motion to Exclude related to claim construction. Because the Board relied upon the intrinsic record in deciding claim construction, any declaration testimony was accorded “little, if any weight.”

Petitioner also sought to exclude cross-examination testimony from a different inter partes review, arguing that it is improper to use such testimony in the instant case. In denying the motion, the Board noted that it would not “adopt a blanket rule that cross-examination testimony obtained in one case can never be used in another case,” providing an example that “it may permissible, in an appropriate situation, to impeach a witness with a prior inconsistent statement made in another proceeding.”

Edmund Optics, Inc. v. Semrock, Inc., IPR2014-00583
Paper 50: Final Written Decision
Dated: September 9, 2015
Patent: 7,068,430 C1
Before: William A. Capp, Trenton A. Ward, and David C. McKone
Written by: Capp