Milettev.Gurreri et al.

Patent Trial and Appeal Board

Nov 18, 2013

12365593 (P.T.A.B. Nov. 18, 2013)

BoxInterferences@uspto.gov Paper 172
Telephone: 571-272-4683 Entered: 18 November 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
PATENT TRIAL AND APPEAL BOARD
____________________

MICHAEL L. GURRERI, DAVID D. ERDMAN,
BRYAN T. EDWARDS, ERIC J. HOPKINS and
DAVID R. BAECHTLE
Junior Party
(Patent No. 7,325,976)

v.

LUC MILETTE
Senior Party
(Application No. 12/365,593)
___________________

Patent Interference No. 105,863
(Technology Center 2800)
___________________

Judgment
Bd. R. 127

Before RICHARD E. SCHAFER, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

KATZ, Administrative Patent Judge.

In light of the Decision on Priority (Paper 171), finding that Gurreri is not 1
entitled to priority as to the subject matter of the Count, it is Ordered that 2
judgment is awarded against Gurreri. 3
2

Further Ordered that claims 1-7 of Gurreri Patent No. 7,325,976 are 1
cancelled. 35 U.S.C. § 135(a). 2
Further Ordered that attention is directed to 35 U.S.C. § 135(c) and Bd.R. 3
205 regarding the filing of settlement agreements. 4
Further Ordered that a copy of the Judgment shall be placed in the files of  5
(1) Gurreri Patent No. 7,325,976 and (2) Milette application 12/365,593. 6

cc (via electronic mail):

Attorney for Gurreri:

Stephen J. Driscoll
Theodore Naccarella
SAUL EWING, LLP
sdriscoll@saul.com
tnaccarella@saul.com

Attorney for Milette:

Matthew B. Lowrie
George E. Quillin
FOLEY & LARDNER LLP
mlowrie@foley.com
gquillin@foley.com
BoxInterferences@uspto.gov Paper 171
Telephone: 571-272-4683 Entered: 18 November 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
PATENT TRIAL AND APPEAL BOARD
____________________

MICHAEL L. GURRERI, DAVID D. ERDMAN,
BRYAN T. EDWARDS, ERIC J. HOPKINS and
DAVID R. BAECHTLE
Junior Party
(Patent No. 7,325,976)

v.

LUC MILETTE
Senior Party
(Application No. 12/365,593)
___________________

Patent Interference No. 105,863
(Technology Center 2800)
___________________

Decision - Priority
Bd. R. 125(a)

Before RICHARD E. SCHAFER, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.

KATZ, Administrative Patent Judge.

Gurreri Motion 4, for judgment of priority (Paper 119), as well as Milette’s 1
Opposition (Paper 123), and Gurreri’s Reply (Paper 125), are before us. In 2
addition, Milette Miscellaneous Motion 2, to exclude Gurreri evidence (Paper 3
2

133), Gurreri’s Opposition (Paper 138), and Milette’s Reply (Paper 139) are before 1
us. 2
Gurreri’s and Milette’s inventions relate to a system of connectors for 3
electronic devices that allow only specific plugs to mate with specific receptacles 4
based on their complementary shapes. (See Gurreri Motion 4, Paper 119, at 5
Statement of Material Fact (“SMF”) 1; U.S. Patent 7,325,976 (“the ’976 patent”), 6
Exh. 1004, at 1:38-55.) This specific pairing of plugs and receptacles provides a 7
physical layer of security for electronic connections. (’976 patent, Exh. 1004, at 8
1:38-55.) 9
The Count in this Interference is either claim 1 of the involved Gurreri 10
patent, Patent No. 7,325,976, or claim 1 of the involved Milette application, 11
Application No. 12/365,593. Claim 1 of the involved Gurreri patent, states1: 12
A connector system comprising: 13
a set of optical plugs, each optical plug having a housing and a 14
ferrule, said housing having a front and back orientation and having a 15
front face defining an opening, said ferrule being disposed within said 16
opening, said housing defining a first keying element on said front 17
face around said opening, said first keying element for said each 18
optical plug of said set of optical plugs being different; and 19
a set of optical receptacles, each receptacle having an opening 20
to receive said plug and a ferrule-receiving portion to receive said 21
ferrule, said ferrule-receiving portion defining a second keying 22
element to cooperate with said first keying element, said second 23
keying element for said each receptacle of said set of said optical 24
receptacles being different and being adapted to cooperate with one 25
and only one of said first keying elements, wherein plugs and 26
receptacles having keying elements that cooperate are mating pairs; 27

1 Milette claim 1 has a limitation similar to that highlighted, with “a set of optical
receptacles, each optical receptacle having an opening to receive the optical plug
and a ferrule receiving portion to receive the ferrule, the ferrule receiving portion
defining a second keying geometry to cooperate with the first keying geometry
. . . .” (Milette Clean Copy of Claims, Paper 4, at 1.)
3

wherein each plug and receptacle of a mating pair is marked 1
with a matching visual identification different from plugs and 2
receptacles having different first and second geometries, said visual 3
identification being at least one of color, alphanumerical indicia, or 4
symbol. 5
6
(Clean Copy of Claims Provided by Junior Party, Paper 8 (emphasis added).) 7
To be entitled to a patent under 35 U.S.C. § 102(g), Gurreri must show an earlier 8
reduction to practice, or an earlier conception and later reduction to practice with 9
diligence, of an embodiment of the Count before Milette’s accorded priority date. 10
See Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998) (“[P]riority of 11
invention goes to the first party to reduce an invention to practice unless the other 12
party can show that it was the first to conceive of the invention and that it 13
exercised reasonable diligence in later reducing that invention to practice.”). That 14
is, Gurreri must provide evidence of a described and enabled embodiment meeting 15
all the limitations of the Count before 22 September 2003 to be entitled to priority. 16
(See Declaration, Paper 1, at 4.) 17
Gurreri argues that the MT-RJ Secure connector system embodies every 18
element of the Count and that it actually reduced to practice that connector system 19
no later than October 2000. (Motion 4, Paper 119, at 2:8-12.) According to 20
Gurreri, in June 1999, inventor Michael Gurreri conceived of a keyed optical 21
connector reported to physically protect against unauthorized users connecting to 22
networks. (Id. at 2:22-24.) Gurreri puts forth evidence of a Preliminary Invention 23
Disclosure (“PID”) with illustrations from Mr. Gurreri’s notebook, including page 24
4, which is labeled “MT-RJ” and depicts a plug with different keying positions 25
(Figure 1, Preliminary Invention Disclosure No. 99233 (“PID”), Exh. 1034, at 4), 26
and page 5, which is also labeled “MT-RJ” and depicts a receptacle with different 27
keying positions (Figure 2, PID, Exh. 1034, at 5). (Id. at 3:1-8.) Gurreri admits 28
that these illustrations are identical to the drawings that appear in the Gurreri 29
4

provisional application 60/218,705 (Exh. 1001). (Gurreri Response to Milette 1
Additional Fact 34, Paper 128.) Gurreri puts forth further evidence that after Mr. 2
Gurreri conceived of the MT-RJ Secure connector system, it was reduced to 3
practice by manufacturing the articles depicted in the PID and offering them for 4
sale. (Gurreri Motion 4, Paper 119, at 4:7-10:2.) 5
Gurreri argues that prototypes manufactured from the PID and the 6
connectors offered for sale include each and every element of the Count, including 7
the element of “a set of optical receptacles, each receptacle having an opening to 8
receive said plug and a ferrule-receiving portion to receive said ferrule, said 9
ferrule-receiving portion defining a second keying element to cooperate with said 10
first keying element . . . .” Gurreri points to Figure 4 of its Motion 4, reproduced 11
below, to demonstrate this element of the claim in its evidence of reduction to 12
practice. 13
14
(Gurreri Motion 4, Paper 119, at 6; Exh. 1039.) Figure 4 depicts four receptacle 15
housings in different colors: green, red, yellow, and blue, from left to right. 16
Gurreri indicates that the red receptacle housing, as an example, has a second 17
keying element on the extreme right bottom of the housing, whereas the blue 18
receptacle has a second keying element on the extreme right bottom. (Gurreri 19
Motion 4, Paper 119, at 6:3-10 and 15:16-19.) 20
5

Gurreri explains that only a plug having a first keying element 1
corresponding to the position of the second keying element of a particular 2
receptacle will mate with a particular receptacle. (Id. at 6:10-17 and 15:19-21.) 3
For example, Gurreri presents Figure 3, reproduced below, which depicts the plugs 4
corresponding to the receptacles of Figure 4. 5
6
(Gurreri Motion 4, Paper 119, at 5; Exh. 1038.) Figure 3 depicts four plug 7
housings in different colors: green, red, yellow, and blue, from left to right. 8
Gurreri also presents Figure 5, reproduced below, to provide another view of the 9
plugs. 10
6

1
Figure 5 depicts four plug housings in different colors: red, yellow, green, and 2
blue, from left to right. Gurreri notes that the first keying element (a slot) on the 3
front of the red and blue plug housings are at the extreme left and right, 4
respectively, and, thus are positioned to receive the second keying elements of the 5
red and blue housings, shown above in Figure 4. (Gurreri Motion 4, Paper 119, at 6
15:23-27.) 7
According to Gurreri, the receptacles depicted in Figure 3 have a second 8
keying element, which corresponds specifically with the first keying element of a 9
particular plug, due to the location of the keying elements on the respective 10
housings of the receptacle and plug. Gurreri cites to the declarations of inventors 11
Gurreri and Erdman and to the declaration of Rafael Delgado2, in support. (Gurreri 12
Motion 4, Paper 119, at 6:17.) In each declaration, the witness states that: 13

2 Mr. Delgado testifies that he is employed at TE Connectivity as a manufacturing
engineer and has 14 years of experience in manufacture and production of
optical/electrical connectors. He testifies that he is familiar with the MT-RJ Secure
Connector and understands its design, functionality, and operation. (Delgado
Decl., Exh. 1033, ¶ 1.) We consider Mr. Delgado to be qualified to testify about
the subject matter of this Interference.
7

Referring to Ex. 1038, four (4) plug housing are shown – green, 1
red, yellow and blue (from left to right). Each housing shows a front 2
face defining an opening configured to accommodate a ferrule, and 3
keying slots in different positions for each of the different colored 4
connectors. Also visible are other alignment slots around the opening 5
to facilitate the plug’s prealignment in the receptacle to aid in guiding 6
the ferrule into the opening in the ferrule-receiving portion of the 7
receptacle. 8
Referring to Ex. 1039, four (4) receptacle housings are shown – 9
green, red, yellow and blue (from left to right). Each receptacle 10
housing corresponds to a similar colored plug in Exhibit 38. Each 11
receptacle comprises an opening to receive the front of a plug, and a 12
ferrule-receiving portion defining a ferrule opening to receive the 13
plug’s ferrule. Around the ferrule opening on the ferrule-receiving 14
portion are alignment protrusions that are received in the 15
corresponding alignment slots in the plug’s front face. The ferrule-16
receiving portion also comprises a second keying element on the 17
bottom. The second keying element is disposed in a different position 18
for each different receptacle. 19
From Exhibits 1038 and 1039, it is apparent that plugs and 20
receptacles of the same color have keying elements that are in 21
corresponding positions such that the first keying element of the plug 22
(i.e., a slot) receives the second keying element of the receptacle. 23
Corresponding plugs and receptacles are referred to as mating pairs. 24
Conversely, it is apparent from Ex. 1038 and 1039, that plugs and 25
receptacles of different colors having keying element that will not 26
cooperate, but rather the second keying element will abut the front 27
face of the plug and prevent it from mating with the receptacle. 28
29
(Second Declaration of Michael L. Gurreri, Exh. 1031, ¶ 11-13; Declaration of 30
Rafael Delgado, Exh. 1033, ¶ 9-11; and Second Declaration of David Erdman, 31
Exh. 1046, pp. 1- 2, ¶ 4-6.) Though the declarations discuss a “ferrule-receiving 32
portion,” Gurreri does not direct us to evidence of how the second keying element 33
is defined by a “ferrule-receiving portion.” 34
Milette argues that, in fact, the second keying element depicted in Gurreri’s 35
evidence of conception and reduction to practice cannot be defined by a “ferrule-36
8

receiving portion.” (Milette Opp. 4, Paper 123, at 23:24-25:18.) According to 1
Milette, those of skill in the art would have also understood that the MT-RJ 2
connectors depicted in the PID and the pictures of the connectors made from the 3
PID do not have a “ferrule-receiving portion,” as described in Gurreri’s ’976 4
patent, but use a different means to accept and align optical fibers. (Milette Opp. 5
4, Paper 123, at 24:1-11.) 6
Milette relies on the testimony of Eric R. Pearson3 for this argument. (First 7
Declaration of Eric R. Pearson (“Pearson Decl.”), Exh. 2004.) Mr. Pearson 8
testifies that a “ferrule” is a “rigid structure that protects, aligns and holds the 9
fibers in a fiber optic connector.” (Pearson Decl., Exh. 2004, at ¶ 12.) Mr. Pearson 10
testifies that the Gurreri ’976 patent describes two different types of connectors: 11
the MT-RJ connector and the LC connector. (Pearson Decl., Exh. 2004, ¶¶ 12-16 12
and 35, citing ’976 patent, Exh. 1004, at 4:13-35, 7:23-25, and 9:36-43.) Mr. 13
Pearson contrasts the MT-RJ connector with the LC connector. 14
Mr. Pearson testifies that the LC connector plug has a circular opening on its 15
face, within which a cylindrical ferrule resides, extending slightly beyond the front 16
face of the plug. (Pearson Decl., Exh. 2004, at ¶ 14, citing Deposition of Michael 17
Gurreri, 30 April 2012 (“Gurreri Deposition”), Exh. 1015, at 38:12-39:4 (see also 18
39:5-12).) Mr. Pearson testifies that when the LC connector plug and receptacle 19
are mated, the entire plug is received by the receptacle, and the cylindrical ferrule 20
is separately received by a cylindrical post structure protruding from the back of 21

3 Mr. Pearson testifies that he has 34 years of professional experience in the fiber
optic communications industry, as well as a Bachelor’s Degree and a Master’s
Degree in Metallurgy and Material Science. Mr. Pearson testifies that he has
authored five books and twenty manuals on fiber optic installation, as well as over
eighty articles in the field of fiber optics, among other accomplishments. (Pearson
Decl., Exh. 2004, at ¶1.) Mr. Pearson is qualified to testify on the subject matter of
this Interference.
9

the LC receptacle housing. (Pearson Decl., Exh. 2004, at ¶¶ 15 and 16, citing 1
Gurreri Deposition, Exh. 1015, at 61:10-12 (see also 61:12-16).) Thus, according 2
to Mr. Pearson, who relies on Mr. Gurreri’s testimony, the cylindrical post 3
structure of the LC connector is the “ferrule-receiving portion.” (See Pearson 4
Decl., Exh. 2004, at ¶ 33.) Mr. Pearson testifies further that those of skill in the art 5
would have understood that the shape of this cylindrical post structure can be 6
changed in the LC connector to provide a “second keying element” and that the 7
second keying element would then be defined by the “ferrule-receiving portion,” as 8
recited in the Count. (Pearson Decl., Exh. 2004, at ¶ 34.) 9
Mr. Pearson’s testimony is support by the ’976 patent. Figure 9 of the ’976 10
patent is reproduced below. 11
12
The ’976 patent provides the following description of Figure 9. 13
FIG. 9 shows a receptacle 900 for receiving a particular plug (not 14
shown) and is one of a set of different receptacles. The receptacle 900 15
has a second geometry configured to receive the first geometry of a 16
plug. The second geometry comprises a cavity 901 to receive a plug 17
and a ferrule-receiving portion 904 having a borehole 902 to receive 18
the ferrule of the plug. The ferrule-receiving portion 904 defines a 19
second keying element 903 to cooperate with a first keying element of 20
a particular plug. 21
22
10

(’976 Patent, Exh. 1004, at 7:17-25; see Pearson Decl., Exh. 2004, at ¶ 34.) The 1
’976 patent also explains that elements 905, 906, 907, and 908 make up the second 2
keying element. (’976 patent, Exh. 1004, at 9:46-57.) According to Mr. Pearson, 3
the LC connector exemplifies a connector of the Count because it has a “ferrule-4
receiving portion” that accepts the cylindrical ferrule and has a structure that can 5
accommodate different keys. 6
Mr. Pearson contrasts the structure of the of the MT-RJ connector, which is 7
depicted in Gurreri’s evidence of conception and reduction to practice, with this 8
structure of the LC connector. According to Mr. Pearson, the MT-RJ connector 9
uses a “pin and hole” system to align the optical fibers, wherein precision 10
alignment pins on the plug housing are received into holes in the back of the 11
receptacle housing allow for alignment of the optical fibers. (Pearson Decl., Exh. 12
2004, ¶ 12, citing the FOCIS Specification PN-4172 document, Exh. 1007, 13
provided by Gurreri as evidence of standard features of an MT-RJ connector (see, 14
e.g., Gurreri Motion 1, Paper 21, at 7), at p. 5, describing “alignment pin 15
locations”.) According to Mr. Pearson, the slots and ribs that serve as the keying 16
elements in the MT-RJ connector are used only for pre-alignment of the plug 17
housing, not for the precise alignment that is required of the ferrule in a fiber optic 18
connector. (Pearson Decl., Exh. 2004, ¶ 12.) Mr. Pearson explains that 19
[a] typical MT-RJ receptacle has a receptacle ferrule, with its front 20
face positioned flush with the back face of the receptacle housing – it 21
does not protrude into the receptacle cavity. When an MT-RJ plug is 22
mated with the receptacle it is the leading face of the plug ferrule that 23
contacts the face of the receptacle ferrule positioned flush with the 24
back of the receptacle. 25
26
(Id. at ¶ 13.) Thus, according to Mr. Pearson, the plug ferrule contacts the 27
receptacle ferrule of the MT-RJ contact, but is not received by a “ferrule-receiving 28
portion.” 29
11

Mr. Pearson’s understanding is reflected in the description of the MT-RJ 1
connectors in the Gurreri ‘976 patent, which states: 2
The final mating may be between the conductive elements of the 3
connector system, such as, for example, between a couple of MT-type 4
ferrules which employ precise alignment pins/receiving holes on the 5
ferrule face. Such ferrules are well known in the art. By pre-aligning 6
the MT ferrules through the synergistic use of the key and slot, the 7
inter-engagement of the closely-toleranced alignment pins/receiving 8
holes is facilitated. The above-described synergistic keying and 9
aligning feature of the present invention is realized with the MT-RJ 10
connector (Tyco Electronics Harrisburg Pa). 11
12
(’976 patent, Exh. 1004 at 4:25-35; see Pearson Decl., Exh. 2004, at ¶ 12.) This 13
evidence supports Mr. Pearson’s testimony that the MT-RJ connector relies on pins 14
and holes to achieve the alignment of the optical fibers, not a “ferrule-receiving 15
portion.” Thus, Milette argues that second keying element of the MT-RJ connector 16
receptacle is not defined by a “ferrule-receiving portion,” but by a different 17
structure that protrudes from the receptacle housing. (Milette Opp. 4, Paper 123, at 18
24:1-15; Pearson Decl., Exh. 2004, at ¶¶ 16 and 35.) 19
Gurreri does not rely on evidence to contradict Mr. Pearson’s testimony. 20
Instead, Gurreri argues that Milette has only highlighted differences between the 21
MT-RJ and LC connectors and that these differences are not elements of the 22
Count. (Gurreri Reply 4, Paper 125, at 10:5-11:19.) Specifically, Gurreri argues 23
that Milette requires that the “ferrule-receiving portion” be a post structure to meet 24
the limitations of the Count. (Id., at 10:8-19.) Gurreri also argues that Milette 25
requires that the “ferrule-receiving portion” must align the ferrule (id., at 10:20-26
12:11) or be disconnected from the sides of the connector (id. at 11:12-16) to meet 27
the limitations of the Count. 28
Gurreri mischaracterizes Milette’s argument. Milette argues that the 29
evidence put forth by Gurreri does not demonstrate a “ferrule-receiving portion” 30
12

that defines a second keying element. Milette discusses the post structure of the 1
LC connector only as an example of such a “ferrule-receiving portion,” not as 2
further limitations on the Count. 3
Having considered the parties’ evidence and arguments, we agree with 4
Milette that the MT-RJ connector system relied upon by Gurreri does not show a 5
“ferrule-receiving portion defining a second keying element” as that phrase is used 6
in Gurreri’s claim 1 and explained in Gurreri’s written description. The receptacle 7
keying elements in Gurreri’s Fig. 4 have not been shown to be part of the ferrule-8
receiving portion. Gurreri has failed to persuade us that its evidence demonstrates 9
a “ferrule-receiving portion defining a second keying element.” 10
The preponderance of the evidence on the record before us does not show 11
that Gurreri conceived of or reduced to practice the subject matter of the Count 12
before 22 September 2003, Milette’s earliest accorded priority date. Thus, Gurreri 13
is not entitled to priority of the subject matter of the Count under 35 U.S.C. 14
§ 102(g). 15
Furthermore, we determine that Milette Miscellaneous Motion 2, to exclude 16
Gurreri evidence (Paper 133) is moot, because even when we consider the 17
evidence that Milette seeks to exclude, we deny Gurreri Motion 4 for priority. 18
Judgment will be entered separately. 19

13

cc (via electronic mail):

Attorney for Gurreri:

Stephen J. Driscoll
Theodore Naccarella
SAUL EWING, LLP
sdriscoll@saul.com
tnaccarella@saul.com

Attorney for Milette:

Matthew B. Lowrie
George E. Quillin
FOLEY & LARDNER LLP
mlowrie@foley.com
gquillin@foley.com