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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`FINISAR CORPORATION
`Petitioner
`
`v.
`
`THOMAS SWAN & CO. LTD.
`Patent Owner
`_____________________
`
`Inter Partes Review Case No. IPR2014-00461
`Patent 7,664,395
`_____________________
`
`
`
`CORRECTED PETITION FOR INTER PARTES REVIEW OF U.S.
`PATENT NO. 7,664,395 UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R.
`§§ 42.1-.80, 42.100-.123
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`IPR2014-00461
`Inter Partes Review of USPN 7,664,395
`TABLE OF CONTENTS
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`I. INTRODUCTION ................................................................................................ 1
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`II. MANDATORY NOTICES AND FEES ............................................................. 4
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`III. CERTIFICATION OF GROUNDS FOR STANDING ..................................... 5
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`IV. BACKGROUND ................................................................................................ 5
`A. OVERVIEW OF THE ’395 PATENT ............................................................. 5
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`V. CLAIM CONSTRUCTION ................................................................................ 7
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`VI. LEVEL OF ORDINARY SKILL IN THE ART .............................................. 12
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`VII. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ................... 13
`A. Summary of Grounds for Challenge .............................................................. 14
`B. Ground 1: Claims 1-17, 20, and 24-27 are rendered obvious by the
`combination of Parker Thesis and Warr Thesis and Tan Thesis .......................... 15
`C. Ground 2: Claims 18, 19, and 21-23 are rendered obvious by the combination
`of Parker Thesis and Warr Thesis and Tan Thesis and Crossland ’787 ............... 53
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`VIII. CONCLUSION .............................................................................................. 60
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`i
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`IPR2014-00461
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`I.
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`INTRODUCTION
`Petitioner Finisar Corporation (“Finisar”) requests inter partes review of all
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`claims of U.S. Patent No. 7,664,395 (“the ’395 patent”) (Ex. 1001), assigned on its
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`face to Thomas Swan & Co. Ltd. (“Thomas Swan”). The claims of the ’395 patent
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`are generally directed to “optical routing modules” that use a “dispersion device” to
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`disperse light beams of different frequencies in different directions onto a “Spatial
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`Light Modulator (SLM) having a two dimensional array of pixels.” The routing
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`module includes circuitry that displays “holograms” on the SLM in order to route the
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`different frequencies (channels) to particular output ports of the module. The
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`technology claimed in the ’395 patent has applications in fiber optic
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`communications. The original patent application that led to the issuance of the ’395
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`patent was filed in the United Kingdom on September 3, 2001.
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`As explained further below, the named inventor on the ’395 patent, Melanie J.
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`Holmes, improperly claimed as her own subject matter that was previously
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`developed and published by her former colleagues at the University of Cambridge
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`(“Cambridge”). For about a decade prior to the filing of the priority application in
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`2001, students and researchers at Cambridge, working in Professor William
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`Crossland’s Photonics & Sensors group, had investigated and published research
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`relating to the use of liquid crystal SLMs for performing all kinds of optical
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`functions for use in optical communication and other applications. This work is well
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`documented and described in numerous publications emanating from Dr. Crossland’s
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`group in the 1990s. See Ex. 1014, http://www-g.eng.cam.ac.uk/photonics_sensors/
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`people/bill-crossland.htm (biography of Prof. Crossland: “Bill Crossland held the
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`position of Group Leader of the Photonics & Sensors Group . . . from 1992 . . . until his
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`retirement at the end of September 2009. . . He is generally regarded as the founding father
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`of liquid crystal over silicon (LCOS) technologies.”) and Ex. 1015, http://www-
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`g.eng.cam.ac.uk/photonics_sensors/publications/index.htm (providing an exemplary
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`listing of publications from the Photonics & Sensors group).
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`In the years prior to the filing of the U.K. priority application, Dr. Holmes
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`collaborated with Cambridge on the development and use of liquid crystal SLMs for
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`optical beam routing and other applications. The collaboration began in at least 1995
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`(Ex. 1010) (article entitled “Low Crosstalk Devices for Wavelength-Routed
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`Networks,” by M. J. Holmes, W. Crossland et al., IEE Colloquium on Guided Wave
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`Optical Signal Processing, IEE Dig. No. 95-128 London, UK) and continued through at
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`least 2001 (Ex. 1011) [article entitled “Holographic Optical Switching: The
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`‘ROSES’ Demonstrator,” by W. A. Crossland, K.L. Tan, M.J. Holmes et al., Journal
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`of Lightwave Technlogy, Vol. 18, No. 12, Dec. 2000, at 1845-54]. During this time,
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`there were three particular students that worked in Prof. Crossland’s group that are
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`relevant to this petition: Michael C. Parker, Stephen T. Warr and Kim L. Tan. Each
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`of these students conducted research relating to liquid crystal SLMs for use in optical
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`2
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`routing that culminated in Ph.D. dissertations published by Cambridge. These three
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`Ph.D. dissertations form the basis of this petition along with a United States patent
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`application filed by Prof. Crossland, each of which are prior art under either § 102(b)
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`or § 102(e).
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`As explained further below, it is apparent that Dr. Holmes claimed as her own
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`the work of Drs. Parker, Warr and Tan and Prof. Crossland after learning about their
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`research through her collaboration with Cambridge. A review of the publication
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`history of the Cambridge group preceding Dr. Holmes’s U.K. priority application
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`makes clear that the researchers in the group worked closely together—sometimes
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`even in the same laboratory using the same devices—and openly shared their ideas
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`with each other. In addition, these researchers frequently cite each other’s work in
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`their publications. Thus, by the time of Dr. Holmes filed her U.K. priority
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`application, a person having ordinary skill in the art (“PHOSITA”) would have
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`understood that the inventions claimed in the ’395 patent were rendered obvious by
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`the prior work of others at Cambridge. Given the working environment at
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`Cambridge and the long history of cross-cited publications, a PHOSITA would have
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`been strongly motivated to combine the Cambridge publications relied upon in this
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`petition.
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`This petition shows that there is a reasonable likelihood that Petitioners will
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`prevail on all claims based on the three Cambridge Ph.D. dissertations discussed
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`3
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`herein, none of which were before the PTO, as well as the Crossland patent
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`application. This prior art anticipates or renders obvious all claims. Claims 1-27 of
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`the ’395 patent should be found invalid and canceled.
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`II. MANDATORY NOTICES AND FEES
`Real Parties-in-Interest: Finisar Corp. is the real party-in-interest herein.
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`Related Matters: The following matter may affect or be affected by a decision
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`herein: Thomas Swan & Co. Ltd. v. Finisar Corp., No. 2:13-cv-178 (E.D. Texas.
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`Counsel: Lead counsel in this case is David Radulescu (PTO Reg. No.
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`36,250); backup counsel is Gregory Maskel (PTO Reg. No. 56,229) and Kurt
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`Rauschenbach (PTO Reg. No. 40,137). Powers of attorney accompany this Petition.
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`Service Information: Email: david@radulescullp.com; greg@radulescullp.com
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`Address: Radulescu LLP, 136 Madison Ave., 6th Floor, New York, NY 10016
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`Telephone: (646) 502-5950
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`Facsimile: (646) 502-5959
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`Email: kurt@rauschenbach.com
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`Address: Rauschenbach Patent Law Group, PO Box 849, Franconia, NH
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`03580
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`Telephone: (603) 823-5590
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`Facsimile: (603) 823-5706
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`Please direct all correspondence to lead counsel at the above address.
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`Petitioners consent to email service at the above addresses.
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`IPR2014-00461
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`Payment: Under 37 C.F.R § 42.103(a), the Office is authorized to charge the
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`fee set forth in 37 C.F.R. § 42.15(a) to Deposit Account No. 506352 as well as any
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`additional fees that might be due in connection with this Petition.
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`III. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies under 37 C.F.R § 42.104(a) that the patent for which
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`review is sought is available for inter partes review and that Petitioner is not
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`barred or estopped from requesting an inter partes review challenging the patent
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`claims on the grounds identified in this Petition.
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`IV. BACKGROUND
`A. OVERVIEW OF THE ’395 PATENT
`Summary: The ’395 patent is “relate[d] to the general field of controlling one
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`or more light beams by the use of electronically controlled devices.” (Ex. 1001 at
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`1:18-20). The central element of the ‘395 patent is something referred to in the
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`claims as a “Spatial Light Modulator (SLM).” (Ex. 1001 at claims 1, 23 and 27).
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`The SLM is made up of a two-dimensional array of “phase modulating elements” –
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`e.g., liquid crystal pixels. (Ex. 1001 at Abstract; 2:48-49; 3:30-31; 6:4-6). The
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`specification describes that a “significant feature of [the] embodiments [described in
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`the specification] is the fact that the size, shape and position of those groups need not
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`be fixed and can, if need be, be varied. The groups may display holograms which
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`can be set up as required to deflect the light so as to provide a non-specular reflection
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`at a controllable angle to the specular reflection direction. The holograms may
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`additionally or alternatively provide shaping of the beam.” (Ex. 1001 at 11:24-31).
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`The specification teaches that the subject SLM is able to modify, in a
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`controlled manner, the direction, power, focus, aberration, or beam shape of a light
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`beam. (Ex. 1001 at 11:36-40). That modification is achieved through the display of a
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`“hologram” at each group of pixels. (Ex. 1001 at 11:26-31). A “hologram” is
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`displayed by applying voltages to each pixel of the group. (Ex. 1001 at 22:1-3). The
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`applied voltage affects the orientation of the liquid crystal. (Ex. 1001 at 11:66-12:3).
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`When the light strikes the liquid crystal, the phase of the light at each pixel is
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`“modulated” or modified based on the orientation of the liquid crystal. (Ex. 1001 at
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`12:11-14).
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`Cited Art: None of the Cambridge Ph.D. dissertations relied upon herein VII
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`were considered during the original prosecution of the ’395 patent. U.S. Patent
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`Application No. 2001/0050787 was cited by the examiner.
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`Prosecution History: The ’395 patent is part of a family of patents that
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`originated from UK Patent Application No. 0121308.1, filed on September 3, 2001.
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`PCT Application No. PCT/GB02/04011 was then filed on September 2, 2002. Upon
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`attaining national stage in the United States on September 10, 2004, U.S. Patent
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`Application No. 10/487,810 was prosecuted. That application led to a restriction
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`requirement and a divisional application, No. 11/514,725, was filed on September 1,
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`2006.
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`V. CLAIM CONSTRUCTION
`This Petition shows that the challenged claims of the ’395 patent (Ex. 1001)
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`are unpatentable when the claims are given their broadest reasonable interpretation
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`in light of the specification, and in view of patentee’s allegations in the co-pending
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`litigation.1 The constructions set forth below are provided for purposes of this inter
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`partes review only.
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`Because the named inventor Dr. Holmes was a former collaborator of Drs.
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`Warr, Parker, Tan, and Crossland and a member of the Crossland group at
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`Cambridge, and in fact claimed the work of these and other individuals after learning
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`about their work through her many interactions with various researchers at
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`Cambridge, the ‘395 patent shares with the asserted prior art references vastly
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`common terminology concerning the same subject matter. As a result, there are few
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`terms in the asserted claims that require construction, as most of the claim terms can
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`be found verbatim in the asserted prior art in the very same context.
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`1 District Courts employ different standards of proof and approaches to claim
`interpretation that are not applied by the USPTO for inter partes review.
`Accordingly, any interpretation or construction of the challenged claims in this
`Petition, either implicitly or explicitly, should not be viewed as constituting, in whole
`or in part, Petitioner’s own interpretation or construction, except as regards the
`broadest reasonable construction of the claims presented. Petitioner reserves the
`right to seek different constructions of these claim terms in a different forum.
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`The broadest reasonable construction for the term “array” is “an assembly of
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`two or more individual elements, appropriately spaced and energized to achieve
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`desired directional properties.” See Ex. 1016, Chambers Science and Technology
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`Dictionary at 51. This definition from a technical dictionary available on or before
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`the priority date of the ‘395 patent is consistent with the use of the term “array” in
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`the specification of the ‘395 patent. For example, Figures 2, 4, and 7 and the
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`corresponding description in the specification describe arrays of pixels consistent
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`with the proposed construction. See, e.g., Ex. 1001 at Figs. 2, 4, 7, 12:64-13:5 (“a
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`first array, or block 13 of pixels,” “a second array, or block 14 of pixels,” “displaying
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`a linearly changing phase ramp in an at least one direction across the blocks or arrays
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`13, 14”). Other disclosure of the term in the patent is also consistent with the
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`proposed construction. See, e.g., Ex. 1001 at 13:23-28; 13:60-65.
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`The broadest reasonable construction for the term “controllable phase-
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`modulating elements” in light of the specification is “components, such as pixels,
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`which can change the phase of incident light under certain conditions created by
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`circuitry, such as application of voltage.” This definition is consistent with the use of
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`the term “controllable phase-modulating elements” in the specification of the ‘395
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`patent. In particular, the specification makes clear that there needs to be a large
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`number of phase-modulating elements for the contemplated optical device to operate.
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`See, e.g., Ex. 1001 at 11:19-24. The specification also discloses embodiments where
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`the phase-modulating elements are pixels. See, e.g., Ex. 1001 at 38:54-56. The
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`specification also provides details of the operation and function of the controllable
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`phase modulating elements, consistent with the proposed construction. See, e.g., Ex.
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`1001 at 13:23-49.
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`The broadest reasonable construction for the term “pixel” in light of the
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`specification is “a component of a polarisation-independent reflective SLM which on
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`one end consists of an electrode connected to circuitry and on the other a common
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`electrode covered by glass, with several layers between the electrodes including
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`liquid crystal material, alignment layers, and a quarter-wave plate.” See, e.g., Ex.
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`1001 at Fig. 1, 11:51-12:1.
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`The broadest reasonable construction for the term “hologram” in light of the
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`specification is “a set of modulation values for achieving the desired change in
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`incident light.” See, e.g., Ex. 1001 at 13:42-49 (“In one example of this operation,
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`the desired phase modulation is expressed modulo 2pi across the array extent, and
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`the value of the desired modulo-2pi modulation is established at the centre of each
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`pixel. Then for each pixel, the available level nearest the desired modulation is
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`ascertained and used to provide the actual pixel voltage. This voltage is applied to
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`the pixel electrode for the pixel of concern.”); 14:13-16 (“The hologram pattern
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`associated with any general non-linear phase modulation exp jφ(u)=exp j
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`(φ0(u)+φ1(u)+φ3(u) . . . ) where j is the complex operator, can be considered as a
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`product.”); 14:43-46 (“Therefore the routing phase modulation results in a set of
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`equally spaced diffraction orders. The greater the number of available phase levels
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`the closer the actual phase modulation to the ideal value and the stronger the selected
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`diffraction order used for routing.”). While the full scope of this term is not clear in
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`the specification, and is context dependent in the industry, it is clear that the term
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`“hologram” in the ‘395 patent refers generally to modulation “data,” or “values,” or
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`“characteristics,” or “parameters,” or “levels” for a achieving a specific desired
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`modulation of incident light, and the proposed construction encompasses the
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`broadest ascertainable use of the term in the specification. See, e.g., Ex. 1001 at
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`19:42-45 (“hologram data”); 13:23-25 (“characteristic”); 13:29-31 (“values”);
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`13:5-7 (“parameters”); 13:32-48 (“level”). See also 20:44-59.
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`The broadest reasonable construction for the term “dispersion device” in light
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`of the specification is “a device that separates a light beam having different
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`wavelengths into its constituent spectral components based on wavelength.” See,
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`e.g., Ex. 1001 at 38:31-34 (“As a result of the grating 300 the beam 301 is split into
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`separate beams 301a, 301b, 301c for each wavelength channel, each travelling in a
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`different direction governed by the grating equation.”).
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`The broadest reasonable construction for the term “SLM” or “spatial light
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`modulator” in light of the specification is “a polarisation-independent device that
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`acts on a light beam or beams incident on the device to provide emerging light
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`beams, which are controlled independently of one another.” See, e.g., Ex. 1001 at
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`Fig. 1, 11:36-40 (“Devices embodying the invention act on light beams incident on
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`the device to provide emerging light beams which are controlled independently of
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`one another. Possible types of control include control of direction, control of power,
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`focussing, aberration compensation, sampling and beam shaping.”); see also 11:20-
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`24. The specification makes clear that the spatial light modulator of the alleged
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`invention must be polarization insensitive or independent for the device to work.
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`See, e.g., Ex. 1001 at 11:41-43 (“polarisation-independent multiple phase liquid
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`crystal over silicon spatial light modulators (SLMs)”). Indeed, the ‘395 patent
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`expressly disclaims any devices that are not polarisation insensitive/independent.
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`See, e.g., Ex. 1001 at 12:38-41 (“The invention may be applied to other devices,
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`provided they are capable of multiphase operation and are at least somewhat
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`polarisation independent at the wavelengths of concern.”). The specification
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`describes several ways of achieving polarisation independence of the SLM. One
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`disclosed way is use of ferroelectric liquid crystal (“FLC”) known to be inherently
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`polarization independent. See, e.g., Ex. 1001 at 12:44-47. Another disclosed way is
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`use of quarter-wave plate that creates polarisation independence. See, e.g., Ex. 1001
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`at 12:44-47; 4:1-3, 7:1-3.
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`The broadest reasonable construction for the term “wave-plate” is “a thin sheet
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`of doubly refracting crystal material of such thickness as to introduce a phase
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`difference of one quarter-cycle between the ordinary and the extraordinary
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`components of light passing through, which results in converting polirisation of the
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`light.” See Ex. 1017, McGraw-Hill Dictionary of Scientific and Technical Terms at
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`1536. This definition from a technical dictionary available on or before the priority
`
`date of the ‘395 patent is consistent with the use of the term “wave-plate” in the
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`specification of the ‘395 patent. See, e.g., Ex. 1001 at 12:44-47; 4:1-3 (“The SLM
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`may be integrated on a substrate and have an integral quarter-wave plate whereby it is
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`substantially polarisation insensitive.”), 7:1-3; 12:4-7; 12:11-43.
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`The broadest reasonable construction for the term “arbitrary shape” in light of
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`the specification is “any discretionary shape.” See Ex. 1018, Webster’s New
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`Universal Unabridged Dictionary at 95 (“left to the discretion or judgment”). This
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`definition from a dictionary available on or before the priority date of the ‘395 patent
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`is consistent with the use of the term “phase” in the specification of the ‘395 patent.
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`See, e.g., Ex. 1001 at 7:47-50 (“arbitrary angle”); 47:6-8 (“Although the grating is
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`drawn as transmissive and the SLM as reflective, these types are arbitrary.”); 17:29-
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`30 (“the size and shape of a block may be varied if required”).
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`The broadest reasonable interpretation of the remaining terms of the
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`challenged claims should be presumed to take on their ordinary and customary
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`meanings for purposes of the IPR.
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
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`The level of ordinary skill in the art is evidenced by the references. See In re
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`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). A person of ordinary skill in
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`the art (“PHOSITA”) for this patent would have at least a Ph.D., or equivalent
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`experience, in optics, physics, electrical engineering, or a related field, including at
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`least three years of experience designing, constructing, and/or testing optical
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`systems. Ex. 1003, Hall Decl. at ¶¶ 12-13. For purposes of this petition, Finisar
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`relies on the September 3, 2001 priority date listed on the face of the ’395 patent as
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`the latest date relevant for the person of ordinary skill in the art analysis for all
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`claims except for claims 21-23.2 Claims 21-23 concern the presence of “guard
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`bands” and there is no disclosure in chain of priority until the PCT application
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`PCT/GB02/04011 was filed on September 2, 2002.
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`VII. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Under 37 C.F.R §§ 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner challenges
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`claims 1 through 27 of U.S. Patent No. 7,664,395 (Ex. 1001, “the ’395 patent”).
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`Petitioners request this relief in view of the following references:
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`Exhibit
`
`Description
`
`Publication or
`Filing Date3
`
`Type of
`Prior Art4
`
`
`2 Finisar reserves the right to contest this date in this proceeding and in the
`companion district court case, Thomas Swan & Co. Ltd. v. Finisar Corp., No. 2:13-
`cv-178 (E.D. Texas), for any alleged conception date that Thomas Swan should
`submit during this proceeding, whether earlier or later than the filing of the U.K.
`application in September 2001.
`3 This date is the date listed on the face of the document.
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`Ex. 1005 “Dynamic Holograms for Wavelength
`November 1996
`§ 102(b)
`Division Multiplexing,” Michael
`Charles Parker (“Parker Thesis”)
`Ex. 1006 “Free Space Switching for Optical
`Fibre Networks,” Stephen Thomas
`Warr (“Warr Thesis”)
`Ex. 1007 “Dynamic Holography Using
`Ferroelectric Liquid Crystal on
`Silicon Spatial Light Modulators,”
`Kim Leong Tan (“Tan Thesis”)
`Ex. 1008 U.S. Patent Application No.
`2001/0050787 to Crossland, et al.
`(“Crossland ’787”)
`
`July 1996
`
`§ 102(b)
`
`February 1999
`
`§ 102(b)
`
`May 18, 2001
`
`§ 102(e)
`
`
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`A full list of exhibits relied on in this petition is included as Appendix A.
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`Each of the Parker Thesis, Warr Thesis and Tan Thesis are “printed
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`publication” prior art under 35 U.S.C. § 102(b). Each of these three theses was
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`indexed and shelved in the Cambridge University library by at least one year prior to
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`the U.K. Priority Application date of September 3, 2001. See Hall Decl. at ¶ 50.
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`A.
`Summary of Grounds for Challenge
`Inter partes review is requested on the grounds for unpatentability listed in the
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`index below. In support of the proposed grounds for unpatentability, this Petition is
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`accompanied by a declaration of a technical expert, Dr. Katherine Hall (Ex. 1003),
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`which explains what the art would have conveyed to a PHOSITA.
`
`Claims
`Index of References
`Ground 35 USC
`1-17, 20, 24-27
`Parker Thesis and Warr Thesis and Tan
`1
`§ 103
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`4 The ’395 patent issued prior to the America Invents Act (the “AIA”).
`Accordingly, Petitioner has used the pre-AIA statutory framework to refer to the
`prior art.
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`2
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`§ 103
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`Thesis
`Parker Thesis and Warr Thesis and Tan
`Thesis and Crossland ’787
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`18, 19, 21-23
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`All of the claims of the ’395 patent are rendered obvious by the art cited in the
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`
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`grounds of unpatenability described above. In the attached declaration, Dr. Hall
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`provides a thorough discussion of the state of the art at the time of this alleged
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`“invention.” Her declaration makes it clear that all the elements of all the challenged
`
`claims lack invention. (Ex. 1006, ¶ 46-213.)
`
`B. Ground 1: Claims 1-17, 20, and 24-27 are rendered obvious by the
`combination of Parker Thesis and Warr Thesis and Tan Thesis
`The combination of the Parker Thesis, Warr Thesis and Tan Thesis renders
`
`claims 1-17, 20, and 24-27 obvious. Every element of each of these claims is either
`
`disclosed or would be an obvious variant on the teachings of the Parker Thesis, Warr
`
`Thesis, and Tan Thesis. The subject matter, history, and devices used in these three
`
`references evidence a clear motivation to combine.
`
`The Parker Thesis is a prior art reference to the ’395 patent under § 102(b).
`
`Parker Thesis is a Ph.D. dissertation submitted by Michael Parker at the conclusion
`
`of his studies at the University of Cambridge, in November 1996. Dr. Parker worked
`
`in Prof. Crossland’s group at Cambridge under the supervision of Dr. Robert Mears.
`
`Parker Thesis at iii. The thesis discusses the use of a polarization insensitive
`
`ferroelectric liquid crystal SLM to make a tunable wavelength filter, a tunable fibre
`
`laser, and a design for a space-wavelength switch. The design for the space-
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`IPR2014-00461
`Inter Partes Review of USPN 7,664,395
`wavelength switch is the basic optical geometry found in the independent claims of
`
`the ’395 patent. The geometry for this device is depicted in the dissertation as
`
`follows:
`
`
`The Warr Thesis is a prior art reference to the ’395 patent under § 102(b).
`
`The Warr Thesis is a Ph.D. dissertation by Steven Warr, a student who worked in
`
`Prof. Crossland’s group at Cambridge under the supervision of Dr. Robert Mears.
`
`Warr Thesis at x. The key disclosure in Chapter 5 of the Warr Thesis is “a single-
`
`mode FLC-SLM crossbar architecture for interconnecting large arrays of input and
`
`output fibres. An array of dynamic holograms can be used to achieve an arbitrary
`
`routeing pattern between N inputs and M outputs, and two methods of re-entering the
`
`fibre network are considered.” Warr Thesis at 4.
`
`The Tan Thesis is a prior art reference to the ’395 patent under § 102(b). The
`
`Tan Thesis is a Ph.D. dissertation by Kim L. Tan, a student who worked in Prof.
`
`Crossland’s group at Cambridge under the supervision of Dr. Robert Mears. Tan
`
`Thesis at iv. Dr. Tan’s work focused on the performance characteristics of pixelated
`
`liquid crystal spatial light modulators, “including theoretical analysis, numerical
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`IPR2014-00461
`Inter Partes Review of USPN 7,664,395
`simulations with realistic examples and the design, fabrication, characterization and
`
`experimentation [on] demonstrator devices…” Tan Thesis at 3.
`
`A PHOSITA would have been motivated to combine the Parker Thesis with
`
`the Warr Thesis and the Tan Thesis for a number of independent reasons.
`
`Fundamentally, the three theses cover nearly identical subject matter. Each discloses
`
`the use of an adaptive optical routing module that uses a conventional holographic
`
`liquid crystal spatial light modulator to switch, route, filter, and analyze light signals.
`
`Parker Thesis at 2, 8-9, 11-12, 95-97; Warr Thesis at 2-4, 36, 42, 83-84, 95; Tan
`
`Thesis at iii, 2, 6. As a result, any element, technique or other solution implemented
`
`by the routing modules described in one thesis would yield the same predictable
`
`result if transplanted to the routing modules described in one of the other theses. For
`
`example, each thesis describes techniques that were well known to a PHOSITA for
`
`designing holograms, minimizing crosstalk, and dealing with device misalignment.
`
`Parker Thesis at 24-46, 98; Warr Thesis at 43-44, 58, 118; Tan Thesis at iii, 41, 42-
`
`64, Because of the similarity between the devices disclosed in each thesis, each of
`
`these well-known techniques could be applied to the devices in any of the other
`
`theses.
`
`Similarly, in the theses’ common field of endeavor there are a finite number of
`
`conventional and predictable solutions to the problems that they are trying to
`
`address, such that it would have been obvious to try one of these well-known
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`IPR2014-00461
`Inter Partes Review of USPN 7,664,395
`solutions described in one thesis with the device disclosed in one of the other theses
`
`with a reasonable expectation of success. For example, it was well known in the art
`
`to use a quarter-wave plate to deal with polarization issues. Parker Thesis at 96;
`
`Warr Thesis at 25; Tan Thesis at 91-92. Thus, it would have been obvious to try to
`
`use the quarter wave-plate disclosed in one thesis in one of the devices disclosed in
`
`one of the other theses in order to deal with polarization issues. For further example,
`
`it was well known to use a grating to disperse an optical signal into its component
`
`parts. Parker Thesis at 47-48, 96; Warr Thesis at 62. Thus, it would have been
`
`obvious to try to use a grating as disclosed in one thesis in one of the devices
`
`disclosed in one of the other theses in order to disperse a WDM signal into its
`
`component parts.
`
`Finally, a PHOSITA reviewing any one of the theses would have been
`
`motivated to look at the work of one of the other two prior artists because they were
`
`members of the same group at Cambridge and cited each other’s work. See, e.g.,
`
`Parker Thesis at i,, 108-09, 121; Warr Thesis at i, x, 123; Tan Thesis at 5, 170, 173,
`
`176. Moreover, both Drs. Parker and Warr were members of Prof. Crossland’s
`
`group at the same time, with a common supervisor, Dr. Robert Mears. Dr. Tan was a
`
`later member of the group (whose time with the group overlapped with Drs. Parker
`
`and Warr), but did acknowledge the help of Dr. Parker in his thesis. Tan Thesis at i
`
`and iv. Also, Section 4.3 of the Parker Thesis (“Proof-of-Principle” for a
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`IPR2014-00461
`Inter Partes Review of USPN 7,664,395
`“Holographic -Filter”) is explicitly described as a collaboration between Drs.
`
`Parker and Warr. Parker Thesis at i. In certain cases, Drs. Parker and Warr used the
`
`same devices. For example, Parker describes the use of an “EASLM 2DX128
`
`manufactured by CRL, Thorn EML,” which is an SLM. Parker Thesis at 14, n.2.
`
`Warr Thesis describes the use of the same SLM: “2DX128 supplied by THORN EMI
`
`CRL.” Warr Thesis at 30. This demonstrates that the techniques describe by one
`
`were predictably workable if transferred to the other since they used same devices.
`
`Claims 1 through 17, 20, and 24 through 27 would have been obvious over the
`
`Parker Thesis in view of the Warr Thesis and the Tan Thesis. The reasons for this
`
`combination rendering each of these claims obvious are discussed in the chart below.
`
`[1pre.] An
`optical
`routing
`module
`having at
`least one
`input and at
`least one
`output and
`operable to
`select
`between the
`outputs, the
`or each input
`receiving a
`respective
`light beam
`having an
`ensemble of
`different
`
`Parker Thesis discloses a space-wavelength switch that includes
`having at least one input and at least one output and operable to
`select between the outputs, the or each
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