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`Paper 12
`Entered: September 12, 2014
`
`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
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`

`

`IPR2014-00460
`Patent 7,145,710 B2
`
`
`I.
`
`INTRODUCTION
`
`Finisar Corp. (“Petitioner”) requests reconsideration of the Board’s Decision
`(Decision—Institution of Inter Partes Review, Paper 9) (hereinafter “Decision”)
`not to institute inter partes review of claims 3 and 10 on the ground of anticipation
`by US 2001/0050787 A1 (published Dec. 13, 2001) (“Crossland,” Ex. 1010).
`Reh’g Req. 2. We have considered Petitioner’s request, but decline to modify the
`Decision to not institute inter partes review of claims 3 and 10 of U.S. Patent No.
`7,145,710 B2 (Ex. 1001, “the ’710 patent”).
`
`II.
`
`STANDARD OF REVIEW
`
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a
`panel will review the decision for an abuse of discretion.” An abuse of discretion
`may be determined if a decision is based on an erroneous interpretation of law, if a
`factual finding is not supported by substantial evidence, or if the decision
`represents an unreasonable judgment in weighing relevant factors. Star Fruits
`S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362
`F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed.
`Cir. 2000). In its request for rehearing, the dissatisfied party must identify the
`matters believed to be misapprehended or overlooked by the Board and the place in
`the record where it previously addressed each matter it submits for review. 37
`C.F.R. § 42.71(d). The challenging party bears the burden of showing that the
`decision should be modified. Id.
`
`III. DISCUSSION
`
`Petitioner argues that the Board misapprehended the construction of the
`claim term “resolving the respective generated holograms modulo 2pi.” Reh’g
`
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`2
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`

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`IPR2014-00460
`Patent 7,145,710 B2
`
`Req. 1, 2. Petitioner specifically points to the Board’s statement that “Dr. Hall,
`however, points to thresholds in which δ1 equals –π/2 and δ2 equals π/2, not 2π.”
`Reh’g Req. 7 (citing Decision 34). Petitioner argues that this statement shows that
`the Board “mistakenly interpreted Dr. Hall’s comment regarding the thresholds as
`relating to her conclusion that Crossland discloses ‘resolving the generated
`holograms modulo 2pi,’” but that in actuality “[t]he discussion of thresholds relate
`to the quantization of the signal into its binary components, 0 and pi and does not
`relate to resolving ‘modulo 2pi.’” Reh’g Req. 8.
`Petitioner’s challenge against the claimed step of “resolving the respective
`generated holograms modulo 2pi” is thus based on its reproduction of ¶ 90 of
`Crossland and citation to ¶ 134 of the Declaration of Katherine Hall, Ph.D (Ex.
`1003). Pet. 52-53. Paragraph 134 states in its entirety that:
`A PHOSITA would have understood that Crossland ’787 discloses the
`element “resolving the respective generated holograms modulo 2pi.”
`Crossland ’787 discloses a technique of displaying a hologram by
`using a FLC SLM to generate a binary phase hologram. Crossland
`’787 further discloses that the binary phase is selected from the phase
`only hologram by two thresholds, δ1 and δ2, and also that a safe
`threshold that provides consistent results is δ1= –π/2 and δ2 equals π/2.
`Ex. 1003 ¶ 134 (quoting Ex. 1001, 62:27; citing Ex. 1010 ¶ 90).
`Petitioner has not explained adequately in its Petition how the claimed step
`of “resolving the respective generated holograms modulo 2pi” is found expressly,
`implicitly, or inherently in Crossland. The Petition relied on the conclusory
`statement by Dr. Hall that one of skill in the art simply would have understood ¶ 90
`of Crossland to disclose resolving the respective generated holograms modulo 2pi
`(Ex. 1003 ¶ 134), but did not provide any accompanying explanation other than the
`reference to the thresholds, which Petitioner notes did not relate to resolving
`modulo 2pi. Reh’g Req. 8. The Board’s Decision was not based on an erroneous
`
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`IPR2014-00460
`Patent 7,145,710 B2
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`conclusion of law relating to the construction of the claim term “resolving . . .
`modulo 2pi,” but rather on Petitioner’s failure to sufficiently demonstrate that
`claims 3 and 10 are unpatentable as anticipated by Crossland.
`Petitioner also argues that the equation set forth in ¶ 90 of Crossland, i.e.,
`
`(cid:1834)(cid:3003)(cid:3017)(cid:3016)(cid:3404)(cid:4676)0 (cid:2012)(cid:2869)(cid:3409)∅(cid:4666)(cid:1873),(cid:1874)(cid:4667)(cid:3409)(cid:2012)(cid:2870)
`(cid:2024) (cid:1867)(cid:1872)(cid:1860)(cid:1857)(cid:1870)(cid:1875)(cid:1861)(cid:1871)(cid:1857) (cid:4677), “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.’” Reh’g Req. 9. Petitioner further explains that “[i]t 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 the fact that Crossland has a hologram
`resolved ‘modulo 2pi.’” Id.; see also, e.g., id. at 10 (“[T]he Crossland hologram
`uses only the values of 0 and pi, and does not include . . . values that are greater
`than or equal to 2pi.”). While the Petition reproduces the equation set forth in ¶ 90
`of Crossland (Pet. 53), the Petition includes only a conclusory statement that
`Crossland discloses resolving the respective generated holograms modulo 2pi
`without any accompanying explanation of how the equation would be perceived by
`one of ordinary skill in the art. Pet. 52-53. While ¶ 134 of Exhibit 1003 (cited in
`the Petition) refers to generation of “a binary phase hologram,” it makes no
`mention of the values of the phase falling between 0 and 2pi so as to explain Dr.
`Hall’s conclusory statement that one of ordinary skill in the art would understand
`Crossland to disclose the claimed step of resolving the generated holograms
`modulo 2pi. The additional statements and explanation provided by Petitioner in
`its Request as to how Crossland’s equation demonstrates the claimed step of
`resolving modulo 2pi were not previously presented in the Petition. We could not
`have overlooked or misapprehended explanations that were not presented in the
`Petition.
`
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`IPR2014-00460
`Patent 7,145,710 B2
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`IV. CONCLUSION
`
`For the reasons given, we determine that Petitioner has not carried its burden
`of demonstrating that the Board misapprehended or overlooked any matters
`requiring modification of the Decision. Based on the record before us at the time
`of entering the Decision, Petitioner did not explain adequately how Crossland
`discloses the claimed step of “resolving the respective generated holograms
`modulo 2pi.”
`
`V. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s Request for Rehearing of the Decision that
`
`declined to institute inter partes review of claims 3 and 10 on the ground of
`anticipation by Crossland is denied.
`
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`IPR2014-00460
`Patent 7,145,710 B2
`
`FOR PETITIONER:
`
`David Radulescu
`Gregory Maskel
`RADULESCU LLP
`david@radulescullp.com
`greg@radulescullp.com
`
`Kurt Rauschenbach
`RAUSCHENBACH PATENT LAW GROUP
`kurt@rauschenbach.com
`
`
`
`FOR PATENT OWNER:
`
`Marc M. Wefers
`W. Karl Renner
`FISH & RICHARDSON P.C.
`IPR28733-002IP1@fr.com
`wefers@fr.com
`axf@fr.com
`
`
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`6
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