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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`FINISAR CORP.
`Petitioner
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`v.
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`THOMAS SWAN & CO. LTD.
`Patent Owner
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`Case IPR2014-00460
`Patent 7,145,710
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`PRELIMINARY RESPONSE BY PATENT OWNER UNDER 37 C.F.R. § 42.107
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`

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`Case No.: IPR2014-00460
`Attorney Docket: 28733-0002IP1
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`
`TABLE OF CONTENTS
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`I. Overview ......................................................................................................................... 1
`II. Related Proceedings ....................................................................................................... 3
`III.
`The Intrinsic Record of the ’710 Patent ........................................................................ 3
`a. Overview of the ’710 Patent ......................................................................................... 3
`b. Cited References ........................................................................................................ 10
`c. Prosecution History .................................................................................................... 11
`IV. Claim Construction ..................................................................................................... 11
`V. Claims 3, 7, 10, and 13 are not obvious in view of the cited prior art ........................... 17
`a. Claims 7 and 13 are not obvious in view of Warr and Tomlinson .............................. 18
`i. The proposed combination of Warr and Tomlinson does not teach or suggest plural
`temperature sensors ..................................................................................................... 18
`ii.
`Neither Warr, nor Tomlinson, disclose “varying the delineation of the groups
`and/or the selection of control data” in response to temperature .................................. 21
`iii.
`There is no motivation to combine Warr with Tomlinson .................................... 24
`b. Claims 7 and 13 are not obvious in view of Crossland and Tomlinson ...................... 26
`i. Neither Crossland nor Tomlinson teach plural sensors .......................................... 26
`ii.
`Neither Crossland nor Tomlinson disclose “varying the delineation of the groups
`and/or the selection of control data” in response to temperature .................................. 27
`iii.
`There is no motivation to combine Crossland with Tomlinson ............................ 30
`c. Claims 3 and 10 are not obvious in view of Warr and McManamon .......................... 31
`d. Claims 3 and 10 are not anticipated by Crossland ..................................................... 36
`VI.
`Finisar has not properly established that the Warr Thesis is prior art ........................ 38
`VII. Conclusion .................................................................................................................. 41
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`i
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`Case No.: IPR2014-00460
`Attorney Docket: 28733-0002IP1
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`TABLE OF AUTHORITIES
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`Case Law
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`Graham v. John Deere Co., 383 U.S. 1, 17 (1966) .................................................. 25, 31, 36
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`In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989) ............................................................ 41
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`In re Lister, 583 F.3d 1307, 1311-12 (Fed. Cir. 2009) .......................................................... 39
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`Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003) .................. 15
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`St. Jude Med., Inc. v. Access Closure, Inc., 729 F.3d 1369, 1381 (Fed. Cir. 2013) ...... 21, 27
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`Thorner v. Sony Computer Entertainment Am. LLC, 669 F.3d 1365, 1367
`(Fed. Cir. 2012) ......................................................................................................... 17
`
`Statutes
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`35 U.S.C. § 314(a) ................................................................................................................ 38
`37 CFR § 1.68 ...................................................................................................................... 39
`37 CFR § 42.2 ...................................................................................................................... 39
`37 CFR § 42.204(b) .............................................................................................................. 38
`37 CFR § 42.22(a)(2) ............................................................................................................ 38
`37 CFR § 42.53 .................................................................................................................... 39
`37 CFR § 42.62(a) ................................................................................................................ 39
`37 CFR § 42.62(a) ................................................................................................................ 39
`37 CFR §§ 42.20(c) .............................................................................................................. 38
`Fed. R. Evid. 701 .................................................................................................................. 39
`Fed. R. Evid. 801(c) .............................................................................................................. 39
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`Case No.: IPR2014-00460
`Attorney Docket: 28733-0002IP1
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`EXHIBIT LIST
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`TS 2001
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`PCT Publication WO 01/90823 A1
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`TS 2002
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`U.S. Patent No. 6,975,786
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`TS 2003
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`TS 2004
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`TS 2005
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`Joint Claim Construction and Prehearing Statement, Thomas Swan & Co. Ltd.
`V. Finisar Corp.,2:13-cv-178 (E.D. Texas).
`
`Fiber Optics Standard Dictionary, 3rd Edition (1997) (“Fiber Optics Standard
`Dictionary”)
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`B. Bahadur, Liquid Crystals - Applications and Uses (Vol. 3), World Scientific
`(1996) (“Bahadur”)
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`
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`
`iii
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`

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`Case No: IPR2014-00460
`Attorney Docket: 28733-0002IP1
`Patent Owner Thomas Swan & Co. Ltd. (“Patent Owner”) submits this Preliminary
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`Response to the Petition seeking inter partes review (“IPR”) in this matter. It is being filed
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`within three months of the March 7, 2014 mailing date of the Notice according the Petition a
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`filing date of February 26, 2014, and is thereby timely under 35 U.S.C. § 313 and 37 C.F.R.
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`§ 42.107.1 A trial should not be instituted because the Petition does not establish a
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`reasonable likelihood of Petitioner prevailing with respect to the challenged claims of the
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`U.S. Patent No. 7,145,710 (the ’710 patent) as required by 37 CFR § 42.108(c).
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`I.
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`Overview
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`The ’710 patent contains 14 claims, of which 3 claims are independent. Notably, this
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`IPR Petition stems from the ongoing litigation in which Finisar is accused of infringing only
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`certain dependent claims of the ’710 patent. Therefore, to streamline issues for the Board
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`at this stage, this Preliminary Response specifically focuses on the litigated claims. Patent
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`Owner does not concede that the remaining claims addressed in the IPR are unpatentable
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`and will address their patentability in more detail if the Patent Trial and Appeal Board
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`(“PTAB”) institutes an IPR trial.
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`With respect to certain litigated claims, the Petition proposes several grounds of
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`unpatentability. The grounds are based two alternative and generally cumulative primary
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`1 Because June 7, 2014 and June 8, 2014 fall on a Saturday and a Sunday, respectively,
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`the timely filing deadline for this Preliminary Response is June 9, 2014.
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`1
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`Case No.: IPR2014-00460
`Attorney Docket: 28733-0002IP1
`references – Warr Thesis (Ex. 1006) (“Warr”) and U.S. Patent App. Pub. No. 2001/0050787
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`(Ex. 1010) (“Crossland”),2 modified with secondary references—namely, that claims 7 and
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`13 are obvious either in view of: (1) the combination of Warr with U.S. Patent No. 6,549,865
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`(“Tomlinson”) or (2) the combination of Crossland with Tomlinson. The Petition also asserts
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`that claims 3 and 10 are either: (1) obvious in view of Warr and “Optical Phased Array
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`Technology” paper (Ex. 1009) (“McManamon”) or (2) anticipated under 102(e) by Crossland.
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`The Petition fails to establish that claims 3, 7, 10, and 13 are either anticipated or
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`prima facie obvious. At least with respect to these claims, the Petition fails to address the
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`plain claim language or attempts to combine fundamentally incompatible technologies. For
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`example, claims 7 and 13 unquestionably require plural temperature sensors, yet the
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`Petition identifies only a single sensor in the prior art. Moreover, the resulting prior art
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`combination still fails to perform the recited claim features, such as varying “selection of
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`control data.” For claims 3 and 10, the Petition alleges that it would be obvious to drive the
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`binary phase modulator to show multi-phase holograms—this is analogous to saying that
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`one can program a black-and-white monitor to show multicolor images, which is plainly
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`2 Crossland is 102(e) prior art predating the effective filing date of the ’710 patent by several
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`months. Patent Owner reserves the right to provide evidence of earlier conception,
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`diligence, and reduction to practice to swear behind Crossland if the PTAB institutes a trial
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`for IPR based on Crossland.
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`2
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`Case No.: IPR2014-00460
`Attorney Docket: 28733-0002IP1
`impossible. The Petition also fails to address the “resolving modulo 2pi” limitation of claim 3.
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`Accordingly, the Petition does not show a reasonable likelihood of prevailing at least with
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`respect to challenged claims 3, 7, 10, and 13, and Patent Office should not institute an IPR
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`trial for these claims.
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`II.
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`Related Proceedings
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`The present Petition for IPR is one of four related Petitions that the Petitioner filed.
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`The other three Petitions are:
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`1.
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`2.
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`3.
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`IPR2014-00461 (U.S. Patent No. 7,664,395);
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`IPR2013-00462 (U.S. Patent No. 8,089,683); and
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`IPR2013-00465 (U.S. Patent No. 8,335,033).
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`Thomas Swan patents are based on a common specification and all claim priority to
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`the Great Britain Application No. 0121308.1, filed on September 3, 2001. The four patents
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`are being asserted in: Thomas Swan & Co. Ltd. v. Finisar Corp., No. 2:13-cv-178 (E.D.
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`Texas). In addition, related U.S. patent application 11/515,389 has issued as U.S. Patent
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`No. 7,612,930, and related U.S. patent application 13/677,926 filed November 15, 2012 is
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`presently pending before the Office.
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`III.
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`The Intrinsic Record of the ’710 Patent
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`a.
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`Overview of the ’710 Patent
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`The ’710 patent discloses an optical device that is configured to perform wavelength
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`routing and selection. (Ex. 1001 at 43:37-40.) Referring to the annotated Figure 28 below,
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`Case No.: IPR2014-00460
`Attorney Docket: 28733-0002IP1
`the optical device includes a reflective Spatial Light Modulator (“SLM”) having a two
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`dimensional array of phase-modulating elements, such as pixels. (Id. at 11:43-55 and
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`43:53-58.) The optical device is able to steer and shape light beams incident on its surface
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`using the SLM. (Id. at 43:55-44:6.) One implementation of an SLM is based on liquid
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`crystal materials, where each pixel of the SLM is controlled by an electrode in the pixel
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`electrode array 230 as shown in the annotated Figure 1 below. (Id. at 12:9-37.)
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`The two dimensional array of pixels may be arranged into multiple groups of pixels,
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`each group capable of displaying a hologram used to steer or shape the incident beam. (Id.
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`at 11:43-55; 43:55-44:6). A hologram is a modulation pattern that affects a property of light
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`incident on the SLM, such as its phase. (Id. at 13:32-45, 14:14-57.) In particular, a
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`hologram can provide a linear phase change to the incident beam, also known as a phase
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`ramp. (Id. at 13:32-45, 14:24-29.) By displaying a phase ramp, the SLM can steer incident
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`light beams in controllable directions. (Id.) A hologram can also impart a non-linear phase
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`Case No.: IPR2014-00460
`Attorney Docket: 28733-0002IP1
`change to the beam, which attenuates or shapes the beam. (Id. at 14:30-58.) As a
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`hologram is a modulation pattern, it can be identified in a variety of interchangeable ways,
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`such as by a formula (see, e.g., Id. at 14:44-57), by a corresponding set of values defining a
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`phase change (see, e.g., Id. at 7:19-24), or by an image displayed on the SLM (see, e.g., Id.
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`at 16:6-8).
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`Turning to the process for creating holograms, the ’710 patent explains that
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`holograms are generated from control data by the processing circuitry. (Id. at 13:15-21.)
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`Notably, control data for different holograms may be combined together to achieve multiple
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`effects with a single pattern, such as routing, corrections, or additional signal processing
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`(e.g., attenuation, beam shaping). (Id. at 13:32-45, 14:24-15:34.) The ’710 patent further
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`explains that control data may be stored in a number of ways, including look-up tables and
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`compressed formats. (Id. at 13:15-21.)
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`After the processing circuitry determines a desired hologram, the SLM can display
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`the hologram. (Id. at 13:32-41.) As explained above, the SLM itself comprises an array of
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`phase modulating elements (i.e., pixels) that can modify light incident on the SLM. (Id. at
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`11:43-55 and 43:53-58.) For example, referring to Figure 1, circuitry can apply different
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`selected voltages between respective pixel electrodes 230 and a common electrode layer
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`224. (Id. at 12:9-37.) An applied voltage between one pixel electrode and the common
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`electrode layer 224 creates a local electric field passing through a localized portion of the
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`liquid crystal layer 222, and modifies the characteristics of the localized portion of the liquid
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`Case No.: IPR2014-00460
`Attorney Docket: 28733-0002IP1
`crystal layer 222. (Id.) By changing properties of the liquid crystal layer 222, the SLM can
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`controllably modify the phase of light passing through the pixel. (Id.)
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`Real-world SLMs are, of course, limited in their ability to display patterns with
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`continuously varying and increasing phase levels. (Id. at 13:63-14:6.) As a result,
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`holograms displayed by the SLM are derived from desired phase patterns via approximation.
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`(Id. at 21:19-34.) In addition, to address the fact that real-world SLMs cannot display
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`continuously increasing phase ramps, the ramps are reset to 0 once they reach of phase
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`modulation value of 2pi radians (i.e., they are resolved modulo 2pi), as evident from Figure
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`8a below. (Id. at 14:1-10, 25-35.) This resetting, based on a Fresnel lens principle, allows
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`the SLM to display the same repeating patterns over the wide pixel area. Before displaying
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`a hologram, the processing circuitry selects an available phase level for each SLM pixel that
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`is close to the desired level in the hologram. (Id. at 21:25-34.) Figure 8a (shown and
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`annotated below) illustrates such an approximated linear phase ramp (also resolved modulo
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`2pi) where each phase level corresponds to an available phase level in the SLM that is
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`closest to the desired value. (Id.) The operating circuitry then selects voltages to apply to
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`the SLM so that the SLM displays the approximated hologram. (Id. at 22:44-46.)
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`Case No.: IPR2014-00460
`Attorney Docket: 28733-0002IP1
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`Notably, multi-phase patterns, such as a ramp shown in Figure 8, naturally require
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`SLM pixels that can display multiple phase levels. The greater the number of available
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`phase levels in the SLM, the closer it can get the actual phase modulation pattern in the
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`hologram. (Id. at 15:11-15.) However, a binary-phase SLM (i.e., an SLM in which each
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`pixel has only two available phase states) cannot display ramps or other multi-phase
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`patterns.
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`There exist many challenges to building optical switches based on liquid crystal
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`SLMs. For example, the ’710 patent explains that beams landing on the SLM may not be
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`properly aligned due to temperature shifts, aging, assembly errors, and other issues. (Id. at
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`2:2-8, 17:44-48.) Such alignment errors result in increased crosstalk and inability to control
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`each beam independently. (Id. at 1:33-50, 24:62-65.) To compensate for these operating
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`variances, the ’710 patent describes novel solutions based on varying the holograms
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`displayed by the SLM. (Id. at 17:24-18:60.) For example, the ’710 patent describes using
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`Case No.: IPR2014-00460
`Attorney Docket: 28733-0002IP1
`temperature or optical sensors to detect changes in the system, so that the system can
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`apply corrections to the displayed holograms. (Id. at 4:36-42, 19:17-31, 19:40-55.)
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`Specifically, as explained in the ’710 patent, two primary factors control performance
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`of the displayed holograms: (1) delineation of blocks of pixels displaying the holograms and
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`(2) the content of holograms displayed on those blocks of pixels. (Id. at 17:39-44.)
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`Delineation refers to selecting a group of pixels for displaying a particular hologram. (Id. at
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`17:44-12.) The ’710 patent teaches that the size, shape, or position of the group may be
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`changed to improve SLM performance due to varied environmental conditions, such as
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`varying temperature. (Id.) In addition, the content of the displayed holograms may be
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`adjusted to compensate for environmental conditions, which involves varying control data
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`for the holograms. (Id. at 18:13-28.) For example, the ’710 patent describes adjusting
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`routing holograms (i.e., linear phase ramps) to compensate for beam alignment errors due
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`to varying temperature. (Id.) Adjustment using non-linear corrective holograms is also
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`addressed. (Id. at 19:29-56.) Both varying of pixel delineation or the respective hologram
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`data occurs in response to sensed information. (Id. at 18:13-33.)
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`Turning to the ’710 claims, the concept of adjusting holograms during operation to
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`correct for system misalignments and environmental changes is captured in various
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`independent and dependent claims of the ’710 patent. For example, claim 1 recites
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`(emphasis added):
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`8
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`Case No.: IPR2014-00460
`Attorney Docket: 28733-0002IP1
` 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.
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`Here, the last limitation of claim 1 is particularly pertinent as it clarifies that the
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`“varying ...” step is what achieves independent control of emergent light beams—in other
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`words, avoidance of crosstalk and misalignment errors during operation. Dependent claims
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`provide additional details about the specific corrective features of the optical device. For
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`example, claims 7 and 13 specify that the “varying” of delineation of pixel groups and/or
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`selection of control data for generating holograms occur in response to the sensed
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`temperature. Claim 10 describes generating combined holograms (e.g., combining routing
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`and corrective features) that can be used to compensate for alignment errors or perform
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`additional processing on the incident beams.
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`9
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`Case No.: IPR2014-00460
`Attorney Docket: 28733-0002IP1
`To summarize, the ’710 patent recognized that optical devices incorporating liquid
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`crystal SLMs were subject to varying environmental conditions causing misalignment,
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`aberrations, and phase distortions. (Id. at 1:32-49.) Prior art systems attempted to solve
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`these problems by using expensive components. (Id. at 1:50-55.) In contrast, the ’710
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`patent describes a novel approach in which holograms displayed by the SLM are varied
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`during operation to compensate for environmental fluctuations, such as temperature shifts.
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`(Id. at 4:19-52.) The resulting system easily adapts to varying operating conditions. (Id.)
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`b.
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`Cited References
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`Patent Owner notes that the Petition incorrectly asserts that “none of the references
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`listed above in Section VII were considered during the original prosecution of the ’710
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`patent.” (Pet. at 7.) On the contrary, the PCT counterpart of Crossland has been already
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`cited to the during prosecution of the ’710 patent as PCT Patent Publication WO/0190823.
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`(Ex. 1001, p. 2.) PCT Patent Publication WO/0190823 and Crossland both claim priority to
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`the same U.S. provisional application (U.S. application no. 60/206,074) and appear to have
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`substantially identical disclosures. (Compare TS 2001 and Ex. 1010.) Similarly, the cited
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`aspects of the Warr Thesis are cumulative to prior art by the same Dr. Warr that the Patent
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`Office considered during the prosecution of the ’710 patent—U.S. Patent No. 6,975,786
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`(“Warr patent”). (Ex. 1001, p. 2; TS 2002.) The Warr patent discloses an optical device
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`with an SLM having a two-dimensional array of controllable phase-modulating elements.
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`(See, e.g., TS 2002 at Fig. 2 and 9:21-43.)
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`10
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`Case No.: IPR2014-00460
`Attorney Docket: 28733-0002IP1
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`c.
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`Prosecution History
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`The ’710 patent is part of a family of patents that originated from U.K. Patent
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`Application No. 0121308.1, filed on September 3, 2001. (Ex. 1001, p. 1.) PCT Application
`
`No. PCT/GB02/04011 was then filed on September 2, 2002. (Id.) U.S. Patent Application
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`No. 10/487,810 was then prosecuted as a United States national stage application of this
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`PCT Application on September 10, 2004. (Id.) The first office action on March 7, 2006 did
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`not reject any claims on the basis of prior art, but instead issued a restriction requirement.
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`(Ex. 1002, pp. 832-834.) The applicant elected claims 1-14 of the original application in a
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`reply dated April 28, 2006. (Id. at p. 840.) The Examiner then allowed these claims on May
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`11, 2006. (Id. at pp. 850-855.) The application then issued as the ‘710 patent.
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`IV.
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`Claim Construction
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`Patent Owner proposes a construction for the term “control data” in claims 1 and 11
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`(also referred to in claims 7 and 13), and responds to the claim constructions set forth in the
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`Petition below.3
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`In the context of the ’710 patent, “control data” is “data from which a hologram is
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`generated.” The plain language of the claims where the term “control data” appears (e.g.,
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`3 All of Patent Owner’s proposed constructions are based on the “broadest reasonable
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`construction” standard applicable for IPR. 37 CFR § 42.104(b) (3). Patent Owner reserves
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`the right to propose different constructions in forums where a different standard applies.
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`
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`11
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`Case No.: IPR2014-00460
`Attorney Docket: 28733-0002IP1
`claims 1 and 11 of the ’710 patent) makes clear that “control data” is the data from which a
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`hologram is generated—these claims recite “generat[e/ing] from the respective control data
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`a respective hologram.” Other claims also support Patent Owner’s construction by
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`explaining the relationship between “holograms” and “control data” that is used to generate
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`or create these holograms. For example, dependent claim 6 describes storing the result of
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`an improved hologram as “control data.” Similarly, claim 10 identifies “control data
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`indicative of two holograms to be displayed.”
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`The specification also supports Patent Owner’s construction. In particular, the
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`specification repeatedly describes that holograms are generated from “control data.” (See
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`e.g., Ex. 1001 at 13:15-18 (“control data which is processed to generate holograms which
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`are applied to the SLM 10 for control of light incident upon the SLM 10”); 15:34-53
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`(describing combining control data for routing and corrective holograms); 22:29-46
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`(“[m]emory holds sets of data each allowing the creation of a respective power controlling
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`hologram”); 15:34-53 (“[t]he data may be entered in the form of coefficients of a polynomial
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`selected to represent the phase modulation distribution of the pixel array of concern in the
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`SLM.”); 20:10-33 (“[i]n the training stage, a set of initial starting values is read in for
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`application to the SLM 30 as hologram data, then light is applied at a fibre and the result of
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`varying the hologram is noted”).)
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`The Petition construes “array” to mean “an assembly of two or more individual
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`elements, appropriately spaced and energized to achieve desired directional properties.”
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`Case No.: IPR2014-00460
`Attorney Docket: 28733-0002IP1
`(Pet. at 9.) Patent owner disagrees. The Petition incorrectly relies on a definition from
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`Chambers Science and Technology at 51, which references an array for a “beam antenna.”
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`(Ex. 1018, p. 51.) In contrast, Petitioner has taken the position in the co-pending district
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`court litigation that “an array of pixels” is “an arrangement of two or more pixels,” thus
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`admitting that an “array” is an “arrangement of two or more elements.” (TS 2003 at 4, TS
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`200 at 5.) This ordinary meaning of array comports with the ‘395 patent’s use of the term to
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`refer to the arrangement of elements of an SLM. (See, e.g., Ex. 1001 at 2:51-55, 7:34-43,
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`11:43-47, 21:19-24.) Accordingly, “array” in this context means “an arrangement or two
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`more elements.”
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`The Petition construes “controllable phase-modulating elements” to mean
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`“components, such as pixels, which can change the phase of incident light under certain
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`conditions created by circuitry, such as application of voltage.” (Pet. at 9-10.) Patent
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`Owner disagrees with the additional and ambiguous language added by Petitioner. The
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`proper construction for “controllable phase-modulating elements” in the context of the ’710
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`patent is “controllable elements that controllably modify the phase of light.”
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`The Petition construes “hologram” to mean “a set of modulation values for achieving
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`the desired change in incident light.” (Pet. at 9-11.) Patent Owner disagrees. The correct
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`construction of “hologram” in the context of the ’710 patent is “a modulation pattern.”
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`Case No.: IPR2014-00460
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`Specifically, the specification uses the term “hologram” to refer to a modulation
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`pattern, such as a phase pattern, that is displayed by a SLM to perform a processing
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`operation on the incident light. For example, the ’710 patent states:
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`[E]ach active processing operation (routing, power control, monitoring, etc.)
`requires an associated hologram pattern to be applied by the controller but
`may be carried out by the same SLM . . . .
`(Ex. 1001 at 44:27-31.)
`
`
`[C]ontrol data which is processed to generate holograms which are applied to
`the SLM 10 for control of light incident upon the SLM 10.
`(Id. at 13:15-18.)
`
`Linear phase modulation, or an approximation to linear phase modulation
`may be used to route a beam of light, i.e. to select a new direction of
`propagation for the beam ... Since the information represents phase change
`data, it may be represented as a hologram.
`(Id. at 7:17-19.)
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`The specification further explains that holograms are generated from the stored control data.
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`(Id. at 21:16-35 and Figs. 8a, 8b.)
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`Petitioner’s construction for hologram fails at least because it does not capture this
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`“pattern” aspect of a hologram. For example, even if a modulation pattern can be
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`represented by an ordered sequence of modulation values, the “set of modulation values” in
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`Petitioner’s construction eliminates the specific order for the modulation values, and thereby
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`Case No.: IPR2014-00460
`Attorney Docket: 28733-0002IP1
`fails to capture information about the spatial arrangement of modulation values used to
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`produce the hologram on the SLM.
`
`The Petition construes the term “SLM” or “spatial light modulator” to mean “a
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`polarisation-independent device that acts on a light beam or beams incident on the device
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`to provide emerging light beams, which are controlled independently of one another.” (Pet.
`
`at 11-12.) Patent Owner disagrees. The correct construction for “SLM” or “spatial light
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`modulator” is “a device that modifies a property of light as a function of time and position
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`across it.” (TS 2005 at 4.)
`
`Petitioner’s construction improperly reads into its construction that the SLM is a
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`“polarization-independent device.” The Petition implicitly concedes that this requirement is
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`not the plain and ordinary meaning of SLM because it bases its narrow construction on its
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`position that “the ’710 patent expressly disclaims any devices that are not polarisation
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`insensitive/independent.” (Id.) The specification does not show the clear and unmistakable
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`disavowal necessary for Petitioner’s construction. Omega Eng’g, Inc. v. Raytek Corp., 334
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`F.3d 1314, 1325–26 (Fed. Cir. 2003) (The intrinsic record must be “both so clear as to show
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`reasonable clarity and deliberateness, and so unmistakable as to be unambiguous evidence
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`of disclaimer.”)
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`For example, the specification explains that “[i]t is not intended that any particular
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`SLM structure is essential to the invention, the above being only exemplary and illustrative.”
`
`(Ex. 1001, 12:36-38.) Also, the ’710 patent explains that wave plates, either integrated
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`Case No.: IPR2014-00460
`Attorney Docket: 28733-0002IP1
`within the SLM or external to the SLM, can be used to achieve polarization independence of
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`the optical device. (Id. at 7:6-14.) For example, “[i]f a non-integrated wave plate is used
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`instead [of a wave plate that is integrated into the SLM], a beam after reflection and
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`passage through the external wave plate will not pass through the same zone of the SLM …”
`
`(Id.) Critically, when such a non-integrated wave-plate is used, the SLM itself is polarization
`
`dependent, and the external wave-plate manipulates the polarization of light at some other
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`location within the optical device such that the device as a whole effectively processes the
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`light regardless of its polarization.
`
`Moreover, although preferred embodiments of the ’710 patent may be directed to
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`SLMs configured to be polarisation independent, other passages of the patent demonstrate
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`that the inventor contemplated polarization-dependent embodiments. (See e.g., Id. at 31:4-
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`5 (“[A]mplitude-modulating SLMs can be used to implement the shaping but they are
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`polarisation-dependent.”).) Finally, the doctrine of claim differentiation further demonstrates
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`that the SLM claimed in independent claim 1 need not be a polarisation-independent device,
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`because claim 1 is necessarily broader than its dependent claim 8, which requires the SLM
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`to be “substantially polarisation insensitive.” (Id. at 62:58-59.) Accordingly, Petitioner’s
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`construction improperly limits SLM to being a polarisation-independent device.
`
`Finally, the Petition construes the term “wave-plate” to mean “a thin sheet of doubly
`
`refracting crystal material of such thickness as to introduce a phase difference of one
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`quarter-cycle between the ordinary and the extraordinary components of light passing
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`Case No.: IPR2014-00460
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`through, which results in converting polirisation [sic] of the light.” (Pet. at 12-13.) Patent
`
`Owner disagrees. Petitioner’s construction improperly limits the term “wave plate” in several
`
`ways relative to the definition in Petitioner’s Ex. 1019, which is: “a plate of material which is
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`linearly birefringent.” (Ex. 1019, p. 3.) Thorner v. Sony Computer Entertainment Am. LLC,
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`669 F.3d 1365, 1367 (Fed. Cir. 2012) (rejecting constructions that read limitations from the
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`specification into the claims). For example, even if Petitioner’s proposed construction is an
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`attempt to further explain the expression “linearly birefringent” in the definition from Ex. 1019,
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`there is no basis to require that the thickness of the wave-plate introduces “a phase
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`difference of one quarter-cycle between the ordinary and the extraordinary components of
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`light.” Patent Owner submits that the correct construction for “wave plate” in this proceeding
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`is that set forth in Ex. 1019: “a plate of material