UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`FINISAR CORPORATION
`Petitioner
`
`v.
`
`THOMAS SWAN & CO. LTD.
`Patent Owner
`_____________________
`
`Case No. IPR2014-00460
`Patent 7,145,710 B2
`_____________________
`
`
`
`REQUEST FOR REHEARING REGARDING THE BOARD’S
`DENIAL OF INSTITUTION OF INTER PARTES REVIEW FOR
`CLAIMS 3 AND 10 OF U.S. PATENT NO. 7,145,710 IN VIEW OF
`U.S. PATENT APPLICATION 2001/0050787
`
`
`
`
`
`
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`FINISAR CORPORATION
`Petitioner
`
`v.
`
`THOMAS SWAN & CO. LTD.
`Patent Owner
`_____________________
`
`Case No. IPR2014-00460
`Patent 7,145,710 B2
`_____________________
`
`
`
`REQUEST FOR REHEARING REGARDING THE BOARD’S
`DENIAL OF INSTITUTION OF INTER PARTES REVIEW FOR
`CLAIMS 3 AND 10 OF U.S. PATENT NO. 7,145,710 IN VIEW OF
`U.S. PATENT APPLICATION 2001/0050787
`
`
`
`
`
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`
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`Cases
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`TABLE OF AUTHORITIES
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`Case No. IPR2014-00460
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`
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`Page(s)
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`Arnold P’ship v. Dudas,
`362 F.3d 1338 (Fed. Cir. 2004)..................................................................................................2
`
`In re Gartside,
`203 F.3d 1305 (Fed. Cir. 2000)..................................................................................................2
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc)..................................................................................6
`
`PNY Techs., Inc. v. Phison Elec. Corp.,
`Case IPR2013-00472 (P.T.A.B. Apr. 23, 2014) ........................................................................3
`
`Star Fruits S.N.C. v. United States,
`393 F.3d 1277 (Fed. Cir. 2005)..................................................................................................2
`
`In re Zletz,
`893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989) .....................................................................6
`
`Regulations
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`37 C.F.R. § 42.71 .........................................................................................................................1, 2
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`
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`i
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`Case No. IPR2014-00460
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`Pursuant to 37 C.F.R. § 42.71(c), the petitioner, Finisar Corp. (“Finisar”),
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`hereby submits the following Request for Rehearing in response to the Decision,
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`Institution of Inter Partes Review of U.S. Patent No. 7,145,710 (“the Decision”)
`
`(Paper 9).
`
`Finisar’s petition for inter partes review (“Petition,” Paper 5) was concisely
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`drafted under the assumption the PTAB would correctly understand the concepts of
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`“modular” math. This request is submitted to correct that assumption and allow
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`the Board to reconsider its decision and grant a rehearing based on the proper
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`understanding of “modular” math. The misapprehension of the Board is a
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`misapprehension of claim construction, a legal rather than factual issue.
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`I.
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
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`The Decision ordered review on Claims 1, 2, 4-6, 8, 9, 11, 12, and 14 of U.S.
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`Patent No. 7,145,710 (the “’710 Patent”), as anticipated by Stephen T. Warr, Free-
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`Space Switching for Optical Fibre Networks (July 1996) (Ph.D. dissertation,
`
`University of Cambridge) (on file with Cambridge University Library) (“Warr
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`Thesis,” Ex. 1005). The Decision also ordered review on Claims 7 and 13 as
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`obvious over Warr Thesis and U.S. Patent 6,549,865 B2 (issued Apr. 15, 2003)
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`(“Tomlinson,” Ex. 1008). The Decision denied inter partes review of claims 3 and
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`10 for two grounds: (1) obviousness in view of Warr Thesis plus McManamon and
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`(2) anticipation in view of U.S. Patent Application No. 2001/0050787
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`
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`1
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`
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`(“Crossland,” Ex. 1010). Finisar requests that the Board reconsider its decision to
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`Case No. IPR2014-00460
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`not institute on the latter ground, in light of the governing law regarding claim
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`construction, and in light of the proper reading of “resolving the respective
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`generated holograms modulo 2pi.” Therefore, Finisar requests that trial be
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`instituted on claims 3 and 10 in view of Crossland as an anticipatory reference.1
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`II. LEGAL STANDARD
`A request for rehearing “must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or reply.” 37 C.F.R.
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`§ 42.71(d). “When rehearing a decision on petition, the panel will review the
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`decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). An abuse of discretion
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`may be determined if a decision is based on an erroneous interpretation of law, if a
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`factual finding is not supported by substantial evidence, or if the decision
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`represents an unreasonable judgment in weighing relevant factors. Star Fruits
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`S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v.
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`Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); and In re Gartside, 203 F.3d 1305,
`
`
`1 Patent Owner made no challenge to the assertion that Claim 1 is anticipated
`by Crossland, but reserved rights to argue that after institution. Preliminary
`Response (Paper 8) at 1, 36-38. Claim 3 depends on Claim 1, both of which were
`discussed extensively in the Petition (Paper 5) and the Declaration of Katherine
`Hall (Ex. 1003).
`
`
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`2
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`
`
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`1315-16 (Fed. Cir. 2000); PNY Techs., Inc. v. Phison Elec. Corp., Case IPR2013-
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`Case No. IPR2014-00460
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`00472, at 2 (P.T.A.B. Apr. 23, 2014).
`
`III. TECHNICAL BACKGROUND RE: “MODULAR” MATH
`In order to fully understand the nature of the Board’s misapprehension of the
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`meaning of “modulo 2pi,” a brief technical background discussion of “modular”
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`math is useful. This background is provided in order to have a full understanding
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`of the scope of Claim 3 and how, with a proper interpretation of Claim 3, the
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`“modulo 2pi” element is fully disclosed by Crossland.
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`An apt and common analogy to describe modular math is the face of a 12-
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`hour clock. A 12-hour clock looks like this:
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`Ex. 1021, An Introduction to Modular Arithmetic, http://nrich.maths.org/4350
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`[home page added to exhibit]. As further explained by this website set up by the
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`University of Cambridge:
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`“The numbers go from 1 to 12, but when you get to “13 o’clock”, it actually
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`becomes 1 o’clock again (think of how the 24 hour clock numbering works).
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`So 13 becomes 1, 14 becomes 2, and so on.
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`Case No. IPR2014-00460
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`This can keep going, so when you get to “25 o’clock”, you are actually back
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`round to where 1 o’clock is on the clock face (and also where 13 o’clock
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`was too).
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`
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`So in this clock world, you only care where you are in relation to the
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`numbers 1 to 12. In this world, 1, 13, 25, 37, … are all thought of as the
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`same thing, as are 2, 14, 26, 38, … and so on.
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`
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`What we are saying is “13=1+ some multiple of 12”, and "38=2+ some
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`multiple of 12”, or, alternatively, “the remainder when you divide 13 by 12
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`is 1” and “the remainder when you divide 38 by 12 is 2”. The way we write
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`this mathematically is 13≡1 mod 12, 38≡2 mod 12, and so on. This is read
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`as “13 is congruent to 1 mod (or modulo) 12” and “38 is congruent to 2 mod
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`12”.
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`4
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`Case No. IPR2014-00460
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`But you don't have to work only in mod 12 (that’s the technical term for it).
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`For example, you could work mod 7, or mod 46 instead if you wanted to
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`(just think of clocks numbered from 1 to 7 and 1 to 46 respectively; every
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`time you get past the biggest number, you reset to 1 again).”
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`
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`Ex. 1021. For additional background on “modular” math, Finisar has provided
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`additional exhibits to inform the Board and further support this technical
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`discussion. Exs. 1022-23.
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`IV. BASIS FOR RELIEF REQUESTED
`The Board committed legal error when it failed to apply the plain and
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`ordinary meaning of the term “modulo 2pi.” Below, Finisar further explains the
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`plain and ordinary meaning of “modulo 2pi,” why the Board committed legal error
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`with respect to claim construction, and why the Petition and the Declaration of
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`Katherine Hall correctly applied the plain and ordinary meaning of “modulo 2pi.”
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`5
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`Case No. IPR2014-00460
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`A.
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`Proper Analysis Under Claim Construction Precedent
`Demonstrates That “Modulo 2pi” Should Be Construed With Its
`Plain and Ordinary Meaning
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`The Federal Circuit has made clear that “the ordinary and customary
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`meaning of a claim term is the meaning that the term would have to a person of
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`ordinary skill in the art in question at the time of the invention, i.e., as of the
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`effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d
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`1303, 1313 (Fed. Cir. 2005) (en banc). The words of the claim must be given their
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`plain meaning unless the plain meaning is inconsistent with the specification. In re
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`Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). Here, the
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`broadest reasonable construction of modulo 2pi is the plain and ordinary meaning,
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`which can only be the specific mathematical definition associated with this phrase.
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`The Board failed to apply this plain and ordinary meaning.
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`B.
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`The Board Committed Legal Error by Misapprehending the Plain
`and Ordinary Meaning of “Modulo 2pi”
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`The Decision misapprehended the plain and ordinary meaning of “modulo
`
`2pi” and committed legal error.
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`Based on the technology background above in Section III, the following
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`graphic illustrates a clock representation of “modulo 2pi”, together with the
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`Crossland phase values in his expression for the rendered hologram that fall on the
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`clock representation:
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`On a 2pi clock, the 2pi is equivalent to 0.
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`6
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`Case No. IPR2014-00460
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`The Crossland expression converts the hologram into two values, 0 and pi,
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`confined to the modulo 2pi clock. Hall Decl. at ¶ 134.
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`In the Decision, the Board stated, “Paragraph 90 of Crossland states that
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`‘[t]he binary phase is selected from the phase only hologram by two thresholds a δ1
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`and δ 2. The thresholding is done such that:
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`
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`Dr. Hall opines that a person having ordinary skill in the art “would have
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`understood that Crossland . . . discloses the element ‘resolving the respective
`
`generated holograms modulo 2pi.”’ Ex. 1003 ¶ 134 (quoting Ex. 1001, 62:27). Dr.
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`Hall, however, points to thresholds in which δ 1 equals –π/2 and δ 2 equals π/2, not
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`2π.” Decision at 34.
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`Case No. IPR2014-00460
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`It is important to understand that the “modulo 2pi” references in the field of
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`optics arise directly from the fact that the phase of an optical signal is cyclical in
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`phase on a cycle that is 2pi in length. See Hall Decl. at ¶ 134; Petition at 52-53.
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`Thus, a “modulo 2pi” representation has converted values of phase that are greater
`
`than or equal to 2pi into a value that falls within zero and 2pi by subtracting
`
`appropriate multiples of 2pi. See Section III above. The converted phase values
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`are equivalent to the values between 0 and 2pi and do not change the value of the
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`function derived from that particular phase value. See Hall Decl. at ¶ 134; Petition
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`at 52-53.
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`The Board appears to have mistakenly interpreted Dr. Hall’s comment
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`regarding the thresholds as relating to her conclusion that Crossland discloses
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`“resolving the generated holograms modulo 2pi.” Indeed this is a complicated
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`technology, but these issues were meant to be separate. See Hall Decl. at ¶ 134.
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`The discussion of thresholds relate to the quantization of the signal into its binary
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`components, 0 and pi and does not relate to resolving “modulo 2pi.” Dr. Hall
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`included the reference to the thresholds only to explain the resolution of the
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`hologram into two phases (the “binary phase”) of Crossland. Hall Decl. at ¶ 134.
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`The reference to the thresholds only served to highlight the fact that the phase is
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`resolved into only two values: 0 and pi. Id. In other words, inside one range
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`between the threshold values, the value is zero, and outside that range, the value is
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`8
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`pi. Id. The Board’s misapprehension of this crucial claim construction distinction
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`Case No. IPR2014-00460
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`was legal error.
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`C. The Petition and Dr. Hall’s Discussion, When Used with the
`Correct Understanding of the Plain and Ordinary Meaning of
`“Modulo 2pi” Shows that Crossland Invalidates Claim 3
`
`The above referenced equation for HBPO is more than sufficient to indicate to
`
`a person of ordinary skill in the art that the hologram disclosed by Crossland is
`
`resolved “modulo 2pi.” It is the rendered hologram, and not the thresholds, that
`
`have the binary values 0 and pi which fall within a range of 0 to 2pi, indicative of
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`the fact that Crossland has a hologram resolved “modulo 2pi.” What Dr. Hall
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`explained was that the disclosure of the hologram being resolved “modulo 2 pi” is
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`recognizable to one skilled in the art by virtue of the fact that the two values of
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`phase in the expression disclosed by Crossland are 0 and pi. See Hall Decl. at
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`¶ 134. In other words, Crossland’s binary phases fall within the region 0≤𝜃<
`2𝜋. See Hall Decl. at ¶ 134; Petition at 52-53. To describe a phase value “modulo
`
`2pi” in the field of optics means that the phase only exhibits values between 0 and
`
`2pi. Those familiar with the state-of-the-art understand that an optical phase
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`parameter, such as the phase values provided in the Crossland hologram
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`expression, can fully indicate the function of a phase-sensitive device by
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`expressing the phase between the values of 0 and 2pi. See Hall Decl. at ¶ 134.
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`Values of phase outside this range can be represented by values inside this range,
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`9
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`derived by adding or subtracting 2pi, owing to the cyclical nature of the functions
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`Case No. IPR2014-00460
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`of phase that describe optical light waves. It is this ambiguity of the phase in
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`increments of 2pi that leads to the conversion of phase-sensitive parameters
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`“modulo 2pi.” See Hall Decl. at ¶ 134; Petition at 52-53.
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`Said another way, resolving a phase-sensitive function “modulo 2pi”
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`involves establishing the values of phase to values that fall between zero and 2 pi.
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`Therefore, the binary phase function expressed by Crossland indicates to a person
`
`of ordinary skill in the art that Crossland is expressing a hologram that has been
`
`resolved “modulo 2pi.” That is because the Crossland hologram uses only the
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`values of 0 and pi, and does not include, for example, 5/2 pi, or other values that
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`are greater than or equal to 2 pi, or likewise values that are less than zero. Hall
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`Decl. at ¶ 134; Petition at 52-53.
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`More specifically, Dr. Hall’s assertion regarding the hologram disclosed by
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`Crossland being resolved “modulo 2pi” is based on the person of ordinary skill in
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`the art’s familiarity with “modulo 2pi” in the field of optics. Hall Decl. at ¶ 134.
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`This is due to the fact that light waves are described by cyclical functions of a
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`phase-term, 𝜃, that include sin(𝜃) and cos(𝜃), or the equivalent expression
`exp(i 𝜃). These functions are cyclical and return to the same value for all 𝜃=
`𝜃,𝜃+2𝜋,𝜃+4𝜋,𝑒𝑡𝑐. Therefore, a full description of the function is provided by
`specifying all 𝜃 to lie between 0 and 2pi. See Hall Decl. at ¶ 134; Petition at 52-53.
`
`
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`10
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`No new values of the function are obtained with phase values that fall outside this
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`Case No. IPR2014-00460
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`range. Id. Specifically, this range is defined as 0≤𝜃<2𝜋, where it is noted that
`the value 2 π is equivalent to 0, and so the value 2pi is not included in the range.
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`Id. Thus, “modulo 2pi” indicates that all the values of phase fall between 0 and 2pi,
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`and include 0, but not 2pi. Id. It is well understood in the art that an equation such
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`HBPO, as disclosed by Crossland, which provides values of phase that only reside
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`between 0 and 2pi is resolved “modulo 2pi.” Id. Thus, it is the binary, 0 and pi,
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`values of phase expressed by Crossland that indicate to Dr. Hall that Crossland is
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`disclosing a hologram resolved modulo 2pi. Hall Decl. at ¶ 134. The threshold
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`values only describe quantitatively the quantization process, not the modulus of the
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`hologram phase function. Hall Decl. at ¶ 134; Petition at 52-53. Therefore, when
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`the Petition incorporated the equation found at ¶ [0090] (and Dr. Hall’s citation to
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`that entire paragraph), it properly showed that Crossland discloses the element
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`“resolving the respective generated holograms modulo 2pi.” Petition at 52-53.
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`Once the Board corrects its legal error with respect to the plain meaning of
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`“modulo 2pi,” the Petition and Dr. Hall’s Declaration describe how Crossland
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`anticipates Claim 3.
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`D. The Only Dispute Between the Parties Was With Respect to
`Claim 3, Therefore the Board Should Institute on Claim 10 as
`Well
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`11
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`Case No. IPR2014-00460
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`Finisar’s Petition asserted that Claim 10 of the ’710 Patent, which depends
`
`on Claim 3 of the ’710 Patent is also anticipated by Crossland. See Petition at 45-
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`47. Patent Owner asserted that Claim 10 should not be instituted in view of its
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`argument that Claim 3 is not anticipated by Crossland. Preliminary Response
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`(Paper 8) at 38. Therefore, should the Board reverse its decision as to Claim 3,
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`Claim 10 should also be instituted as well.
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`V. CONCLUSION
`For the foregoing reasons, Finisar requests that the Board institute trial on
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`claims 3 and 10 of the ’710 Patent in view of Crossland.
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`
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`RESPECTFULLY SUBMITTED,
`
`/David C. Radulescu/
`David C. Radulescu, Ph.D.
`Registration No. 36,250
`david@radulescullp.com
`Gregory S. Maskel
`Registration No. 56,229
`greg@radulescullp.com
`RADULESCU LLP
`136 Madison Avenue, 6th Floor
`New York, NY 10016
`Phone: (646) 502-5950
`Facsimile: (646) 502-5959
`
`Kurt Rauschenbach
`Registration No. 40,137
`kurt@rauschenbach.com
`Rauschenbach Patent Law Group
`P.O. Box 849
`Franconia, NH 03580
`Phone: (603) 652-1400
`
`
`
`
`Date: September 4, 2014
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`12
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`Case No. IPR2014-00460
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`Facsimile: (603) 823-5706
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`Attorneys for Petitioner Finisar Corp.
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`CERTIFICATE OF SERVICE ON PATENT
`OWNER UNDER 37 C.F.R. § 42.6(e)
`
`Under 37 C.F.R. §§ 42.6, the undersigned certifies that on September 4,
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`2014, a complete and entire copy of this Request for Rehearing Regarding the
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`Board’s Denial of Institution of Inter Partes Review for Claims 3 and 10 of U.S.
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`Patent No. 7,145,710 in View of U.S. Patent Application 2001/0050787 and all
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`supporting exhibits, attachments, annexes, and appendices were served
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`electronically (per agreement with Patent Owner’s counsel) to the Patent Owner by
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`serving the correspondence address of record for the ‘710 Patent and Patent
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`Owner counsel by email at IPR28733-0002IP1@fr.com.
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`
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`13
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