Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 9
`Entered: August 21, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`FINISAR CORP.,
`Petitioner,
`
`v.
`
`THOMAS SWAN & CO. LTD.,
`Patent Owner.
`_______________
`
`Case IPR2014-00460
`Patent 7,145,710 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MICHELLE R. OSINSKI, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`
`OSINSKI, Administrative Patent Judge.
`
`
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`

`

`IPR2014-00460
`Patent 7,145,710 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Finisar Corp. (“Petitioner”) filed a corrected Petition (Paper 5, “Pet.”)
`
`requesting an inter partes review of claims 1–14 of U.S. Patent No. 7,145,710 B2
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`(Ex. 1001, “the ’710 patent”). Thomas Swan & Co. Ltd. (“Patent Owner”) filed a
`
`Preliminary Response (Paper 8, “Prelim. Resp.”). We have jurisdiction under
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`35 U.S.C. § 314, which provides that an inter partes review may not be instituted
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`“unless . . . there is a reasonable likelihood that the petitioner would prevail with
`
`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`
`Upon consideration of the Petition and Preliminary Response, we determine
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`that there is a reasonable likelihood that Petitioner would prevail with respect to
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`claims 1, 2, 4–9, and 11–14 of the ’710 patent, but not claims 3 and 10.
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`Accordingly, we institute an inter partes review of claims 1, 2, 4–9, and 11–14 of
`
`the ’710 patent. We, however, do not institute an inter partes review of claims 3
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`and 10 of the ’710 patent.
`
`B. Related Proceedings
`
`The parties represent that the ’710 patent is the subject of a district court
`
`proceeding in Thomas Swan & Co. v. Finisar Corp., Case No. 2:13-cv-178 (E.D.
`
`Tex.). Pet. 4; Patent Owner’s Mandatory Notices Under 37 C.F.R. § 42.8, Paper 7,
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`2.
`
`Petitioner filed additional Petitions for inter partes review of three other
`
`patents related to the ’710 patent, namely U.S. Patent Nos. 7,664,395 B2;
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`8,089,683 B2; and 8,335,033 B2. Pet. 4–5; Prelim. Resp. 3; see IPR2014-00461
`
`(Papers 1, 5); IPR2014-00462 (Papers 1, 5); IPR2014-00465 (Papers 1, 5).
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`2
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`IPR2014-00460
`Patent 7,145,710 B2
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`C. The ’710 Patent
`
`The ’710 patent relates to optical devices, and methods for operating optical
`
`devices, that use a spatial light modulator (“SLM”) comprising a two-dimensional
`
`array of “phase modulating elements” such as pixels to perform wavelength
`
`routing and selection. Ex. 1001, 43:37–40, 61:64–64:22. Figure 28 of the ’710
`
`patent is reproduced below.
`
`Figure 28 of the ’710 patent illustrates
`wavelength routing and selection device 600.
`
`
`
`Figure 28 depicts a schematic diagram of optical device 600 that enables
`
`beams of different wavelengths from input beam 601 to be controlled separately
`
`before recombination. Id. at 10:53–56, 11:22–23. Device 600 has input beam 601
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`from input port 611 and provides three outputs 602, 603, 604 at output ports 612,
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`613, 614. Id. at 43:37–40. Device 600 has grating 620, which can be transmissive
`
`as shown or can be reflective in other embodiments, and splits input beam 601 to
`
`provide three single wavelength emergent beams 605, 606, 607. Id. at 43:44-52.
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`Lens 621 refracts beams 605, 606, 607 so that they emerge mutually parallel from
`
`lens 621 as beams 615, 616, 617. Id. at 43:52–53.
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`3
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`IPR2014-00460
`Patent 7,145,710 B2
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`The array of pixels of SLM 622 are arranged into multiple groups 623, 624,
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`625. Id. at 11:43-55, 43:55–44:6. Each of beams 615, 616, 617 is incident upon a
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`respective group of pixels 623, 624, 625. Id. at 43:53–55. Each group 623, 624,
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`625 is capable of displaying a respective hologram. Id. at 11:43–55, 43:55–44:6.
`
`The hologram can provide a linear phase change to the incident beam, also known
`
`as a phase ramp, which can steer incident light beams in controllable directions.
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`Id. at 13:32–45, 14:24–29. The hologram can also provide a non-linear phase
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`change to the incident beam, which can attenuate or shape the beam. Id. at 14:30–
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`58. Holograms can be identified by formulas, corresponding sets of values
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`defining phase changes, or images displayed on SLM 622. Id. at 14:44–57, 7:19–
`
`24, 16:6–8). Holograms are generated from control data by processing circuitry,
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`and the control data can be stored in look-up tables or compressed formats. Id. at
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`13:15–21. The processing circuitry can apply different selected voltages between
`
`respective groups of pixels 623, 624, 625 and a common electrode layer, thereby
`
`creating a local electric field passing through a localized portion of a liquid crystal
`
`layer and modifying the characteristics of the localized portion of the liquid crystal
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`layer. Id. at 12:9–37.
`
`The displayed holograms may perform differently based on (i) the
`
`delineation of groups of pixels displaying the holograms or (ii) the content of
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`holograms displayed on those groups of pixels. Id. at 17:39–43. The size, shape,
`
`or position of the groups of pixels may be changed to improve performance of
`
`SLM 622 due to varying environmental conditions, such as varying temperature.
`
`Id. at 17:44–18:12. The content of the displayed holograms may be adjusted to
`
`compensate for environmental conditions by varying control data for the
`
`holograms. Id. at 18:13–28. Referring back to Figure 28, groups 623, 624, 625
`
`display respective holograms which each provide a different deviation from the
`
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`4
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`IPR2014-00460
`Patent 7,145,710 B2
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`specular direction to provide reflected beams 635, 636, 637. Id. at 43:55–58.
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`Beams 635, 636, 637 are incident on lens 621 and routed back to grating 620. Id.
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`at 43:58-60. Optical device 600 is thus able to steer and shape light beams incident
`
`on its surface using SLM 622. Id. at 43:55–44:6. Light beams that are incident on
`
`particular groups of pixels are controllable independently of each other. Id. at
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`2:56–67.
`
`D. Illustrative Claim
`
`Claim 1 is illustrative of the claimed subject matter and is reproduced below.
`
`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.
`
`
`E. Prior Art Relied Upon in the Petition
`
`Stephen T. Warr, Free-Space Switching for Optical Fibre Networks (July
`
`1996) (Ph.D. dissertation, University of Cambridge) (on file with Cambridge
`
`University Library) (“Warr Thesis,” Ex. 1005).
`
`Mathias Johansson et al., Computer-controlled, adaptive beam steering,
`
`implemented in a FLC-SLM free-space optical switch (June 18–22, 2000) (OSA
`
`
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`5
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`IPR2014-00460
`Patent 7,145,710 B2
`
`
`Trends in Optics and Photonics, Vol. 41, Diffractive Optics and Micro-Optics,
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`Technical Digest, Postconference Edition) (“Johansson,” Ex. 1006).
`
`Tomlinson, US 6,549,865 B2 (issued Apr. 15, 2003) (“Tomlinson,” Ex.
`
`1008).
`
`Paul F. McManamon et al., Optical Phased Array Technology (Feb. 1996)
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`(Proceedings of the IEEE, Vol. 84, No. 2) (“McManamon,” Ex. 1009).
`
`Crossland et al., US 2001/0050787 A1 (published Dec. 13, 2001)
`
`(“Crossland,” Ex. 1010).
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`F. The Asserted Grounds of Unpatentability
`
`The information presented in the Petition sets forth Petitioner’s contentions
`
`of unpatentability of claims 1–14 of the ’710 patent based on the following specific
`
`grounds.
`
`Claims challenged
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`Basis
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`References
`
`1, 2, 4–6, 8, 9, 11, 12, 14
`
`§ 102(b) Warr Thesis
`
`6, 12
`
`7, 13
`
`3, 10
`
`§ 103(a) Warr Thesis and Johansson
`
`§ 103(a) Warr Thesis and Tomlinson
`
`§ 103(a) Warr Thesis and McManamon
`
`1, 3, 9, 10, 12
`
`§ 102(e)
`
`Crossland
`
`7, 13
`
`§ 103(a)
`
`Crossland and Tomlinson
`
`II. DISCUSSION
`
`A. Claim Construction
`
`We determine the meaning of certain claim terms for purposes of this
`
`Decision. In an inter partes review, claim terms in an unexpired patent are given
`
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`Patent 7,145,710 B2
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`their broadest reasonable construction in light of the patent specification.
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`37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`
`48,766 (Aug. 14, 2012). Under the broadest reasonable construction standard,
`
`claim terms are given their ordinary and customary meaning, as would be
`
`understood by one of ordinary skill in the art in the context of the entire disclosure.
`
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`
`definition for a claim term must be set forth in the specification with reasonable
`
`clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994). In determining the proper construction of a claim term, we must be careful
`
`not to read a particular embodiment appearing in the written description into the
`
`claim if the claim language is broader than the embodiment. In re Van Geuns, 988
`
`F.2d 1181, 1184 (Fed. Cir. 1993). Dictionaries may be relied on so long as the
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`dictionary definition does not contradict a definition found in or ascertained by
`
`reading the patent documents. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
`
`1576, 1584 n.6 (Fed. Cir. 1996). We construe the terms below in accordance with
`
`these principles.
`
`1. “array”
`
`The term “array” is recited in independent claims 1, 11, and 14. Petitioner
`
`asserts that “array” means “an assembly of two or more individual elements,
`
`appropriately spaced and energized to achieve desired directional properties.” Pet.
`
`9. Patent Owner disagrees and asserts that “array” means “an arrangement of two
`
`or more elements.” Prelim. Resp. 13.
`
`Patent Owner contends that Petitioner incorrectly relies on a definition
`
`relating to antenna. Prelim. Resp. 13 (citing Pet. 9. Petitioner cites to a dictionary
`
`definition (Pet. 9), which refers to “radiating elements” and “beam antenna.” Peter
`
`M. B. Walker, Chambers Science and Technology Dictionary 51 (1988) (Ex. 1018,
`
`
`
`7
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`IPR2014-00460
`Patent 7,145,710 B2
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`51). The ’710 patent specification describes an optical device having “a two-
`
`dimensional array of controllable phase-modulating elements.” Ex. 1001, 2:54–55.
`
`We, therefore, decline to adopt Petitioner’s construction and agree with
`
`Patent Owner that the broadest reasonable interpretation of “array,” in the context
`
`of the ’710 patent, is an arrangement of two or more elements.
`
`2. “controllable phase-modulating elements”
`
`The term “controllable phase-modulating elements” is recited in independent
`
`claims 1, 11, and 14. Petitioner asserts that “controllable phase-modulating
`
`elements” means “components, such as pixels, which can change the phase of
`
`incident light under certain conditions created by circuitry, such as application of
`
`voltage.” Pet. 9. Petitioner asserts that this construction is consistent with the
`
`specification. Id. at 9–10 (citing Ex. 1001, 11:43–48, 40:12–14, 13:54–14:13).
`
`Patent Owner asserts that Petitioner’s construction unnecessarily adds
`
`“additional and ambiguous language” and that “controllable phase-modulating
`
`elements” means “controllable elements that controllably modify the phase of
`
`light.” Prelim. Resp. 13. We are not persuaded that “controllable phase-
`
`modulating elements” should be limited to the examples provided by Petitioner.
`
`Patent Owner’s construction essentially restates the claim language. On this
`
`record, express construction is not necessary.
`
`
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`8
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`IPR2014-00460
`Patent 7,145,710 B2
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`3. “hologram”
`
`The term “hologram” or “holograms” is recited in independent claims 1, 11,
`
`and 14 and dependent claims 3–6 and 10. Petitioner asserts that “hologram” means
`
`“a set of modulation values for achieving the desired change in incident light.”
`
`Pet. 10–11 (citing Ex. 1001, 13:63–14:13, 14:44–15:6, 15:11–15). Patent Owner
`
`disagrees and asserts that “hologram” means “a modulation pattern.” Prelim.
`
`Resp. 14-15 (citing Ex. 1001, 44:27-31, 13:15-18, 7:17-19).
`
`Patent Owner argues that Petitioner’s construction fails because it does not
`
`capture the “pattern” or spatial arrangement aspect of a hologram. Prelim. Resp.
`
`14. The specification of the ’710 patent states, “[t]he hologram pattern associated
`
`with any general non-linear phase modulation exp jφ(u)=exp j(φ0(u)+φ1(u)+φ3(u)
`
`. . . ) where j is the complex operator, can be considered as a product.” Ex. 1001,
`
`14:44–47. The ’710 patent also states, “[i]n one embodiment, in the training stage,
`
`a set of initial starting values is read in for application to the SLM 30 as hologram
`
`data, then light is applied at a fibre and the result of varying the hologram is
`
`noted.” Id. at 20:15–18. The specification of the ’710 patent, therefore, indicates
`
`that a hologram pattern can be represented as a set of values.
`
`The ’710 patent specification describes a hologram as something that is
`
`displayed by stating, for example, “providing control data indicative of two
`
`holograms to be displayed” (Ex. 1001, 4:15–16), “with circuitry constructed and
`
`arranged to display holograms on the pixels” (id. at 6:16–18), “[t]he groups may
`
`display holograms” (id. at 11:51). The ’710 patent specification, however, also
`
`indicates that a hologram is data stating, “[s]ince the information represents phase
`
`change data, it may be regarded as a hologram.” Id. at 7:22–24. The ’710 patent
`
`specification indicates that in accordance with the invention, data are
`
`communicated by routing light by stating, “the present field—for example in
`
`
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`IPR2014-00460
`Patent 7,145,710 B2
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`communication and like devices” (id. at 2:37–38), “routing light beams using
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`holograms” (id. at 12:1), and “an integrated SLM10 has processing circuitry 11
`
`having a first control input 12 for routing first and second beams 1,2 from input
`
`fibres 3,4 to output fibres 5,6 in routing device 15” (id. at 13:12–15). In light of
`
`the ’710 patent specification, therefore, a hologram is both data and, at least in
`
`certain circumstances, displayed.
`
`For the reasons given above, we determine the broadest reasonable
`
`interpretation of “hologram,” in the context of the specification of the ’710 patent,
`
`is modulation data for changing incident light.
`
`4. “SLM” or “spatial light modulator”
`
`The term “SLM” is recited in independent claims 1, 11, and 14 and
`
`dependent claims 8 and 12. The term “spatial light modulator” is recited in
`
`dependent claim 3. Petitioner asserts that “SLM” refers to “spatial light
`
`modulator” and means “a polarisation-independent device that acts on light beam
`
`or beams incident on the device to provide emerging light beams, which are
`
`controlled independently of one another.” Pet. 11–12. Patent Owner agrees that
`
`“SLM” refers to “spatial light modulator,” but disagrees with Petitioner’s
`
`construction. Prelim. Resp. 15–16. Patent Owner asserts that “SLM” or “spatial
`
`light modulator” means “a device that modifies a property of light as a function of
`
`time and position across it.” Id. at 15.
`
`The specification of the ’710 patent refers to SLMs as spatial light
`
`modulators. Ex. 1001, 11:67–12:1. In the context of the specification of the ’710
`
`patent, therefore, “SLM” refers to “spatial light modulator.”
`
`Petitioner asserts that the ’710 patent expressly disclaims any devices that
`
`are not polarization insensitive/independent by stating, “[t]he invention may be
`
`applied to other devices, provided they are capable of multiphase operation and
`
`
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`10
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`IPR2014-00460
`Patent 7,145,710 B2
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`are at least somewhat polarisation independent at the wavelengths of concern.”
`
`Pet. 12 (citing Ex. 1001, 12:67–13:3). Patent Owner asserts that the specification
`
`of the ’710 patent does not limit SLM to a particular structure. Prelim. Resp. 15–
`
`16 (citing Ex. 1001, 12:65–67) (“It is not intended that any particular SLM
`
`structure is essential to the invention, the above being only exemplary and
`
`illustrative.”) The citation on which Petitioner relies provides an example of an
`
`SLM that is “somewhat” polarization insensitive/independent (Ex. 1001, 13:2).
`
`The specification of the ’710 patent does not limit the claimed invention to this
`
`example. We, therefore, agree with Patent Owner that SLM is not limited to
`
`structures that are polarization insensitive or independent.
`
`To show how one of ordinary skill in the art would use the term “SLM,”
`
`Patent Owner cites to a few pages in a multi-volume book (Prelim. Resp. 15),
`
`which describe uses of liquid crystals, such as liquid crystal devices that are useful
`
`in parallel optical processing applications, and presents exemplary prototypes, such
`
`as liquid crystal television devices. Ex. 2005, 4 (3 Liquid Crystals Applications
`
`and Uses 211 (Birendra Bahadur ed., 1992) (“Liquid Crystals Applications and
`
`Uses”)). Liquid Crystals Applications and Uses states “Spatial Light Modulators
`
`(SLMs), dynamically changeable devices which modify the amplitude, phase,
`
`and/or polarization of an optical wave front as a function of time and position
`
`across it.” Id.
`
`We turn to the specification of the ’710 patent, which describes that
`
`integrated SLM 200 is “for modulating light 201 of a selected wavelength.” Ex.
`
`1001, 12:9–10. The ’710 patent specification does not provide an express
`
`definition of “modulating.” Modulation is defined in a technical dictionary as “the
`
`process of varying some characteristic of one signal (the carrier) in accordance
`
`with another signal (the message signal).” Hargrave’s Communications
`
`
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`11
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`Dictionary (2001), available at
`
`http://search.credoreference.com/content/entry/hargravecomms/modulation/0 (June
`
`19, 2014) (“Hargrave’s Dictionary”) (Ex. 3001). The ’710 patent specification
`
`describes an example of modulation that is consistent with the Hargrave’s
`
`Dictionary definition by stating, “[a]dvantageously, each phase modulating
`
`element is responsive to a respective applied voltage to provide a corresponding
`
`phase shift to emergent light.” Ex. 1001, 3:26–28. In the context of the ’710
`
`patent specification, each modulating element shifts or modifies the light.
`
`Although the example in the ’710 patent specification describes phase modulation,
`
`no particular SLM structure is essential to the invention (id. at 12:65–67).
`
`Regarding Patent Owner’s contention that spatial light modulator modifies
`
`light “as a function of time and position across it,” Patent Owner does not explain
`
`sufficiently why Patent Owner’s construction is part, but not all of the definition
`
`provided by Patent Owner’s cited extrinsic reference. Patent Owner also does not
`
`explain sufficiently how the definition is consistent with the ’710 patent
`
`specification.
`
`We agree with Petitioner and Patent Owner that “SLM” refers to “spatial
`
`light modulator.” We agree with Patent Owner that Petitioner’s construction is too
`
`narrow. We, however, decline to adopt in its entirety Patent Owner’s construction,
`
`and construe “SLM” and “spatial light modulator” in the context of the ’710
`
`patent, as a device that modifies a spatial property of light.
`
`5. “quarter-wave plate”
`
`The term “quarter-wave plate” is recited in dependent claim 8. Petitioner
`
`asserts that “quarter-wave plate” means “a thin sheet of doubly refracting crystal
`
`material of such thickness as to introduce a phase difference of one quarter-cycle
`
`between the ordinary and the extraordinary components of light passing through,
`
`
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`12
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`which results in converting polarisation of the light.” Pet. 12 (citing Ex. 1019,
`
`McGraw-Hill Dictionary of Scientific and Technical Terms, 15361). Petitioner
`
`asserts that its construction is consistent with the use of the term in the
`
`specification. Id. (citing Ex. 1001, 13:6–9, 4:8–10 (“The SLM may be integrated
`
`on a substrate and have an integral quarter-wave plate whereby it is substantially
`
`polarisation insensitive.”)).
`
`Patent Owner disagrees with Petitioner’s construction as “improperly
`
`limit[ing] the term ‘wave plate’ in several ways relative to the definition in
`
`Petitioner’s Ex. 1019.” Prelim. Resp. 17 (citing Thorner v. Sony Computer
`
`Entertainment Am. LLC, 669 F.3d 1365, 1367 (Fed. Cir. 2012)). Patent Owner
`
`asserts that “quarter-wave plate” means “a plate of material which is linearly
`
`birefringent.” Prelim. Resp. 17 (quoting Ex. 1019, 2051).
`
`The claim term being construed is “quarter-wave plate,” not “wave plate.”
`
`A “quarter-wave plate” is defined as “a crystal thin enough to cause a phase
`
`difference of 90° between the ordinary and extraordinary rays of polarized light,
`
`thereby converting circularly polarized light into plane polarized light.”
`
`Dictionary.com Unabridged Based on the Random House Dictionary © 2014,
`
`available at http://dictionary.reference.com/browse/quarter-wave+plate (last
`
`visited June 26, 2014); see also McGraw Hill Education, available at
`
`http://www.accessscience.com/search?q=quarter+wave+plate&rows=10&mode=A
`
`ND (last visited July 7, 2014) (defining “quarter wave plate” as “[a] thin sheet of
`
`mica or other doubly refracting crystal material of such thickness as to introduce a
`
`
`1 Although Petitioner references page 1536 of Exhibit 1019, Exhibit 1019 appears
`only to include a copy of page 2051 including the definition for “wave plate,” as
`opposed to the claim term “quarter-wave plate.”
`
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`Patent 7,145,710 B2
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`phase difference of one quarter-cycle between the ordinary and the extraordinary
`
`components of light passing through; such a plate converts circularly polarized
`
`light into plane-polarized light.” Such dictionary definitions are consistent with
`
`the specification. See, e.g., Ex. 1001, 12:52–57
`
`([T]he quarter-wave plate . . . causes polarisation rotation of the first
`and second components by 90 degrees so that the second polarisation
`component of the light beam is presented to the liquid crystal for
`being subjected to the selected phase change on the outward pass of
`the beam away from the mirror layer.).
`
`For purposes of this Decision, we adopt Petitioner’s construction of the term
`
`“quarter-wave plate” as “a thin sheet of doubly refracting crystal material of such
`
`thickness as to introduce a phase difference of one quarter-cycle between the
`
`ordinary and the extraordinary components of light passing through, which results
`
`in converting polarisation of the light” in light of the ordinary meaning and the use
`
`of the term in the specification.
`
`6. “control data”
`
`The term “control data” is recited in independent claims 1, 11, and 14 and
`
`dependent claims 6 and 10. Although Petitioner does not proffer a construction of
`
`the claim term “control data” (see Pet. 1–60), Patent Owner asserts that “control
`
`data” means “data from which a hologram is generated” based on the plain
`
`language of the claims and references to the term in the specification. Prelim.
`
`Resp. 11–12 (citing Ex. 1001, 13:15–18 (“control data which is processed to
`
`generate holograms which are applied to the SLM 10 for control of light incident
`
`upon the SLM 10”); 15:33–51 (describing combining control data for routing and
`
`corrective holograms); 22:29–46 (“[m]emory holds sets of data each allowing the
`
`creation of a respective power controlling hologram”); 15:43–46 (“the data may be
`
`entered in the form of coefficients of a polynomial selected to represent the phase
`
`
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`14
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`modulation distribution of the pixel array of concern in the SLM”); 20:10–32 (“in
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`the training stage, a set of initial starting values is read in for application to the
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`SLM 30 as hologram data, then light is applied at a fibre and the result of varying
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`the hologram is noted”). For purposes of this Decision, we adopt Patent Owner’s
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`construction of the term “control data” as “data from which a hologram is
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`generated” in light of the references to the term in the specification.
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`B. Anticipation of claims 1, 2, 4–6, 8, 9, 11, 12, and 14 by Warr Thesis
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`1. Overview of Warr Thesis
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`Warr Thesis describes “the use of programmable computer-generated
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`holograms (CGHs) displayed on a ferroelectric liquid crystal (FLC) . . . SLM.”
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`Ex. 1005, viii. Warr Thesis describes that “[t]he SLM provides fast 2-dimensional
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`binary modulation of coherent light and acts as a dynamically reconfigurable
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`diffraction pattern.” Id. “An array of dynamic holograms can be used to achieve
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`an arbitrary rout[]ing pattern between N inputs and M outputs.” Id. at 4; see also
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`id. at 6 (SLMs may “be used to display complex 2-dimensional computer
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`generated holograms . . . and hence be used to dynamically diffract beams of light
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`into arbitrary positions or patterns.”). “SLMs typically consist of an array of
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`individually controllable pixels.” Id. at 7. “The FLC device displays one frame
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`from a set of phase CGHs which have been calculated off-line at an earlier stage
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`and placed in a frame store to be recalled on demand.” Id. at 33. Warr Thesis
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`describes “rapidly displaying SLM hologram frames to raster scan a replay spot
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`about a 9x9 grid in the expected vicinity of each fibre core” to experimentally
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`determine fibre location due to slight irregularities in the fibre array pitch. Id. at
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`36.
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`Warr Thesis further describes that “[o]nce the required set of 15 holograms
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`had been determined, the switch was configured to direct the optical signal into
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`each array fibre in turn and the received power was plotted against the output fibre
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`number.” Id. at 37. To collect maximum light power from the replay, the output
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`fibre position can be optimized. Id. at 54. “With the output fibre at a fixed
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`position, a number of CGH frames were then generated and displayed to shift the
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`principal replay spot away from the output fibre core along the 8 compass
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`directions.” Id. Moreover, Warr Thesis describes that “[e]ach spectral component
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`of the source is incident upon the grating at a slightly different angular direction,
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`according to which CGH frame is displayed from the set of pre-calculated
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`holographic patterns.” Id. at 65. Warr Thesis describes that “[d]ynamic selection
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`of the filtered channel occurs as the SLM pattern is altered, and the reconfiguration
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`speed of the switch is thus determined by the SLM frame rate.” Id.
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`Warr Thesis also describes dividing the SLM “into N sub-hologram
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`rout[]ing areas, such that each region is filled with a distinct and independently
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`controlled CGH. Each hologram deflects light from its associated input fibre
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`towards an arbitrary output port.” Id. at 83–84; see also id. at 89 (“The SLM
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`display area is then divided into distinct sub-holograms, such that every input
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`source is deflected by a different CGH”).
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`2. Determination as to Whether Warr Thesis Constitutes Prior Art
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`Petitioner relies on the Warr Thesis as a printed publication within the
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`meaning of 35 U.S.C. § 102, and argues that the thesis was indexed and shelved in
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`the Cambridge University Library at least one year prior to the effective filing date
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`of the ’710 patent. Pet. 14. In support of the contention that the thesis was
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`indexed and shelved in the Cambridge University Library, Petitioner relies on a
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`letter from Ms. Louise Clarke (Ex. 1011; “the Clarke letter”) and the testimony of
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`Dr. Hall (Declaration of Katherine Hall, Ph.D., Ex. 1003 ¶ 51), who essentially
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`opines as to the content of the Clarke letter.
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`Patent Owner argues that Petitioner has not established properly that the
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`Warr Thesis “was sufficiently publicly accessible so that interested persons in the
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`art could locate it before at least the effective filing date of the ’710 patent.”
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`Prelim. Resp. 38-39. Patent Owner argues that the evidence submitted to prove
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`that the Warr Thesis was available for public access is inadmissible under the
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`Federal Rules of Evidence. Id. at 39–40. Patent Owner additionally argues that
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`the substance of the evidence, if admitted, does not establish that the Warr Thesis
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`was publicly available. Id. We first address the admissibility arguments.
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`With few exceptions, the Federal Rules of Evidence apply to inter partes
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`proceedings. 37 C.F.R. § 42.62. The rules governing inter partes review also set
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`forth the proper procedure for objecting to, and moving to exclude, evidence when
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`appropriate. When a party objects to evidence that was submitted during a
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`preliminary proceeding, such an objection must be served within ten business days
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`of the institution of trial. The objection to the evidence must identify the grounds
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`for the objection with sufficient particularity to allow correction in the form of
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`supplemental evidence. This process allows the party relying on the evidence to
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`which an objection is timely served, the opportunity to correct, by serving
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`supplemental evidence within ten days of the service of the objection. See
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`37 C.F.R. 42.64(b)(1), (b)(2). If, upon receiving the supplemental evidence, the
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`opposing party is still of the opinion that the evidence is inadmissible, the opposing
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`party may file a motion to exclude such evidence. The time for filing a motion to
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`exclude is typically several months into a trial. See, e.g., 77 Fed. Reg. 157 at
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`48,768, App. A.
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`In essence, Patent Owner moves for us to not consider, or exclude, (1) the
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`Clarke letter (Ex. 1011), because the evidence allegedly is inadmissible hearsay
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`and lacks foundation and (2) Dr. Hall’s testimony regarding the letter (Ex. 1003,
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`¶ 51), because Dr. Hall does not have the necessary expertise in library science to
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`opine as an expert on the public availability of the Warr Thesis. Prelim. Resp. 39.
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`These requests for us not to consider, or exclude, are made typically by way of a
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`motion to exclude. See 37 C.F.R. § 42.64(c). As stated above, motions to exclude
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`are not authorized until much later during a trial. Patent Owner’s “motion to
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`exclude” is premature and also prevents Petitioner from correcting, as permitted by
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`the rules. Patent Owner will have full opportunity to object, serve, reconsider any
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`supplemental evidence, and finally, file a motion to exclude evidence. To the
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`extent that Patent Owner urges the Board to consider the evidentiary issues as part
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`of our determination to institute a trial, Patent Owner has failed to explain why we
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`should deviate from the rules governing inter partes review. Thus, we need not
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`decide, at this juncture, whether to exclude Exhibit 1011 or paragraph 51 of
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`Exhibit 1003 from consideration.
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`Patent Owner additionally argues that the substance of the evidence, if
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`admitted, does not establish that the Warr Thesis “was sufficiently publicly
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`accessible” so that interested persons could locate it before the effective filing date
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`of the ’710 patent. Prelim. Resp. 39. A single printed document, sufficiently
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`catalogued and available at a public library, generally is a printed publication
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`within the meaning of 35 U.S.C. § 102. In re Hall, 781 F.2d 897 (Fed. Cir. 1986).
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`The Clarke letter indicates that the Warr Thesis was approved by the Board of
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`Graduate Studies on “15 January 1997.” Ex. 1011, 1. According to the letter, the
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`library catalogue was updated from an in-house database to a newer library
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`management system in 2002, and that those catalogue items which pre-date 2002
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`do not have a record for when they were added to the library catalogue. The letter
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`explains, however, that it was common practice for a thesis to be added to the
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`catalogue approximately one month after the date on which the thesis was
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`approved by the Board of Graduate Studies. Id.