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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`FINISAR CORP.
`Petitioner
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`v.
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`THOMAS SWAN & CO. LTD.
`Patent Owner
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`Case IPR2014-00461
`Patent 7,664,395
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`PRELIMINARY RESPONSE BY PATENT OWNER UNDER 37 C.F.R. § 42.107
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`Case No.: IPR2014-00461
`Attorney Docket: 28733-0003IP1
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`TABLE OF CONTENTS
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`I. Overview ........................................................................................................................ 1
`II. Related Proceedings ....................................................................................................... 3
`III.
`The Intrinsic Record of the ’395 Patent ........................................................................ 4
`A.
`Summary of an exemplary embodiment from the ’395 Patent.................................. 4
`B.
`Independent claims 1, 24, and 27 each recites an SLM and a dispersion device
`arranged so that the SLM can display multiple holograms to independently route different
`frequency channels as part of an optical routing module or device .................................... 7
`C.
`The Prosecution History of the ’395 patent confirms that the independent claims
`each requires an SLM and a dispersion device arranged so that the SLM can display
`multiple holograms to independently route different frequency channels as part of an
`optical routing module or device ....................................................................................... 11
`IV. Claim Construction ..................................................................................................... 15
`V. The Petition does not establish a reasonable likelihood that any claim is unpatentable
`as obvious ............................................................................................................................. 22
`A.
`Parker does not disclose a dispersion device arranged so that beams
`corresponding to different channels can be incident on the different holograms formed at
`respective groups of pixels on the SLM to achieve independent control of the routing of
`the different channels, as required by the independent claims ......................................... 22
`i. Parker teaches using a fixed grating to compensate for the limited pitch of the SLM,
`with all channels being incident on the same hologram on the SLM ............................ 23
`ii. Dr. Hall’s testimony with respect the Parker grating is not credible ........................ 32
`B.
`Parker does not “display holograms on the SLM to determine the channels at
`respective outputs,” as recited in claim 1, nor does Parker describe a routing device that
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`Case No.: IPR2014-00461
`Attorney Docket: 28733-0003IP1
`is “operable to select the frequencies from the input signals to appear in the output,” as
`recited in claim 24, or that is “operable to combine the frequencies from the input signals
`to appear in the output,” as recited in claim 27 ................................................................. 37
`C. Warr and Tan do not provide the material missing from Parker ............................. 39
`i. The Petition’s reliance on Warr is insufficient ......................................................... 40
`ii. The Petition’s reliance on Tan is insufficient ........................................................... 45
`D.
`The Petition’s obviousness analysis is insufficient to institute trial ......................... 48
`E.
`Even Finisar touts the non-obviousness of the claimed invention .......................... 53
`F. Dependent claims ....................................................................................................... 56
`VI.
`Finisar has not properly established that any of the Parker, Warr, and Tan Theses are
`prior art ................................................................................................................................. 57
`VII. Conclusion .................................................................................................................. 60 
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`Case No.: IPR2014-00461
`Attorney Docket: 28733-0003IP1
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`TABLE OF AUTHORITIES
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`Case Law
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`Alexsam, Inc. v. IDT Corp., 715 F.3d 1336, 1347-48 (Fed. Cir. 2013) ................................. 51
`
`Apple Inc. v. Int’l Trade Comm’n, 725 F.3d 1356, 1366 (Fed. Cir. 2013) ............................. 56
`
`Graham v. John Deere Co., 383 U.S. 1, 17 (1966) ........................................................ 48, 56
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`In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989) ............................................................ 59
`
`In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) ................................................................. 52
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`In re Lister, 583 F.3d 1307, 1311-12 (Fed. Cir. 2009) .......................................................... 58
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`In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) ........................................................... 47
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`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012) ...... 51
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ...................................................... 49
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`Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003) .................. 20
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`Power-One Inc., v. Artesyn Techs., Inc., 599 F.3d 1343, 1351 (Fed. Cir. 2010) ................. 51
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`Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) ........ 33, 42, 47
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`Thorner v. Sony Computer Entertainment Am. LLC, 669 F.3d 1362,
`1365-7 (Fed. Cir. 2012) ....................................................................................... 17, 22
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`Statutes
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`35 U.S.C. § 312(a)(3) ........................................................................................................... 48
`35 U.S.C. § 314(a) .......................................................................................................... 48, 57
`37 C.F.R. § 42.104(b)(4) ....................................................................................................... 48
`37 C.F.R. § 42.20(c) ....................................................................................................... 48, 57
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`Case No.: IPR2014-00461
`Attorney Docket: 28733-0003IP1
`37 C.F.R. § 42.204(b) ..................................................................................................... 48, 57
`37 C.F.R. § 42.22(a)(2) ................................................................................................... 48, 57
`37 CFR § 1.68 ...................................................................................................................... 58
`37 CFR § 42.2 ...................................................................................................................... 58
`37 CFR § 42.53(a) ................................................................................................................ 58
`37 CFR § 42.62(a) ................................................................................................................ 58
`37 CFR § 42.65(a) .................................................................................................... 33, 42, 47
`Fed. R. Evid. 701 .................................................................................................................. 58
`Fed. R. Evid. 801(c) .............................................................................................................. 58
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`Case No.: IPR2014-00461
`Attorney Docket: 28733-0003IP1
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`EXHIBIT LIST
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`TS 2001
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`TS 2002
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`“WDM channel management using programmable holographic elements,” IEE
`Colloquium on Multiwavelength Optical Networks: Devices, Systems and
`Network Implementations (Ref. No. 1998/296), by Mears et al. (“Mears”)
`
`“Why Use LCoS in a Wavelength Selective Switch?” reprinted from
`http://www.finisar.com/blogs/lightspeed/why-use-lcos-in-a-wavelength-
`selective-switch/, dated June 6, 2014, 8:51:36 AM
`
`TS 2003
`
`Authoritative Dictionary of IEEE Standard Terms, 7th Edition (2000)
`
`TS 2004
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`Fiber Optics Standard Dictionary, 3rd Edition (1997)
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`TS 2005
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`Webster’s New World Dictionary of American English, 3rd College Edition
`(1993)
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`TS 2006
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`Palmer, “Diffraction Grating Handbook” (4th Edition) (2000)
`
`B. Bahadur, Liquid Crystals - Applications and Uses (Vol. 3), World Scientific
`(1996) (“Bahadur”)
`
`Joint Claim Construction and Prehearing Statement, Thomas Swan & Co. Ltd.
`V. Finisar Corp.,2:13-cv-178 (E.D. Texas).
`
`TS 2007
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`TS 2008
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`v
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`Patent Owner Thomas Swan & Co. Ltd. (“Patent Owner”) submits this Preliminary
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`Case No.: IPR2014-00461
`Attorney Docket: 28733-0003IP1
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`Response to the Petition seeking inter partes review (“IPR”) in this matter. This Preliminary
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`Response is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107 because it is being filed
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`within three months of the March 6, 2014 mailing date of the Notice according the Petition a
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`filing date of February 26, 2014. A trial should not be instituted because the Petition does
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`not establish a reasonable likelihood of Petitioner prevailing with respect to any challenged
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`claim of the U.S. Patent No. 7,664,395 (the ’395 patent) as required by 37 CFR § 42.108(c).
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`I.
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`Overview
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`The ’395 patent contains 27 claims, of which claims 1, 24, and 27 are independent.
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`Independent claim 1 is directed to an optical routing module that includes a spatial light
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`modulator (SLM), a dispersion device, and circuitry arranged to display multiple holograms
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`on the SLM to independently route different channels of a light beam to respective outputs.
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`The Petition (“Pet.”) proposes a single ground of unpatentability to address these
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`independent claims—namely, that claims 1-17, 20, and 24-27 are obvious under Section
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`103 in view: (1) Parker Thesis (Ex. 1005)(“Parker”), Warr Thesis (Ex. 1006)(“Warr”), and
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`Tan Thesis (Ex. 1007)(“Tan”). (Pet., pp. 14-15.) The Petition further relies on U.S. Patent
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`App. Pub. No. 2001/0050787 (Ex. 1008)(“Crossland”), together with Parker, Warr, and Tan,
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`to allege that dependent claims 18, 19, and 21-23 are obvious. The Petition fails to
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`establish a prima facie case of obviousness.
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`The Petition does not identify the differences between the prior art and the
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`independent claims, or explain why it would have been obvious at the time of the invention
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`to arrange different elements from the prior art as set forth in the claims. Remarkably, the
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`Petition does not even explain that the specific embodiment from Parker it repeatedly
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`references is the same as one expressly distinguished during prosecution of the ’395 patent.
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`Specifically, this embodiment appeared in the Mears reference co-authored by Parker. (TS
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`2001) (“Mears”.) In this regard, the prosecution of the ’395 patent explains how Mears (and
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`thereby Parker) does not teach the arrangement of a dispersion device, multiple holograms,
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`and independent channel routing claimed in the ’395 patent. To the contrary, as explained
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`in greater detail below, the purposeful arrangement of the dispersion device in Mears and
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`Parker precludes such an arrangement.
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`Petitioner’s reliance on Warr and Tan in its obviousness argument demonstrates that
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`Parker alone is insufficient. Yet, the Petition does not provide any specific articulated
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`reasoning with rational underpinning to explain how or why Parker would have been
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`modified by Warr and/or Tan. To the contrary, neither Warr nor Tan discloses an SLM
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`arrangement having a dispersion device. Although they may generally describe focusing
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`elements and gratings among other basic building blocks for optical systems, they provide
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`no guidance as to why or how to modify Parker to achieve the arrangement of elements
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`claimed in the independent claims.
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`Attorney Docket: 28733-0003IP1
`The Petition’s obviousness argument rests on its unsupported position that, because
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`Messrs. Parker, Warr, and Tan may have worked in a common research group, any
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`element disclosed in any one of their multi-hundred page theses can be combined with any
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`other element disclosed in the theses to meet the limitations of the claim. (Pet., pp. 17-19.)
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`Even if this far-reaching proposition were legally proper, which it is not, the Petition fails to
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`show why or how it would have been obvious to arrange the disparate elements (e.g., SLMs,
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`dispersion devices, and focusing elements) from the different theses as set forth in the
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`independent claims. To the contrary, even Petitioner (when crediting the work of its own
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`Chief Technology Officer from 2003) describes arranging such optical building blocks to
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`achieve the wavelength routing claimed the ’395 patent claimed as an “intuitive leap,” and
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`that, up until that time, a wavelength selective switch (“WSS”) did not exist. (TS 2002.)
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`Accordingly, the Petition does not show a reasonable likelihood of prevailing with
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`respect to any of the challenged claims, and the Patent Trial and Appeal Board (“PTAB”)
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`should not institute a trial for IPR.
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`II.
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`Related Proceedings
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`The present Petition for IPR is one of four related Petitions that the Petitioner filed.
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`The other three Petitions are:
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`1.
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`2.
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`3.
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`IPR2014-00460 (U.S. Patent No. 7,145,710);
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`IPR2014-00462 (U.S. Patent No. 8,089,683); and
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`IPR2014-00465 (U.S. Patent No. 8,335,033).
`3
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`Case No.: IPR2014-00461
`Attorney Docket: 28733-0003IP1
`The four patents are based on a common specification and all claim priority to Great
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`Britain Application No. 0121308.1, filed September 3, 2001. The four patents are being
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`asserted in: Thomas Swan & Co. Ltd. v. Finisar Corp., No. 2:13-cv-178 (E.D. Texas). In
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`addition, related U.S. patent application 11/515,389 has issued as U.S. Patent No.
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`7,612,930, and related U.S. patent application 13/677,926 filed November 15, 2012 is
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`presently pending before the Office.
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`III.
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`The Intrinsic Record of the ’395 Patent
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`A. Summary of an exemplary embodiment from the ’395 Patent
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`The ’395 patent discloses an optical module that is configured to perform wavelength
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`routing and selection. (Ex. 1001, 42:5-8.) Referring to Figure 28 (reproduced and annotated
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`below), the optical module includes a reflective Spatial Light Modulator (SLM) having a two
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`dimensional array of pixels. (Id.,11:19-24 and 42:9-16.) One implementation of a SLM is
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`based on liquid crystal materials, where each pixel of the SLM is controlled by an electrode
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`in the pixel electrode array 230 as shown in Figure 1 (reproduced below). (Id., 11:51-12:49.)
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`The two dimensional array of pixels may be arranged into multiple groups of pixels,
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`each group capable of displaying a hologram. (Id., 42:17-28.) For example, referring to
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`Figure 1, circuitry may be constructed to connect to the pixel electrodes 230 such that
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`different selected voltages are applied between respective pixel electrodes 230 and a
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`common electrode layer 224. (Id., 11:51-12:3.) An applied voltage between one pixel
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`electrode and the common electrode layer 224 creates a local electric field passing through
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`a localized portion of the liquid crystal layer 222, and modifies the characteristics of the
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`localized portion of the liquid crystal layer 222. (Id.) By applying different selected voltages
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`between respective pixel electrodes 230 of a group and the common electrode layer 224, a
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`hologram may be displayed by that group of pixels of the SLM. (Id., 12:50-63.)
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`Referring to Figure 28 above, the optical module includes an input port 611 and
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`multiple output ports 612, 613, and 614. (Id., 42:5-28.) The input port 611 is configured to
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`receive a light beam having an ensemble of different channels (“a multiwavelength input”),
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`where each channel corresponds to a different wavelength. (Id., 42:5-8 and 38:29-31.) The
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`light beam having the ensemble of different channels is incident on a dispersion device 620
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`that is constructed to disperse light beams of different wavelengths (or different frequencies)
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`in different directions. (Id., 42:17-27.) For example, in Figure 28, the dispersion device 620
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`spreads the incoming light beam 601 into three single wavelength emergent beams 605,
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`606, and 607 corresponding to different channels of the multiwavelength input beam. (Id.)
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`The dispersion device 620 is further arranged such that the different wavelength
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`beams 605, 606, and 607 are incident upon respective different groups of the pixels of the
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`SLM. (Id.) For example, the ’395 patent discloses an embodiment in which the dispersion
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`device 620 is placed in the focal plane of the lens 621, such that the lens 621 refracts
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`wavelength beams 605, 606, and 607 into wavelength beams 615, 616, and 617,
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`respectively. (Id.) The lens 621 is also arranged to focus each of the wavelength beams
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`615, 616, and 617 to a respective group of pixels 623, 624, and 625 on the SLM 622. (Id.)
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`Because the circuitry independently controls each pixel, it can display a different
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`hologram on each group of pixels. (Id., 12:50-64.) Each hologram provides a different
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`controllable deviation from specular reflection for the incident wavelength beam to thereby
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`control the angle at which each beam reflects from SLM 622 as reflected beams 635, 636,
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`and 637, after which each beam returns to lens 621 and the dispersion device 620. (Id.,
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`42:23-27 and 11:19-31.) A controllable deviation from specular reflection is a controllable
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`deviation from light reflected in a mirror-like direction. As a result, the hologram on which
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`each of the respective beams 615, 616, and 617 lands determines to which output port, 612,
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`613, 614, the corresponding wavelength channel is directed. (Id., 42:28-40.)
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`To summarize, each wavelength channel from a multiwavelength input is dispersed
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`by dispersion device 620 and then focused by lens 621 to a respective group of pixels on
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`the SLM. Holograms displayed at the respective groups of pixels on the SLM controllably
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`and independently route each wavelength channel to the desired output port. Accordingly,
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`the described optical switch can route, add/drop, filter, and attenuate multiple wavelengths
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`independently using holograms displayed on the SLM. (Id., 42:32-53.)
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`B. Independent claims 1, 24, and 27 each recites an SLM and a dispersion
`device arranged so that the SLM can display multiple holograms to
`independently route different frequency channels as part of an optical
`routing module or device
`Claim 1 recites:
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`Case No.: IPR2014-00461
`Attorney Docket: 28733-0003IP1
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`
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`1. 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 channels, the module
`comprising:
`a Spatial Light Modulator (SLM) having a two dimensional array of
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`pixels,
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`a dispersion device disposed to receive light from said at least one
`input and constructed and arranged to disperse light beams of different
`frequencies in different directions whereby different channels of said
`ensemble are incident upon respective different groups of the pixels of the
`SLM, and
`circuitry constructed and arranged to display holograms on the SLM to
`determine the channels at respective outputs.
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`Accordingly, and consistent with the embodiment from the ’395 patent described
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`above, claim 1 is directed to an optical routing module that includes: 1) a “dispersion device
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`disposed to receive light from said at least one input” wherein the light has “an ensemble of
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`different channels;” 2) wherein the dispersion device is further “constructed and arranged to
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`disperse light beams of different frequencies in different directions” by which “different
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`[frequency] channels of said ensemble are incident upon respective different groups of
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`pixels of the SLM;” and 3) “circuitry constructed and arranged to display [multiple]
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`holograms on the SLM to determine the channels at the respective outputs” (emphasis
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`added). Because the arrangement of the dispersion device causes different channels of the
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`Case No.: IPR2014-00461
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`ensemble to be incident upon different respective groups of pixels of the SLM, the circuitry
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`can display a hologram at each of the different groups of pixels to independently determine
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`the respective output for each of the different channels at the input.
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`Similarly, claims 24 and 27 recite:
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`24. A routing device having an input and plural outputs, the input
`constructed and arranged to receive an input light beam having plural
`frequencies, the device comprising:
`a two dimensional Spatial Light Modulator (SLM) having an array of
`pixels, and
`a dispersion device disposed to receive light from said at least one
`input and constructed and arranged to disperse beams of said light of
`different frequencies in different directions to be incident upon a respective
`different group of the pixels of the two-dimensional SLM,
`wherein the routing device is operable to select the frequencies of the
`input light beam to appear in the outputs, wherein each output may contain
`any desired set of the plural frequencies.
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`27. A routing device having plural input signals and an output, the
`output constructed and arranged to deliver a signal having plural frequencies,
`the device comprising:
`a two dimensional Spatial Light Modulator (SLM) having an array of
`pixels, and
`a dispersion device disposed to receive light from the input signals and
`constructed and arranged to disperse beams of said light of different
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`Case No.: IPR2014-00461
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`frequencies in different directions to be incident upon a respective different
`group of the pixels of the two-dimensional SLM,
`wherein the routing device is operable to combine the frequencies
`from the input signals to appear in the output, wherein each input signal may
`contain any desired set of the plural frequencies of the output.
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`Claim 24 is directed to a routing device that includes an SLM and a dispersion
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`device “constructed and arranged to disperse beams of said light of different frequencies in
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`different directions to be incident upon a respective different group of the pixels of the two-
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`dimensional SLM” (emphasis added). Because the plural frequencies of the input beam are
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`incident on respective different groups of pixels, the SLM can display a different hologram at
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`each group of pixels so that “the routing device is operable to select the frequencies of the
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`input light beam to appear in the outputs, wherein each output may contain any desired set
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`of the plural frequencies.”
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`Similarly, claim 27 is directed to a routing device that includes an SLM and a
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`dispersion device “constructed and arranged to disperse beams of said light of different
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`frequencies in different directions to be incident upon a respective different group of the
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`pixels of the two-dimensional SLM” (emphasis added). Because the different frequencies
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`from the input signals are incident on respective different groups of pixels, the SLM can
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`display a different hologram at each group of pixels so that “the routing device is operable to
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`combine the frequencies from the input signals to appear in the output, wherein each input
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`signal may contain any desired set of the plural frequencies of the output.”
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`C. The Prosecution History of the ’395 patent confirms that the independent
`claims each requires an SLM and a dispersion device arranged so that the
`SLM can display multiple holograms to independently route different
`frequency channels as part of an optical routing module or device
`The ’395 patent was filed on September 1, 2006 as U.S. Patent Application No.
`
`11/514,725 (“the ’725 Application”), which is a divisional application of U.S. Patent
`
`Application No. 10/487,810 filed on September 10, 2004, now U.S. Patent No. 7,145,710,
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`which is a National Stage Entry of PCT Application No. PCT/GB02/04011 filed on
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`September 2, 2002, which in turn claimed priority to Great Britain Patent Application No.
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`0121308.1 filed September 3, 2001. (Ex. 1002, p. 4.) Claims 1-8 were pending, with claims
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`1, 2, 4, 5, and 8 as independent claims. (Id., p. 179.) In a Reply to Restriction Requirement
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`filed on February 28, 2008, Applicant elected claims 4-8 for prosecution. (Id., p. 186.)
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`In the non-final Office Action issued on May 13, 2008, claims 4-6 and 8 were
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`rejected under 35 U.S.C. 102(b) over Mears (“WDM CHANNEL MANAGEMENT USING
`
`PROGRAMMABLE HOLOGRAPHIC ELEMENTS,” IEE Colloquium on Multiwavelength
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`Optical Networks: Devices, Systems and Network Implementations (Ref. No. 1998/296))
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`(Id., pp. 207-209.) The authors of the Mears reference are R.J. Mears, A.D. Cohen, and
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`M.C. Parker. (Emphasis added.) The Mears reference was initially cited by Applicant in an
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`Information Disclosure Statement filed on September 1, 2006. (Id., p. 152.) In rejecting
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`claim 4, the Examiner specifically referred to Figure 7 of Mears:
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`[Mears] discloses an optical routing module having at least one input (input
`fiber array of Fig. 7) and at least two outputs (output fiber array of Fig. 7) and
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`Case No.: IPR2014-00461
`Attorney Docket: 28733-0003IP1
`operable to select between the outputs, the module comprising a two
`dimensional SLM (the pixellated SLM of Fig. 6) having an array of pixels, with
`circuitry constructed and arranged to display holograms on the pixels to route
`beams of different frequency to respective outputs.
`(Id., pp. 207-208.)
`
`As shown below, Figure 7 of Mears is the same “3x3 space-wavelength switch” as the
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`switch in Figure 6.1 of Parker. (TS 2001, p. 5; Pet., pp. 16 and 20.)
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`
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`In the response filed on September 18, 2008, Applicant amended claim 4 to recite
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`the feature “a dispersion device disposed to receive light from said at least one input and
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`constructed and arranged to disperse beams of said light of different frequencies to be
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`incident upon respective different groups of the pixels of the two-dimensional SLM.” (Ex.
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`1002, p. 235.) Independent claim 5 was amended to recite “a dispersion device disposed to
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`receive light from said at least one input and constructed and arranged to disperse beams
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`of said light of different frequencies to be incident upon a respective different group of the
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`pixels of the two-dimensional SLM.” (Id., p. 236.) Independent claim 8 was amended to
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`Case No.: IPR2014-00461
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`recite “a dispersion device disposed to receive light from the input signals and constructed
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`and arranged to disperse beams of said light of different frequencies to be incident upon a
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`respective different group of the pixels of the two-dimensional SLM.” (Id.) In the Remarks,
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`Applicant stated that:
`
`In the present invention as now claimed, the wavelengths of the input
`beam are dispersed by the dispersion device such that beams of light of
`different frequencies are incident upon respective different groups of the
`pixels of the two-dimensional SLM in order to allow independent routing of
`beams of different frequency to respective outputs.
`With the apparatus disclosed in Mears, the wavelength channels
`cannot be controlled independently. What the Mears apparatus does with
`one channel impacts on the attenuation of the other channels, because all
`channels from the same input share the same hologram. It should be noted
`that Mears refers to holograms designed to have multiple spatial periods, and
`that Mears goes on to state that this allows multiple wavelength tuning. This
`statement in Mears is made with reference to the tunability of the filter. That
`is, the filter of Mears is tuned to select one of the multiple selectable
`wavelengths by applying to the SLM a hologram selected to have an
`appropriate one of the multiple of available spatial periods.
`(Id., p. 240, emphasis added.)
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`In the final Office Action issued on May 6, 2009, the Examiner withdrew the rejection
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`over Mears. Evidently, the Examiner recognized that Mears (and by extension Parker) did
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`not disclose a dispersion device arranged such that beams of light of different frequencies
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`Case No.: IPR2014-00461
`Attorney Docket: 28733-0003IP1
`are incident upon respective different groups of the pixels of the two-dimensional SLM in
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`order to allow independent routing of beams of different frequency to respective outputs.
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`The Examiner did reject claims in view of U.S. Patent Application Publication No.
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`2002/0060760 (“Weiner”) and U.S. Patent No. 6,954,252 (“Crossland”). (Id., pp. 295-302.)
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`In the response filed on August 6, 2009, Applicant made clarifying amendments to the
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`claims and distinguished both Weiner and Crossland. (Id., pp. 314-322.) For example, with
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`respect to Weiner, Applicant explained:
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`Weiner does not teach or suggest ‘circuitry constructed and arranged to
`display holograms on the SLM to determine the channels at respective
`outputs.’ Rather, Weiner is concerned with polarization mode dispersion in
`wide band optical signals.
`(Id., p. 314.)
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`With respect to Crossland, Applicant explained how the multiple holograms disclosed
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`in Crossland were different from what was being claimed. For example:
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`Embodiments of the present invention use dispersion of channels onto an
`SLM, and has [sic] holograms formed at the incident locations to select
`channels for the output or outputs. There is no disclosure in Crossland nor
`suggestion that such channel selection can be done.
`(Id., p. 315, emphasis added.)
`
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`The Notice of Allowance issued on October 20, 2009, and the Examiner stated:
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`Claim 4 is allowable for at least the reason, ‘‘a dimensional SLM
`having an a two dimensional array of pixels, a dispersion device disposed to
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`Case No.: IPR2014-00461
`Attorney Docket: 28733-0003IP1
`receive light from said at least one input and constructed and arranged to
`disperse light beams of different frequencies in different directions whereby
`different channels of said ensemble are to be incident upon respective
`different groups of the pixels of the SLM, and circuitry constructed and
`arranged to display holograms on the SLM to determine the channels at
`respective outputs” as set forth in the claimed combination. [. . .]
`Claim 5 is allowable for [its recited limitations].
`Claim 8 is allowable for [its recited limitations].
`(Id., pp. 345-346.)
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`Independent claims 4, 5, and 8 issued as claims 1, 24, and 27 respectively.
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`The prosecution history reaffirms that the independent claims of the ’395 patent each
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`requires an SLM and a dispersion device arranged so that beams corresponding to different
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`channels can be incident on different holograms formed at respective groups of pixels on
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`the SLM to achieve independent control of the routing of the different channels. Notably,
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`the claim was understood by the Examiner during prosecution to expressly distinguish the
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`dispersion device in Mears, and by extension Parker. Moreover, the Examiner concluded
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`that the claims were patentable over Mears, and by extension Parker, even when further
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`expressly considering Crossland, which generally described displaying multiple holograms
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`on an SLM.
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`IV.
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`Claim Construction
`In addition to the discussion above explaining the scope of the independent claims
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`based on their express language, the specification, and the file history, Patent Owner
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`Case No.: IPR2014-00461
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`proposes a construction for the term “channel” in claim 1, and also responds to the claim
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`constructions set forth in the Petition as follows.1
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`In the context of optical telecommunications, a “channel” is “a band of frequencies.”
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`(TS 2003, pp. 4-5.) For example, the ’395 patent repeatedly uses the word “channel” to
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`refer to an optical signal carried at a band of frequencies, or equivalently, a band of
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`wavelengths. (Ex. 1001, 20:60-61, 24:38-44, 30:42-46, 37:31-34, 42:34-36, 42: