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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`FINISAR CORPORATION
`Petitioner
`v.
`THOMAS SWAN & CO. LTD.
`Patent Owner
`_____________________
`
`Inter Partes Review Case No. IPR2014-00460
`Patent 7,145,710
`_____________________
`
`
`
`CORRECTED PETITION FOR INTER PARTES REVIEW OF U.S.
`PATENT NO. 7,145,710 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R.
`§§ 42.1-.80, 42.100-.123
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`
`

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`IPR2014-00460
`Inter Partes Review of USPN 7,145,710
`TABLE OF CONTENTS
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`I. INTRODUCTION ................................................................................................ 1
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`II. MANDATORY NOTICES AND FEES ............................................................. 4
`
`III. CERTIFICATION OF GROUNDS FOR STANDING ..................................... 6
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`IV. BACKGROUND ................................................................................................ 6
`A. OVERVIEW OF THE ‘710 PATENT ............................................................. 6
`
`
`V. CLAIM CONSTRUCTION ................................................................................ 8
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`VI. LEVEL OF ORDINARY SKILL IN THE ART .............................................. 13
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`VII. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ................... 13
`A. Summary of Grounds for Challenge .............................................................. 14
`B. Ground 1: Claims 1, 2, 4-6, 8, 9, 11, 12, and 14 are anticipated by Warr
`Thesis .................................................................................................................... 16
`C. Ground 2: Claims 6 and 12 are rendered obvious by the combination of Warr
`Thesis and Johansson............................................................................................ 32
`D. Ground 3: Claims 7 and 13 are rendered obvious by the combination of Warr
`Thesis and Tomlinson ’865 .................................................................................. 38
`E. Ground 4: Claims 3 and 10 are rendered obvious by the combination of Warr
`Thesis and McManamon ...................................................................................... 41
`F. Ground 5: Claims 1, 3, 9, 10, and 12 are anticipated by Crossland ’787 ....... 47
`G. Ground 6: Claims 7 and 13 are rendered obvious by the combination of
`Crossland ’787 and Tomlinson ’865 .................................................................... 56
`
`
`VIII. CONCLUSION .............................................................................................. 60 
`
`i
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`IPR2014-00460
`Inter Partes Review of USPN 7,145,710
`
`I.
`
`INTRODUCTION
`Petitioner Finisar Corporation (“Finisar”) requests inter partes review of all
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`claims of U.S. Patent No. 7,145,710 (“the ’710 patent”) (Ex. 1001), assigned on its
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`face to patent to Thomas Swan & Co. Ltd. (“Thomas Swan”). The claims of
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`the ’710 patent are generally directed to “optical devices” that use a spatial light
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`modulator (“SLM”) comprising a two-dimensional array of pixels or “phase
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`modulating elements” to control the direction of incident light beams. The
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`technology claimed in the ’710 patent has applications in fiber optic
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`communications. The original patent application that led to the issuance of the ’710
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`patent was filed in the United Kingdom on September 3, 2001.
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`As explained further below, the named inventor on the ’710 patent, Melanie J.
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`Holmes, improperly claimed as her own subject matter that was previously
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`developed and published by her former colleagues at the University of Cambridge
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`(“Cambridge”). For about a decade prior to the filing of the priority application in
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`2001, students and researchers at Cambridge, working in Professor William
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`Crossland’s Photonics & Sensors group, had investigated and published research
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`relating to the use of liquid crystal SLMs for performing all kinds of optical
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`functions for use in optical communication and other applications. This work is well
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`documented and described in numerous publications emanating from Dr. Crossland’s
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`group in the 1990s. See Ex. 1016, http://www-g.eng.cam.ac.uk/photonics_sensors/
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`1
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`IPR2014-00460
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`people/bill-crossland.htm (“Bill Crossland held the position of Group Leader of the
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`Photonics & Sensors Group . . . from 1992 . . . until his retirement at the end of September
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`2009. . . He is generally regarded as the founding father of liquid crystal over silicon
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`(LCOS) technologies.”) and Ex. 1017, http://www-g.eng.cam.ac.uk/
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`photonics_sensors/publications/index.htm (providing an exemplary listing of
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`publications from the Photonics & Sensors group).
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`In the years prior to the filing of the U.K. priority application, Dr. Holmes
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`collaborated with Cambridge on the development and use of liquid crystal SLMs for
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`optical beam routing and other applications. The collaboration began in at least 1995
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`(Ex. 1012) [article entitled “Low Crosstalk Devices for Wavelength-Routed
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`Networks,” by M.J. Holmes, W. Crossland et al., IEE Colloquium on Guided Wave
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`Optical Signal Processing, IEE Dig. No. 95-128 London, UK] and continued through at
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`least 2001 (Ex. 1013) [article entitled “Holographic Optical Switching: The
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`‘ROSES’ Demonstrator,” by W.A. Crossland, K.L. Tan, M.J. Holmes et al., Journal
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`of Lightwave Technology, Vol. 18, No. 12, Dec. 2000, at 1845-54]. During this
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`time, there was one student that worked in Prof. Crossland’s group, Stephen T. Warr
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`that conducted research relating to liquid crystal SLMs for use in optical routing that
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`culminated in a Ph.D. dissertation published by Cambridge. This dissertation forms
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`the basis for several grounds in this petition, either alone as an anticipation reference,
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`or in combination with other art for obviousness grounds. Another United States
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`2
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`IPR2014-00460
`Inter Partes Review of USPN 7,145,710
`patent application filed by Prof. Crossland (U.S. Patent App. 2001/0050787,
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`“Crossland ’787”) forms the basis for two more grounds in this petition. Each of the
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`references relied on are prior art under either § 102(b) or § 102(e). A further
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`Crossland reference, M. Johansson, W. Crossland, et al., “Computer-controlled,
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`adaptive beam steering, implemented in a FLC-SLM free-space optical switch” is
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`another Cambridge reference relevant to the implementation of “correcting the initial
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`hologram” (claim 6) and the use of an optical sensor (claim 12).
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`As explained further below, it is apparent that Dr. Holmes claimed as her own
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`the work of Dr. Warr and Prof. Crossland after learning about their research through
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`her collaboration with Cambridge. A review of the publication history of the
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`Cambridge group preceding leading Dr. Holmes’s U.K. priority application makes
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`clear that the researchers in the group worked closely together—sometimes even in
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`the same laboratories using the same devices—and openly shared their ideas with
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`each other. In addition, these researches frequently cite each other’s work in their
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`publications. Thus, by the time of Dr. Holmes filed her U.K. priority application, a
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`person having ordinary skill in the art (“PHOSITA” 1) would have understood that
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`the inventions claimed by Dr. Holmes in the ’710 patent were either anticipated
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`(sometimes by many years) or rendered obvious by the work of others at Cambridge.
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`1 All references to the knowledge or understanding of a PHOSITA are as of September 3,
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`2001 unless otherwise specified.
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`3
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`IPR2014-00460
`Inter Partes Review of USPN 7,145,710
`Given the working environment at Cambridge and the long history of cross-cited
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`publications, a PHOSITA would have been strongly motivated to combine any of the
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`publications from Dr. Crossland’s group.
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`A PHOSITA would also have understood that the invention claimed in certain
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`dependent claims of the ’710 patent were rendered obvious in view of work from
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`other sources outside of Cambridge. These claims, related to functionality such as
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`temperature sensors with feedback and the generation of combined holograms were
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`found in the exact same field—the use of pixelated liquid crystal SLMs to steer light
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`beams—as the work at Cambridge addressed. These references addressed common
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`problems in the field recognized by the authors of Warr Thesis and Crossland ’787.
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`This petition shows that there is a reasonable likelihood that Petitioners will
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`prevail on all claims based on prior art that was not before the PTO. This prior art
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`anticipates or renders obvious all claims. Claims 1-14 of the ’710 patent should be
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`found invalid and canceled.
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`II. MANDATORY NOTICES AND FEES
`Real Party-in-Interest: Finisar Corporation is the real party-in-interest in this
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`petition.
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`Related Matters: The following matter may affect or be affected by a decision
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`in this proceeding: Thomas Swan & Co. Ltd. v. Finisar Corp., et al., No. 2:13-cv-178
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`(E.D. Texas). The ’710 patent has been asserted in that matter. Additionally,
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`4
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`IPR2014-00460
`Inter Partes Review of USPN 7,145,710
`Petitioner is filing additional petitions for inter partes review against three other
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`patents asserted in the above litigation, namely, U.S. Patent Nos. 7,664,395;
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`8,089,683; and 8,335,033, all of which are related to the ’710 patent.
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`Counsel: Lead counsel in this case is David Radulescu (PTO Reg. No.
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`36,250); backup counsel is Gregory Maskel (PTO Reg. No. 56,229) and Kurt
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`Rauschenbach (PTO Reg. No. 40,137). Powers of attorney accompany this Petition.
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`Service Information: Email: david@radulescullp.com; greg@radulescullp.com
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`Address: Radulescu LLP, 136 Madison Ave., 6th Floor, New York, NY 10016
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`Telephone: (646) 502-5950
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`Facsimile: (646) 502-5959
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`Email: kurt@rauschenbach.com
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`Address: Rauschenbach Patent Law Group, PO Box 849, Franconia, NH
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`03580
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`Telephone: (603) 823-5590
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`Facsimile: (603) 823-5706
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`Please direct all correspondence to lead counsel at the above address.
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`Petitioners consent to email service at: david@radulescullp.com and
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`greg@radulescullp.com.
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`Payment: Under 37 C.F.R § 42.103(a), the Office is authorized to charge the
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`fee set forth in 37 C.F.R. § 42.15(a) to Deposit Account No. 506352 as well as any
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`additional fees that might be due in connection with this Petition.
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`5
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`IPR2014-00460
`Inter Partes Review of USPN 7,145,710
`III. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies under 37 C.F.R § 42.104(a) that the patent for which
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`review is sought is available for inter partes review and that Petitioner is not
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`barred or estopped from requesting an inter partes review challenging the patent
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`claims on the grounds identified in this Petition.
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`IV. BACKGROUND
`A. OVERVIEW OF THE ‘710 PATENT
`Summary: The ’710 patent is “relate[d] to the general field of controlling one
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`or more light beams by the use of electronically controlled devices.” (Ex. 1001 at
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`1:18-20). The central element of the claimed devices is a particular type of “spatial
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`light modulator” or “SLM.” The SLM is made up of a two-dimensional array of
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`“phase modulating elements” – e.g. liquid crystal pixels. (Ex. 1001 at Abstract;
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`2:53-54; 3:35-36; 6:15-16). The specification describes grouping the phase
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`modulating elements such that light beams that are incident on particular groups are
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`controllable independently of each other. (Ex. 1001 at 2:56-68). The specification
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`further suggests that the size, shape and position of groups of those phase-
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`modulating elements need not be fixed and can, if need be, be varied. (Ex. 1001 at
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`11:48-50).
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`The specification teaches that the SLM is able to modify, in a controlled
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`manner, the direction, power, focus, aberration, or beam shape of a light beam. (Ex.
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`1001 at 11:60-65). That modification is achieved through the display of a
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`6
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`IPR2014-00460
`Inter Partes Review of USPN 7,145,710
`“hologram” at each group of pixels. (Ex. 1001 at 11:51-55). A “hologram” is
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`displayed by applying voltages to each pixel of the group. (Ex. 1001 at 22:44-46).
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`The applied voltage affects the orientation of the liquid crystal. (Ex. 1001 at 12:25-
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`29). When the light strikes the liquid crystal, the phase of the light at each pixel is
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`“modulated” or modified based on the orientation of the liquid crystal. (Ex. 1001 at
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`12:38-41).
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`Cited Art: None of the references listed above in Section VII were considered
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`during the original prosecution of the ’710 patent.
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`Prosecution History: The ’710 patent is part of a family of patents that
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`originated from UK Patent Application No. 0121308.1, filed on September 3, 2001.
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`That family includes U.S. Patent Nos. 7,664,395; 8,089,683; and 8,335,033. PCT
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`Application No. PCT/GB02/04011 was then filed on September 2, 2002. Upon
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`attaining national stage in the United States on September 10, 2004, U.S. Patent
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`Application No. 10/487,810 was prosecuted. The first office action on March 7,
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`2006 rejected no claims on the basis of prior art, but instead issued a restriction
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`requirement. (Ex. 1002, March 7, 2006 Office Action at 2-3). The applicant elected
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`claims 1-14 of the original application, which were allowed by the PTO without
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`modification on May 11, 2006. (Ex. 1002, May 11, 2006 Notice of Allowability).
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`Claims of the ’710 Patent: Claim 1 of the ’710 patent is exemplary and reads:
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`7
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`IPR2014-00460
`Inter Partes Review of USPN 7,145,710
`1. A method of operating an optical device comprising an SLM
`having a two-dimensional array of controllable phase-modulating elements,
`the method comprising
`delineating groups of individual phase-modulating elements;
`selecting, from stored control data, control data for each group of
`phase-modulating elements;
`generating from the respective selected control data a respective
`hologram at each group of phase-modulating elements; and
`varying the delineation of the groups and/or the selection of control
`data whereby upon illumination of said groups by respective light beams,
`respective emergent light beams from the groups are controllable
`independently of each other.
`
`V. CLAIM CONSTRUCTION
`This Petition shows that the challenged claims of the ‘710 patent (Ex. 1001)
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`are unpatentable when the challenged claims are given their broadest reasonable
`
`interpretation in light of the specification, and in view of patentee’s allegations in
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`the co-pending litigation.2 The constructions set forth below are provided for
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`purposes of this inter partes review only.
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`Because the named inventor Dr. Holmes was a former collaborator of Drs.
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`Warr, Parker, Tan, and Crossland and a member of the Crossland group at
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`Cambridge, and in fact claimed the work of these and other individuals after learning
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`about their work through her many interactions with various researchers at
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`2 District Courts employ different standards of proof and approaches to claim
`interpretation that are not applied by the USPTO for inter partes review.
`Accordingly, any interpretation or construction of the challenged claims in this
`Petition, either implicitly or explicitly, should not be viewed as constituting, in whole
`or in part, Petitioner’s own interpretation or construction, except as regards the
`broadest reasonable construction of the claims presented. Petitioner reserves the
`right to seek different constructions of these claim terms in a different forum.
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`8
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`IPR2014-00460
`Inter Partes Review of USPN 7,145,710
`Cambridge, the ‘710 patent shares with the asserted prior art references vastly
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`common terminology concerning the same subject matter. As a result, there are few
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`terms in the asserted claims that require construction, as most of the claim terms can
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`be found verbatim in the asserted prior art in the very same context.
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`The broadest reasonable construction for the term “array” is “an assembly of
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`two or more individual elements, appropriately spaced and energized to achieve
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`desired directional properties.” See Ex. 1018, Chambers Science and Technology
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`Dictionary at 51. This definition from a technical dictionary available on or before
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`the priority date of the ‘710 patent is consistent with the use of the term “array” in
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`the specification of the ‘710 patent. For example, Figures 2, 4, and 7 and the
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`corresponding description in the specification describe arrays of pixels consistent
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`with the proposed construction. See, e.g., Ex. 1001 at Figs. 2, 4, 7, 13:26-36 (“a first
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`array, or block 13 of pixels,” “a second array, or block 14 of pixels,” “displaying a
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`linearly changing phase ramp in an at least one direction across the blocks or arrays
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`13, 14”). Other disclosure of the term in the patent is also consistent with the
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`proposed construction. See, e.g., Ex. 1001 at 13:54-58; 14:24-29.
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`The broadest reasonable construction for the term “controllable phase-
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`modulating elements” in light of the specification is “components, such as pixels,
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`which can change the phase of incident light under certain conditions created by
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`circuitry, such as application of voltage.” This definition is consistent with the use
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`9
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`IPR2014-00460
`Inter Partes Review of USPN 7,145,710
`of the term “controllable phase-modulating elements” in the specification of the ‘710
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`patent. In particular, the specification makes clear that there needs to be a large
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`number of phase-modulating elements for the contemplated optical device to operate.
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`See, e.g., Ex. 1001 at 11:43-48. The specification also discloses embodiments where
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`the phase-modulating elements are pixels. See, e.g., Ex. 1001 at 40:12-14. The
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`specification also provides details of the operation and function of the controllable
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`phase modulating elements, consistent with the proposed construction. See, e.g., Ex.
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`1001 at 13:54-14:13.
`
`The broadest reasonable construction for the term “hologram” in light of the
`
`specification is “a set of modulation values for achieving the desired change in
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`incident light.” See, e.g., Ex. 1001 at 13:63-14:13 (“In one example of this
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`operation, the desired phase modulation is expressed modulo 2pi across the array
`
`extent, and the value of the desired modulo-2pi modulation is established at the
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`centre of each pixel. Then for each pixel, the available level nearest the desired
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`modulation is ascertained and used to provide the actual pixel voltage. This voltage
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`is applied to the pixel electrode for the pixel of concern.”); 14:44-15:6 ("The
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`hologram pattern associated with any general non-linear phase modulation exp
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`jφ(u)=exp j (φ0(u)+φ1(u)+φ3(u) . . . ) where j is the complex operator, can be
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`considered as a product."); 15:11-15 (“Therefore the routing phase modulation
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`results in a set of equally spaced diffraction orders. The greater the number of
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`10
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`IPR2014-00460
`Inter Partes Review of USPN 7,145,710
`available phase levels the closer the actual phase modulation to the ideal value and
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`the stronger the selected diffraction order used for routing.”). While the full scope of
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`this term is not clear in the specification, and is context dependent in the industry, it
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`is clear that the term “hologram” in the ‘710 patent refers generally to modulation
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`“data,” or “values,” or “characteristics,” or “parameters,” or “levels” for a achieving
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`a specific desired modulation of incident light, and the proposed construction
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`encompasses the broadest ascertainable use of the term in the specification. See, e.g.,
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`Ex. 1001 at 20:15-18 (“hologram data”); 13:54-58 (“characteristic”); 13:60-62
`
`(“values”); 13:36-38 (“parameters”); 13:63-14:13 (“level”). See also 21:16-35.
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`The broadest reasonable construction for the term “SLM” or “spatial light
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`modulator” in light of the specification is “a polarisation-independent device that
`
`acts on a light beam or beams incident on the device to provide emerging light
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`beams, which are controlled independently of one another.” See, e.g., Ex. 1001 at
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`Fig. 1, 11:60-65 (“Devices embodying the invention act on light beams incident on
`
`the device to provide emerging light beams which are controlled independently of
`
`one another. Possible types of control include control of direction, control of power,
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`focussing, aberration compensation, sampling and beam shaping.”); see also 11:43-
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`65. The specification makes clear that the spatial light modulator of the alleged
`
`invention must be polarization insensitive or independent for the device to work.
`
`See, e.g., Ex. 1001 at 11:66-12:1 (“polarisation-independent multiple phase liquid
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`11
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`IPR2014-00460
`Inter Partes Review of USPN 7,145,710
`crystal over silicon spatial light modulators (SLMs)”). Indeed, the ‘710 patent
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`expressly disclaims any devices that are not polarisation insensitive/independent.
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`See, e.g., Ex. 1001 at 12:67-13:4 (“The invention may be applied to other devices,
`
`provided they are capable of multiphase operation and are at least somewhat
`
`polarisation independent at the wavelengths of concern.”). The specification
`
`describes several ways of achieving polarisation independence of the SLM. One
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`disclosed way is use of ferroelectric liquid crystal (“FLC”) known to be inherently
`
`polarization independent. See, e.g., Ex. 1001 at 13:6-9. Another disclosed way is
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`use of quarter-wave plate that creates polarisation independence. See, e.g., Ex. 1001
`
`at 13:6-9; 4:9-11, 7:12-14.
`
`The broadest reasonable construction for the term “quarter-wave plate” is “a
`
`thin sheet of doubly refracting crystal material of such thickness as to introduce a
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`phase difference of one quarter-cycle between the ordinary and the extraordinary
`
`components of light passing through, which results in converting polarisation of the
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`light.” See Ex. 1019, McGraw-Hill Dictionary of Scientific and Technical Terms at
`
`1536. This definition from a technical dictionary available on or before the priority
`
`date of the ‘710 patent is consistent with the use of the term “quarter-wave plate” in
`
`the specification of the ‘710 patent. See, e.g., Ex. 1001 at 13:6-9; 4:9-11 (“The SLM
`
`may be integrated on a substrate and have an integral quarter-wave plate whereby it
`
`is substantially polarisation insensitive.”); 7:12-14; 12:30-33; 12:38-64.
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`12
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`IPR2014-00460
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`The broadest reasonable interpretation of the remaining terms of the
`
`challenged claims should be presumed to take on their ordinary and customary
`
`meanings for purposes of the IPR.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`The level of ordinary skill in the art is evidenced by the references. See In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). A person of ordinary skill in
`
`the art (“PHOSITA”) for this patent would have at least a Ph.D., or equivalent
`
`experience, in optics, physics, electrical engineering, or a related field, including at
`
`least three years of experience designing, constructing, and/or testing optical
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`systems. Hall Decl. at ¶ 13. For purposes of this petition, Finisar relies on the
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`September 3, 2001 priority date listed on the face of the ’395 patent as the latest date
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`relevant for the person of ordinary skill in the art analysis.3
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`VII. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Under 37 C.F.R §§ 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner challenges
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`claims 1 through 14 of the ’710 patent. Petitioners request this relief in view of the
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`following references:
`
`
`3 Finisar reserves the right to contest this date in this proceeding and in the
`companion district court case, Thomas Swan & Co. Ltd. v. Finisar Corp., No. 2:13-
`cv-178 (E.D. Texas), for any alleged conception date that Thomas Swan should
`submit during this proceeding, whether earlier or later than the filing of the U.K.
`application in September 2001.
`
`13
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`Exhibit
`
`Description
`
`IPR2014-00460
`Inter Partes Review of USPN 7,145,710
`Publication
`Type of
`Prior Art4
`or Filing Date
`July 1996
`§ 102(b)
`
`June 2000
`
`§ 102(b)
`
`Mar. 15, 2001 § 102(e)
`
`February 1996 § 102(b)
`
`May 18, 2001 § 102(e)
`
`Ex. 1005 “Free Space Switching for Optical Fibre
`Networks,” Stephen Thomas Warr (“Warr
`Thesis”)
`Ex. 1006 “Computer-controlled, adaptive beam
`steering, implemented in a FLC-SLM free-
`space optical switch,” M. Johansson, et al.,
`Diffractive Optics and Micro-Optics, vol.
`41 of OSA Trends in Optics and
`Photonics, PD1. (“Johansson”)
`Ex. 1008 U.S. Patent No. 6,549,865 to Tomlinson
`(“Tomlinson ’865”)
`Ex. 1009 “Optical Phased Array Technology,” Paul
`F. McManamon, et al., Proceedings of the
`IEEE, vol. 84, no. 2, Feb. 1996
`(“McManamon”)
`Ex. 1010 U.S. Patent Application Publication No.
`2001/0050787 to Crossland, et al.
`(“Crossland ’787”)
`
`
`
`A full list of exhibits relied on in this petition is included as Appendix A.
`
`Warr Thesis is a “printed publication” prior art under 35 U.S.C.
`
`§ 102(b). This thesis was indexed and shelved in the Cambridge University library
`
`by at least one year prior to the U.K. Priority Application date of September 3, 2001.
`
`See Hall Decl. at ¶ 51. For Johansson, Finisar’s expert, Katherine Hall, has attested
`
`that it was the general practice to distribute these papers at the OSA conference in
`
`question. See Hall Decl. at ¶ 51.
`
`A.
`Summary of Grounds for Challenge
`
`4 The ’710 patent issued prior to the America Invents Act (the “AIA”).
`Accordingly, Petitioner has used the pre-AIA statutory framework to refer to the
`prior art.
`
`14
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`IPR2014-00460
`Inter Partes Review of USPN 7,145,710
`Inter partes review is requested on the grounds for unpatentability listed in the
`
`index below. In support of the proposed grounds for unpatentability, this Petition is
`
`accompanied by a declaration of a technical expert, Dr. Katherine Hall (Ex. 1004),
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`which explains what the art would have conveyed to a PHOSITA.
`
`Ground
`1
`
`2
`3
`4
`5
`6
`
`
`
`Index of References
`35 USC
`§ 102(b) Warr Thesis
`
`Claims
`1-2, 4-6, 8, 9, 11, 12,
`14
`6, 12
`Warr Thesis and Johansson
`§ 103
`7, 13
`Warr Thesis and Tomlinson ’865
`§ 103
`3, 10
`Warr Thesis and McManamon
`§ 103
`1, 3, 9, 10, 12
`§ 102(e) Crossland ’787
`§ 103
`Crossland ’787 and Tomlinson ’865 7, 13
`
`As cited in the context of specific anticipation grounds of unpatentability, and
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`as supported by Dr. Hall, each anticipatory reference discloses each element of the
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`noted claims arranged as claimed, in a sufficiently detailed manner so as to enable a
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`PHOSITA to practice the claimed invention without engaging in undue
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`experimentation, in light of the general knowledge available in the art. Further,
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`many of the claims would be rendered obvious by the art cited in the grounds of
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`unpatenability described above. In the attached declaration, Dr. Hall provides a
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`thorough discussion of the state of the art at the time of this alleged “invention.” Her
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`declaration makes it clear that all the elements of all the challenged claims lack
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`invention, not only because they had already been described by others, but also
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`because they were obvious. Hall Decl., ¶¶ 46-150.
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`IPR2014-00460
`Inter Partes Review of USPN 7,145,710
`B. Ground 1: Claims 1, 2, 4-6, 8, 9, 11, 12, and 14 are anticipated by
`Warr Thesis
`The Warr Thesis is a prior art reference to the ’710 patent under § 102(b). The
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`Warr Thesis is a Ph.D. dissertation by Steven Warr, a student who worked with Dr.
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`Robert Mears and Prof. William Crossland of Cambridge, all three of whom
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`collaborated with Dr. Holmes years before her alleged invention. The key disclosure
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`in Chapter 5 of the Warr Thesis is a ferroelectric, liquid-crystal signal light
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`modulator (FLC-SLM) “crossbar architecture for interconnecting large arrays of
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`input and output fibres. An array of dynamic holograms can be used to achieve an
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`arbitrary routeing pattern between N inputs and M outputs, and two methods of re-
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`entering the fibre network are considered.” Warr Thesis at 4. The figure in the Warr
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`Thesis for this arrangement is:
`
`Warr Thesis at 89.
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`
`
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`As shown by the following claim charts and discussion herein, and as
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`supported by Dr. Hall, each and every element of claims 1, 2, 4-6, 8, 9, 11, 12, 14 is
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`disclosed in Warr Thesis, arranged as claimed, so as to enable at PHOSITA to make
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`IPR2014-00460
`Inter Partes Review of USPN 7,145,710
`and use the claimed invention without undue experimentation in light of the general
`
`knowledge available in the art. Hall Decl., ¶¶ 53-88.)
`
`[1 pre.] A
`method of
`operating an
`optical device
`comprising an
`SLM having a
`two
`dimensional
`array of
`controllable
`phase
`modulating
`elements, the
`method
`comprising:
`
`To operate an optical device comprising a two dimensional SLM,
`Warr Thesis teaches “the use of programmable computer-
`generated holograms (CGHs)5 displayed on a ferroelectric liquid
`crystal (FLC) spatial light modulator (SLM). The SLM provides
`fast 2-dimensional binary modulation of coherent light and acts
`as a dynamically reconfigurable diffraction pattern.” Warr
`Thesis at viii.
`Warr Thesis also discloses an SLM with an array of phase
`modulating elements. “SLMs typically consist of an array of
`individually controllable pixels…Ferroelectric liquid crystal
`SLMs…can also be readily configured as phase- or as intensity-
`modulators.” Warr Thesis at 7. “To obtain maximum light
`efficiency, the SLM pixels should only modulate the phase of the
`incident Gaussian beam and not the intensity.” Warr Thesis at
`13. “Because each pixel now acts as a perfect (0, π) binary phase
`modulator, the input polariser may also be removed.” Warr
`Thesis at 25.
`The phase modulating elements in Warr Thesis are also
`controllable. “Essentially backplane SLMs operate as optically-
`readable memory. Although the integration of photodiodes onto
`the silicon circuitry also introduces the possibility of optically
`addressed ‘smart pixels’ [50], usually we are only concerned with
`electronic addressing schemes (EASLMs). Two binary storage
`schemes are well known in conventional silicon memory
`technology, and these have been incorporated into EASLM
`designs. The dynamic RAM pixel circuitry [15], figure 2.7(a), has
`a single transistor per pixel and the 1-bit binary memory state is
`stored as a capacitive charge polarity on the actual mirror
`contact.” Warr Thesis at 19-20. See also Warr Thesis at 17, 18,
`107. See Hall Decl. at ¶ 56.
`[1a.]
`The delineation of groups of individual phase-modulating
`delineating
`elements is found in Warr Thesis. “The collimation array in plane
`groups of
`P2 is arranged exactly one focal distance in front of the fibre ends
`
`5 Bold and italicized text are for emphasis in the claim charts in this petition, unless stated
`otherwise.
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`IPR2014-00460
`Inter Partes Review of USPN 7,145,710
`so that the Gaussian signal beams are individually collimated
`through the FLC-SLM. The SLM display area is then divided
`into distinct sub-holograms, such that every input source is
`deflected by a different CGH.” Warr Thesis at 89.
`
`individual
`phase-
`modulating
`elements;
`
`
`Warr Thesis at 89. “Each of the four beams was deflected by a
`separate 80x80 pixel region of the 2DX320IR SLM. This
`transmissive FLC device has 80μm pixels, a 28° FLC switching
`angle, and exhibits a peak response around  = l.lμm
`wavelength.” Warr Thesis at 103.
`
`[1b.] selecting,
`from stored
`control data,
`control data
`for each group
`of phase-
`modulating
`elements;
`
`
`
`Warr Thesis at 103. See Hall Decl. at ¶ 57.
`The devices disclosed in Warr Thesis have stored control data.
`“Essentially backplane SLMs operate as optically-readable
`memory…Two binary storage schemes are well known in
`conventional silicon memory technology, and these have been
`incorporated into EASLM designs. The dynamic RAM pixel
`circuitry [15], figure 2.7(a), has a single transistor per pixel and
`the 1-bit binary memory state is stored as a capacitive charge
`polarity on the actual mirror contact.” Warr Thesis at 19-20. “The
`FLC device displays one frame from a set of phase CGHs which
`have been calculated off-line at an earlier stage and placed in a
`frame store to be recalled on demand.” Warr Thesis at 33.
`Selecting control data for e