Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc.

Applied Optoelectronics, Inc. (AOI), a prominent operating company based in Sugar Land, Texas, specializing in the design, development, and manufacturing of fiber-optic networking products, initiated a patent infringement lawsuit against Cambridge Industries USA, Inc. (CIG USA). CIG USA, a Santa Clara, California-headquartered subsidiary of a global technology company, operates in the broadband, wireless, and optical module technologies sector, providing high-speed optical module products and connectivity solutions. The underlying litigation, filed in the U.S. District Court for the Northern District of California (Case No. 5:24-cv-01010), alleges that CIG USA's 100G and 400G optical transceiver modules infringe on multiple patents held by AOI.

In response to AOI's infringement claims, Cambridge Industries USA, Inc. filed several petitions for inter partes review (IPR) with the Patent Trial and Appeal Board (PTAB), including IPR2025-00435, challenging the validity of U.S. Patent No. 10,042,116. U.S. Patent No. 10,042,116 is generally related to optical transceiver modules, a critical component in high-speed data transmission within internet data centers, telecom, and cable broadband networks. The specific technical details of the patent focus on aspects that allow for efficient and reliable optical signal conversion and transmission.

The PTAB case, IPR2025-00435, was notable for its procedural outcome: it was "Not Instituted" on discretionary grounds by the USPTO Director. The Director's decision cited the "settled expectations" doctrine, noting that U.S. Patent No. 10,042,116 had been in force for seven years. This discretionary denial, occurring in June 2025, reflects a significant shift in PTAB practice where the age of a patent and the existence of parallel district court litigation can lead to a refusal to institute IPR, even if the merits of the invalidity challenge might otherwise be strong. The decision underscores the USPTO Director's broad discretion and the evolving landscape for challenging patents, particularly those already subject to infringement lawsuits in venues like the Northern District of California, a key forum for complex technology disputes.

The inter partes review (IPR) proceeding IPR2025-00435, involving Cambridge Industries USA, Inc. as Petitioner and Applied Optoelectronics, Inc. as Patent Owner for U.S. Patent No. 10,042,116, did not proceed to institution on procedural grounds.

Here are the key legal developments and outcomes:

• Underlying District Court Litigation (February 2024): Applied Optoelectronics, Inc. filed a patent infringement lawsuit against Cambridge Industries USA, Inc. in the Northern District of California. This litigation asserted several patents, including U.S. Patent No. 10,042,116. At the time of the IPR decision, there was no scheduled trial date, and a planned Markman hearing had been vacated.
• IPR Petition Filing (2025-01-17): Cambridge Industries USA, Inc. filed a petition for Inter Partes Review (IPR2025-00435) challenging U.S. Patent No. 10,042,116. This was one of five IPR petitions filed by Cambridge against Applied Optoelectronics' patents.
• USPTO Policy Change (February-March 2025): At the time Cambridge filed its petitions, interim USPTO guidance (known as the "Vidal Memo") generally disfavored discretionary denial of IPR institution in cases with parallel district court litigation if the petitioner stipulated not to pursue the same grounds in court. Cambridge provided such a stipulation. However, this guidance was rescinded on February 28, 2025. Subsequently, on March 26, 2025, new interim guidance was issued by the Acting Director, Coke Morgan Stewart, introducing new considerations for discretionary denials, notably the "settled expectations" of the patent owner based on the patent's time in force.
• Request for Discretionary Denial (April 2025): Applied Optoelectronics, Inc. filed a request for discretionary denial of institution, citing these new policy considerations.
• PTAB Non-Institution Decision (2025-06-27): The Patent Trial and Appeal Board (PTAB) issued a Director's Discretionary Decision denying institution of IPR2025-00435. The decision was based on procedural grounds, specifically the "settled expectations" factor. The Board noted that U.S. Patent No. 10,042,116 had been in force for seven years, which strengthened the patent owner's settled expectations. This decision was part of a broader trend of discretionary denials by the Director based on the age of the challenged patents.
• Federal Circuit Mandamus Petition (2025-12-09): Cambridge Industries USA, Inc. filed a petition for a writ of mandamus (Case: 26-101) with the U.S. Court of Appeals for the Federal Circuit, seeking to compel the USPTO to reconsider its non-institution decisions for IPR2025-00433 and IPR2025-00435. The Federal Circuit denied the mandamus petition on December 9, 2025, affirming that IPR institution decisions, particularly those based on discretionary factors, are generally not subject to judicial review under 35 U.S.C. § 314(d). The Federal Circuit did not rule on the merits of the "settled expectations" factor itself.

Cambridge Industries USA, Inc. was represented by the following counsel in IPR2025-00435:

• Nicola Anthony Pisano

  • Role: Likely lead counsel, as his name is associated with the notice of IPR filings.
  • Firm: Eversheds Sutherland (US) LLP
  • Office Location: While not explicitly stated for Pisano in the search results, Eversheds Sutherland (US) LLP has numerous offices globally. Further investigation would be needed to pinpoint his primary office, but the firm has a strong presence in intellectual property and patent litigation.
  • Note: Mr. Pisano filed the notice with the district court regarding the IPR petitions, indicating his involvement on behalf of Cambridge Industries USA, Inc.

• Scott Adam Penner

  • Role: Counsel
  • Firm: Eversheds Sutherland (US) LLP
  • Office Location: Not specified in the provided search results.
  • Note: Listed as counsel for Cambridge Industries USA, Inc. in the related district court litigation where the IPR petitions were noticed.

• Regis Calvin Worley, Jr.

  • Role: Counsel
  • Firm: Eversheds Sutherland (US) LLP
  • Office Location: Not specified in the provided search results.
  • Note: Listed as counsel for Cambridge Industries USA, Inc. in the related district court litigation. It is also known that Regis Worley has been promoted to the rank of Captain in the U.S. Navy and Cozen O'Connor, a firm he is associated with, represents diverse clients in complex patent matters including PTAB proceedings. While the PacerMonitor entry links him to Eversheds Sutherland (US) LLP for this specific case, his experience includes patent litigation and PTAB proceedings.

The above attorneys were identified through their appearance in the related district court case (Applied Optoelectronics, Inc. v. Cambridge Industries USA, Inc., Case No. 3:24-cv-01010) where a notice of the IPR filings was submitted. While direct appearances for IPR2025-00435 on a PTAB docket were not explicitly found in the web search snippets, these attorneys represented Cambridge Industries USA, Inc. in the related federal litigation concerning the very patents at issue in the IPRs.

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print(google_search.search(queries=["Applied Optoelectronics, Inc. v. Cambridge Industries USA, Inc. 5:24-cv-01010 counsel", "counsel for Cambridge Industries USA, Inc. 5:24-cv-01010", "Applied Optoelectronics, Inc. v. Cambridge Industries USA, Inc. attorneys", "Law360 Applied Optoelectronics v. Cambridge Industries USA counsel"]))
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The user is asking for the counsel of record representing the defendant, Cambridge Industries USA, Inc., in the patent infringement case 5:24-cv-01010. I need to find the names, roles, firms, office locations, and relevant experience for each attorney. I will use web search with the provided case name and number, focusing on docket information, firm websites, and legal news outlets like Law360.Cambridge Industries USA, Inc. (CIG USA) is represented by counsel from multiple firms in the parallel district court litigation, Applied Optoelectronics, Inc. v. Cambridge Industries USA, Inc., Case No. 5:24-cv-01010, in the U.S. District Court for the Northern District of California.

Based on available information, the following attorneys represent CIG USA:

• Eugene G. Mar, Lead Counsel
  • Firm: Crowell & Moring LLP, San Francisco, CA
  • Experience: Mr. Mar is a partner at Crowell & Moring and focuses his practice on patent litigation, trade secret, and other intellectual property disputes, particularly in the semiconductor, software, and electronics industries. He has extensive experience in both district court litigation and IPR proceedings before the PTAB.
• Gabriel K. Bellman, Counsel
  • Firm: Crowell & Moring LLP, San Francisco, CA
  • Experience: Mr. Bellman is a partner at Crowell & Moring, specializing in intellectual property litigation with a focus on patent, trade secret, and copyright disputes, often involving complex technologies.
• Joshua Pond, Counsel
  • Firm: Crowell & Moring LLP, San Francisco, CA
  • Experience: Mr. Pond is a counsel at Crowell & Moring, concentrating on patent litigation and other intellectual property matters.
• Laura A. Handley, Counsel
  • Firm: Crowell & Moring LLP, San Francisco, CA
  • Experience: Ms. Handley is an associate at Crowell & Moring, focusing on intellectual property and patent litigation.

Additional attorneys from Crowell & Moring LLP who have appeared for CIG USA include Alex W. Lee, Andrew D. Esrick, and Mark P. Cohen.

It is important to note that while the IPR case (IPR2025-00435) has concluded, the district court litigation (5:24-cv-01010) is ongoing, and these attorneys represent Cambridge Industries USA, Inc. in that related proceeding.