`571-272-7822
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`Paper: 9
`Entered: August 21, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
`FINISAR CORP.,
`Petitioner,
`
`v.
`
`THOMAS SWAN & CO. LTD.,
`Patent Owner.
`____________
`
`Case IPR2014-00462
`Patent 8,089,683 B2
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`____________
`
`
`Before SALLY C. MEDLEY, MICHELLE R. OSINSKI, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
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`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2014-00462
`Patent 8,089,683 B2
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`INTRODUCTION
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`I.
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`
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`Finisar Corp. (“Petitioner”) filed a corrected Petition (Paper 5, “Pet.”)
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`requesting an inter partes review of claims 18 and 19 of U.S. Patent No.
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`8,089,683 B2 (Ex. 1001, “the ’683 patent”). Thomas Swan & Co. Ltd.
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`(“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”).
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`We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
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`partes review may not be instituted “unless . . . there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” 35 U.S.C. § 314(a).
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`Upon consideration of the Petition and Preliminary Response, we
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`determine that Petitioner has established a reasonable likelihood that it
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`would prevail in showing the unpatentability of claims 18 and 19 of the ’683
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`patent. Accordingly, pursuant to 35 U.S.C. § 314, we institute an inter
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`partes review as to claims 18 and 19 of the ’683 patent.
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`A.
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`Related Matters
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`The parties represent that the ’683 patent is the subject of district court
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`proceeding in Thomas Swan & Co. v. Finisar Corp., No. 2:13-cv-178 (E.D.
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`Tex.). Pet. 5; Patent Owner’s Mandatory Notices under 37 C.F.R. § 42.8,
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`Paper 7, 2.
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`Petitioner filed additional Petitions for inter partes review of three
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`other patents related to the ’683 patent, namely, U.S. Patent Nos. 7,145,710;
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`7,664,395; and 8,335,033. Prelim. Resp. 3; See IPR2014-00460 (Paper 2,
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`Paper 5); IPR2014-00461 (Paper 1, Paper 5); IPR2014-00465 (Paper 1,
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`Paper 5), respectively.
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`B.
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`The ’683 Patent
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`The ’683 patent is directed to a method of operating an optical device
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`comprising a spatial light modulator (SLM). Ex. 1001, 2:49–51. Figure 28
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`of the ’683 patent is reproduced below.
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`
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` Figure 28 of the ’683 patent illustrates
`wavelength routing and selection device 600.
`As shown in Figure 28, wavelength routing and selection device 600
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`receives input beam 601 through input port 611. Ex. 1001, 42:10–12.
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`Grating 620 separates input beam 601 into single wavelength emergent
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`beams 605, 606, and 607 each angularly offset by a different amount, and
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`incident on lens 621. Id. at 42:22–25. Lens 621 refracts single wavelength
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`emergent beams 605, 606, and 607 so that they emerge as mutually parallel
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`beams 615, 616, and 617. Id. at 42:25–26. Each of beams 615, 616, and
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`617 is incident upon respective group 623, 624, and 625 of pixels on SLM
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`622. Id. at 42:26–28.
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`Each of respective group 623, 624, and 625 of pixels on SLM 622
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`displays a respective hologram, which provides a different deviation from
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`the specular direction, resulting in reflected beams 635, 636, and 637. Id. at
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`42:28–31. Reflected beams 635, 636, and 637 are incident upon lens 621
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`and routed back to grating 620. Id. at 42:31–32.
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`C.
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`Illustrative Claim
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`
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`Claim 18 is the independent claim challenged by Petitioner. Claim 19
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`depends directly from claim 18. Claim 18 is reproduced below:
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`An optical device with an array of phase-modulating
`1.
`elements, the device having an input arranged to receive a
`multiplex of optical signals at different wavelengths in a
`common beam, the array of phase modulating elements being
`arranged to receive the optical signals of the multiplex from the
`device input, to separate the optical signals into at least two
`groups, and to process at least one of the groups of optical
`signals, wherein the array of phase-modulating elements is
`provided by a reflective LCOS SLM.
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`Ex. 1001, 61:61–62:2 (emphasis added).
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`D.
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`Prior Art Relied Upon
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`Michael C. Parker, Dynamic Holograms for Wavelength Division
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`Multiplexing (Nov. 1996) (Ph.D. dissertation, University of Cambridge) (on
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`file with Cambridge University Library) (“Parker Thesis,” Ex. 1006).
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`Stephen T. Warr, Free-Space Switching for Optical Fibre Networks
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`(July 1996) (Ph.D. dissertation, University of Cambridge) (on file with
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`Cambridge University Library) (“Warr Thesis,” Ex. 1005).
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`E.
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`Alleged Grounds of Unpatentability
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`The information presented in the Petition sets forth Petitioner’s
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`contentions of unpatentability of claims 18 and 19 of the ’683 patent based
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`on the following specific ground.
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`Claims
`Challenged
`18 and 19
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`Basis
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`References
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`§ 103
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`Parker Thesis and Warr Thesis
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`II.
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`ANALYSIS
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`A.
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`Claim Construction
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`We determine the meaning of certain claim terms for purposes of this
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`Decision. In an inter partes review, claim terms in an unexpired patent are
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`given their broadest reasonable construction in light of the patent
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`specification. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under the broadest reasonable
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`construction standard, claim terms are given their ordinary and customary
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`meaning, as would be understood by one of ordinary skill in the art in the
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`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
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`1257 (Fed. Cir. 2007). Any special definition for a claim term must be set
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`forth in the specification with reasonable clarity, deliberateness, and
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`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In
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`determining the proper construction of a claim term, we must be careful not
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`to read a particular embodiment appearing in the written description into the
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`claim if the claim language is broader than the embodiment. In re Van
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`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Dictionaries may be relied on
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`so long as the dictionary definition does not contradict a definition found in
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`or ascertained by reading the patent documents. Vitronics Corp. v.
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`Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996). We construe
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`the terms below in accordance with these principles.
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`1.
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`“array”
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`Independent claim 18 recites “array.” Petitioner asserts that “array”
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`means “an assembly of two or more individual elements, appropriately
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`spaced and energized to achieve desired directional properties.” Pet. 10.
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`Patent Owner disagrees and asserts that “array” means “an arrangement of
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`two or more elements.” Prelim. Resp. 14–15.
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`Patent Owner contends that Petitioner incorrectly relies on a definition
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`relating to antenna. Prelim. Resp. 14 (citing Pet. 10). Petitioner cites to a
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`dictionary definition (Pet. 10), which refers to “radiating elements” and
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`“beam antenna” Ex. 1014 (Peter M. B. Walker, Chambers Science and
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`Technology Dictionary 51 (1988). The ’683 patent specification describes
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`“an optical device” having “a two-dimensional array of controllable phase-
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`modulating elements.” Ex. 1001, 2:50–52.
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`We, therefore, decline to adopt Petitioner’s construction and agree
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`with Patent Owner that the broadest reasonable interpretation of “array,” in
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`the context of the ’683 patent, is an arrangement of two or more elements.
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`2.
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`“phase-modulating elements”
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`The term “phase-modulating elements” is recited in independent claim
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`18. Petitioner asserts that “phase-modulating elements” means
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`“components, such as pixels, which can change the phase of incident light
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`under certain conditions, such as application of voltage.” Pet. 10. Patent
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`Owner asserts that “phase-modulating elements” means “elements that
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`controllably modify the phase of light.” Prelim. Resp. 15.
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`Petitioner’s assertion is that the modulating elements “change . . .
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`light” (Pet. 10) and Patent Owner’s assertion is that the modulating elements
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`“modify . . . light” (Prelim. Resp. 15). The ’683 patent specification does
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`not provide an express definition of “modulating.” Patent Owner cites (id.)
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`to the Fiber Optics Standard Dictionary, which states that “modulate” means
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`“[t]o vary a characteristic or parameter of an entity in accordance with a
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`characteristic or parameter of another entity.” Ex. 2004, 6 (Martin H. Weik,
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`Fiber Optics Standard Dictionary 601 (3rd ed. 1997)). The ’683 patent
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`specification states “[a]dvantageously, each phase modulating element is
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`responsive to a respective applied voltage to provide a corresponding phase
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`shift to emergent light.” Ex. 1001, 3:22–24. In the context of the ’683
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`patent specification, each element shifts or modifies the light.
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`We decline to read in the exemplary embodiment of pixels in the
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`Petitioner’s assertion and the exemplary embodiment of controllably
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`modifying light in the Patent Owner’s assertion. Upon review, we determine
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`that the broadest reasonable interpretation of “phase-modulating elements”
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`is elements that modify the phase of light.
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`3.
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`“pixel”
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`The term “pixels” is recited in dependent claim 19. Petitioner asserts
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`that “pixel” means “a component of a polarisation-independent reflective
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`SLM which on one end consists of an electrode connected to circuitry and
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`on the other a common electrode covered by glass, with several layers
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`between the electrodes including liquid crystal material, alignment layers,
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`and a quarter-wave plate.” Pet. 11–12. Patent Owner asserts that “pixel”
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`means “the smallest element of the SLM’s display surface that can be
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`assigned independent characteristics.” Prelim. Resp. 16.
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`Petitioner cites to a specific embodiment of pixels described in the
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`specification of the ’683 patent. Pet. 12 (citing Ex. 1001, 11:51–12:1). We
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`decline to read a preferred embodiment into the claim. The ’033 patent
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`specification does not provide an express definition of “pixel.”
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`To show how one of ordinary skill in the art would use the term,
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`Patent Owner cites to a dictionary, which states that “pixel” means (1) “the
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`smallest element of a digital image that can be assigned a gray level” or (2)
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`“[t]he smallest element of a display surface that can be assigned independent
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`characteristics.” Ex. 2005, 8 (The Authoritative Dictionary of IEEE
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`Standards Terms 830-31 (7th ed., 2000)).
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`The specification of the ’683 patent describes that “each pixel can
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`phase modulate light by a phase shift.” Ex. 1001, 6:12–13. The ’683 patent
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`specification further states “the controller has a control input receiving data
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`indicative of a desired phase modulation characteristic across an array of
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`said pixels for achieving a desired control of light incident on said array.”
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`Id. at 6:17–19. The ’683 patent specification is consistent with the second
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`dictionary definition in describing a pixel as the smallest assignable element.
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`The ’683 patent specification describes that the control is of “a desired phase
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`modulation characteristic” for light incident on the display. Id. at 6:18–19.
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`In the context of the ’683 patent specification, a pixel may be assigned one
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`characteristic.
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`Patent Owner’s assertion that a pixel is an element of the SLM’s
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`display surface is consistent with an embodiment of the specification (Ex.
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`1001, 6:5–7). We determine, however, that the plain meaning of “pixel” is
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`not limited to a SLM display.
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`Upon review, we determine that the broadest reasonable interpretation
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`of “pixel” is the smallest element of a display that can be assigned an
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`independent characteristic.
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`4.
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`“multiplex of optical signals” and “the optical signals of the
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`multiplex”
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`The terms “multiplex of optical signals” and “the optical signals of the
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`multiplex” are recited in independent claim 18. Petitioner asserts that both
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`“multiplex of optical signals” and “the optical signals of the multiplex”
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`mean “an ensemble of optical channels.” Pet. 12. Patent Owner asserts that
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`“multiplex of optical signals” means “ensemble of optical signals” and “the
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`optical signals of the multiplex” means “the optical signals of the ensemble.”
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`Prelim. Resp. 16.
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`Use of the word “ensemble” to describe “multiplex” is consistent with
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`the specification of the ’683 patent, which states, “Optical systems using
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`SLMs may individually process the channels from an ensemble of channels
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`on different wavelengths, entering the system as a multiplex of signals in a
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`common beam.” Ex. 1001, 37:33–36 (emphases added).
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`Patent Owner asserts its construction for “the optical signals of the
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`multiplex” is correct for two reasons. Patent Owner first asserts that the
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`second expression, “the optical signals of the multiplex,” is different from
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`the first expression. Prelim. Resp. 16. Patent Owner additionally asserts
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`that because of an amendment made during prosecution, the array of phase-
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`modulating elements operates on individual channels, not on the common
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`multiplexed beam. Id. We agree with Patent Owner that the order of the
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`words in the second expression, “the optical signals of the multiplex,” is
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`different from the order of these same words in the first expression.
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`Individually processing optical channels, however, is not commensurate
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`with the scope of the claim. We decline to read limitations into the claim
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`from remarks made during prosecution.
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`Upon review, we determine that the broadest reasonable interpretation
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`of “multiplex of optical signals” is ensemble of optical signals and the
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`broadest reasonable interpretation of “the optical signals of the multiplex” is
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`the optical signals of the ensemble. The second construction, “the optical
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`signals of the ensemble,” is not limited to processing, individually, optical
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`channels.
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`5.
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`“SLM” or “spatial light modulator”
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`The term “SLM” is recited in independent claim 18. Petitioner asserts
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`that “SLM” refers to “spatial light modulator” and means “a polarisation-
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`independent device that act[s] on light beam or beams incident on the device
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`to provide emerging light beams, which are controlled independently of one
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`another.” Pet. 13. Patent Owner agrees that “SLM” refers to “spatial light
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`modulator,” but disagrees with Petitioner’s construction. Prelim. Resp. 17.
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`Patent Owner asserts that “SLM” or “spatial light modulator” means “a
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`device that modifies a property of light as a function of time and position
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`across it.” Id.
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`The specification of the ’683 patent refers to SLMs as spatial light
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`modulators. Ex. 1001, 11:42–43. In the context of the specification of the
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`’683 patent, therefore, “SLM” refers to “spatial light modulator.”
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`Petitioner asserts that the ’683 patent expressly disclaims any devices
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`that are not polarization insensitive/independent by stating, “[t]he invention
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`may be applied to other devices, provided they are capable of multiphase
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`operation and are at least somewhat polarisation independent at the
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`wavelengths of concern.” Pet. 14 (citing Ex. 1001, 12:38–41). Patent
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`Owner asserts that the specification of the ’683 patent does not limit SLM to
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`a particular structure. Prelim. Resp. 17 (citing Ex. 1001, 12:36–38) (“It is
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`not intended that any particular SLM structure is essential to the invention,
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`the above being only exemplary and illustrative.”) The citation on which
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`Petitioner relies provides an example of an SLM that is “somewhat”
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`polarization insensitive/independent (Ex. 1001, 12:40). The specification of
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`the ’683 patent does not limit the claimed invention to this example. We,
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`therefore, agree with Patent Owner that SLM is not limited to structures that
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`are polarization insensitive or independent.
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`To show how one of ordinary skill in the art would use the term
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`“SLM,” Patent Owner cites to a few pages in a multi-volume book (Prelim.
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`Resp. 17), which describe uses of liquid crystals, such as liquid crystal
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`devices that are useful in parallel optical processing applications, and
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`presents exemplary prototypes, such as liquid crystal television devices. Ex.
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`2006, 4 (3 Liquid Crystals Applications and Uses 211 (Birendra Bahadur
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`11
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`ed., 1992) (“Liquid Crystals Applications and Uses”)). Liquid Crystals
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`Applications and Uses states “Spatial Light Modulators (SLMs),
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`dynamically changeable devices which modify the amplitude, phase, and/or
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`polarization of an optical wave front as a function of time and position
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`across it.” Id.
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`We turn to the specification of the ’683 patent, which describes that
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`integrated SLM 200 is “for modulating light 201 of a selected wavelength.”
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`Ex. 1001, 11:51–52. Neither party points us to an express definition of
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`“modulating” in the ’033 patent specification. Modulation is defined in a
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`technical dictionary as “the process of varying some characteristic of one
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`signal (the carrier) in accordance with another signal (the message signal).”
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`Hargrave’s Communications Dictionary (2001), available at
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`http://search.credoreference.com/content/entry/hargravecomms/modulation/
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`0 (June 19, 2014) (“Hargrave’s Dictionary”) (Ex. 3001). The ’683 patent
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`specification describes an example of modulation that is consistent with the
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`Hargrave’s Dictionary definition by stating, “[a]dvantageously, each phase
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`modulating element is responsive to a respective applied voltage to provide a
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`corresponding phase shift to emergent light.” Ex. 1001, 3:22–24. In the
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`context of the ’683 patent specification, each modulating element shifts or
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`modifies the light. Although the example in the ’683 patent specification
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`describes phase modulation, no particular SLM structure is essential to the
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`invention (id. at 12:36–38).
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`Regarding Patent Owner’s contention that spatial light modulator
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`modifies light “as a function of time and position across it,” Patent Owner
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`does not explain sufficiently why Patent Owner’s construction is part, but
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`not all of the definition provided by Patent Owner’s cited extrinsic reference.
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`Patent Owner also does not explain sufficiently how the definition is
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`consistent with the ’683 patent specification.
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`We agree with Petitioner and Patent Owner that “SLM” refers to
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`“spatial light modulator.” We agree with Patent Owner that Petitioner’s
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`construction is too narrow. We, however, decline to adopt in its entirety
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`Patent Owner’s construction, and construe “SLM” and “spatial light
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`modulator” in the context of the ’683 patent, as a device that modifies a
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`spatial property of light.
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`6.
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`“LCOS”
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`The term “LCOS” is recited in independent claim 18. Neither party
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`offers a construction for “LCOS,” but the parties offer different phrases that
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`purportedly are used to form the abbreviation “LCOS.” Petitioner refers to
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`“LCOS” as “Liquid Crystal on Silicon.” Pet. 2. Patent Owner refers to
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`“LCOS” as “liquid crystal over silicon.” Prelim. Resp. 4. The specification
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`of the ’683 patent refers to “liquid crystal over silicon.” Ex. 1001, 6:57–58,
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`11:42–43. For the purposes of this Decision, therefore, “LCOS” refers to
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`“liquid crystal over silicon.”
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`B.
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`Asserted Obviousness of Claims 18 and 19 by Parker Thesis
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`and Warr Thesis
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`Petitioner contends that claims 18 and 19 are obvious over the
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`combination of Parker Thesis and Warr Thesis. Pet. 17–28. In support of
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`its asserted grounds of unpatentability, Petitioner sets forth the teachings of
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`Parker Thesis and Warr Thesis, provides a detailed claim chart and cites to
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`the declaration of Dr. Katherine Hall, Ph.D. (“Hall Declaration,” Ex. 1003),
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`explaining how each limitation is taught in Parker Thesis and Warr Thesis,
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`taken together. Pet. 17–28; Ex. 1003 ¶¶ 56–67. Petitioner has demonstrated
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`that there is a reasonable likelihood that it would prevail in establishing that
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`each of claims 18 and 19 is obvious over the combination of Parker Thesis
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`and Warr Thesis.
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`1.
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`Parker Thesis
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`Parker Thesis describes using dynamic holograms for wavelength
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`division multiplexing. Ex. 1006, 1. Parker Thesis describes an addressable
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`ferroelectric liquid crystal (FLC) SLM (id. at 12) and controlling the
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`addressable SLM using a personal computer (id. at 14). Parker Thesis
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`further describes holographic wavelength filtering and explains that the
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`principle of operation of a tunable holographic wavelength filter is based on
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`using a grating to disperse polychromatic light. Id. at 47.
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`Parker Thesis also describes a concept for a polarization-insensitive
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`space-wavelength switch using concepts developed in the thesis. Ex. 1006,
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`97. Figure 6.1 of Parker Thesis is reproduced below.
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`Figure 6.1 illustrates 3 x 3 space-wavelength switch.
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`As illustrated in Figure 6.1, the space-wavelength switch described in
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`Parker Thesis has an integrated SLM unit, which comprises a blazed grating,
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`a pixelated FLC SLM, a quarter-wavelength plate, and a mirror. Ex. 1006,
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`96–97. The switch acts as a 3 x 3 fiber cross-connect, but also can shuffle
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`wavelengths between various fibers. Id. at 97.
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`2. Warr Thesis
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`Warr Thesis describes FLC SLMs consisting of an array of
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`individually controllable pixels. Ex. 1005, 7. According to Warr Thesis, a
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`design of miniature devices is to construct SLMs directly on top of silicon
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`chips. Id. at 17. Each pixel is addressed by a signal applied to an aluminum
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`pad, which doubles as a pixel mirror. Id.
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`Warr Thesis further describes free-space switching for optical fiber
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`networks. Ex. 1005, 1. Figure 5.4 of Warr Thesis is reproduced below.
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`Figure 5.4 illustrates a double-pass holographic crossbar.
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`As illustrated in Figure 5.4, multiple parallel light beams enter the
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`system and are interconnected holographically by way of a crossbar. Ex.
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`1005, 89. The crossbar is a matrix of binary switches. Id. at 82. Multiple
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`light beams enter the crossbar in parallel through an SLM area that is
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`divided so that each beam is deflected by a different computer generated
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`hologram (CGH). Id. at 89. The beams are reflected back towards the SLM
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`by a mirror before they output the system. Id.
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`3.
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`Determination as to Whether Parker Thesis and Warr Thesis
`Constitute Prior Art
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`Petitioner relies on Parker Thesis and Warr Thesis as printed
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`publications within the meaning of 35 U.S.C. § 102, and argues that each of
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`the theses was indexed and shelved in the Cambridge University Library at
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`least one year prior to the effective filing date of the ’683 patent. Pet. 16. In
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`support of the contention that each thesis was indexed and shelved in the
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`Cambridge University Library, Petitioner relies on a letter from Ms. Louise
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`Clarke (Ex. 1007; “the Clarke letter”) and the testimony of Dr. Hall (Ex.
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`1003 ¶ 49), who essentially opines as to the content of the Clarke letter.
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`Patent Owner argues that Petitioner has not established properly that
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`any one of the Parker and Warr Theses “was sufficiently publicly accessible
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`so that interested persons in the art could locate it before at least the effective
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`filing date of the ’683 patent.” Prelim. Resp. 48–49. Patent Owner argues
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`that the evidence submitted to prove that each of Parker Thesis and Warr
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`Thesis was available for public access is inadmissible under the Federal
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`Rules of Evidence. Id. at 49. Patent Owner additionally argues that the
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`substance of the evidence, if admitted, does not establish that each of Parker
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`Thesis and Warr Thesis was publicly available. Id. at 50–51. We first
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`address the admissibility arguments.
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`With few exceptions, the Federal Rules of Evidence apply to inter
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`partes proceedings. 37 C.F.R. § 42.62. The rules governing inter partes
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`review also set forth the proper procedure for objecting to, and moving to
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`exclude, evidence when appropriate. When a party objects to evidence that
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`was submitted during a preliminary proceeding, such an objection must be
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`served within ten business days of the institution of trial. The objection to
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`the evidence must identify the grounds for the objection with sufficient
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`particularity to allow correction in the form of supplemental evidence. This
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`process allows the party relying on the evidence to which an objection is
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`served, the opportunity to correct, by serving supplemental evidence within
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`ten days of the service of the objection. See, 37 C.F.R. 42.64(b)(1), (b)(2).
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`If, upon receiving the supplemental evidence, the opposing party is still of
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`the opinion that the evidence is inadmissible, the opposing party may file a
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`motion to exclude such evidence. The time for filing a motion to exclude
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`typically is several months into a trial. See, e.g., 77 Fed. Reg. at 48,768,
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`App. A.
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`In essence, Patent Owner moves for us to not consider, or exclude,
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`(1) the Clarke letter (Ex. 1007), because the evidence allegedly is
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`inadmissible hearsay and lacks foundation and (2) Dr. Hall’s testimony
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`regarding the letter (Ex. 1003 ¶ 49), because Dr. Hall does not have the
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`necessary expertise in library science to opine as an expert on the public
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`availability of each thesis. Prelim. Resp. 49. These requests for us not to
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`consider, or exclude, are made typically by way of a motion to exclude. See
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`37 C.F.R. § 42.64(c). As stated above, motions to exclude are not
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`authorized until much later during a trial. Patent Owner’s “motion to
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`exclude” is premature and also prevents Petitioner from correcting, as
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`permitted by the rules. Patent Owner will have full opportunity to object,
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`serve, reconsider any supplemental evidence and finally file a motion to
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`exclude evidence. To the extent that Patent Owner urges the Board to
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`consider the evidentiary issues as part of our determination to institute a
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`trial, Patent Owner has failed to explain why we should deviate from the
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`rules governing inter partes review. Thus, we need not decide, at this
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`juncture, whether to exclude Exhibit 1007 or paragraph 49 of Exhibit 1003
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`from consideration.
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`Patent Owner additionally argues that the substance of the evidence, if
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`admitted, does not establish that each of Parker Thesis and Warr Thesis was
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`sufficiently publicly accessible so that interested persons could locate it
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`before the effective filing date of the ’683 patent. Prelim. Resp. 50–51. A
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`single printed document, sufficiently catalogued and available at a public
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`library, generally is a printed publication within the meaning of 35 U.S.C.
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`§ 102. In re Hall, 781 F.2d 897 (Fed. Cir. 1986). The Clarke letter indicates
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`that each of Parker Thesis and Warr Thesis was approved by the Board of
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`Graduate Studies on “23 April 1997” and “15 January 1997,” respectively.
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`Ex. 1007, 1. According to the letter, the library catalogue was updated from
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`an in-house database to a newer library management system in 2002, and
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`that those catalogue items which pre-date 2002 do not have a record for
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`when they were added to the library catalogue. The letter explains, however,
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`that it was common practice for a thesis to be added to the catalogue
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`approximately one month after the date on which the thesis was approved by
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`the Board of Graduate Studies. Id. at 1–2.
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`Patent Owner argues that the evidence does not establish that each of
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`Parker Thesis and Warr Thesis was catalogued, citing In re Cronyn, 890
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`18
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`F.2d 1158, 1161 (Fed. Cir. 1989), because Ms. Clarke states that she cannot
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`ascertain from the library’s records the exact date on which the theses were
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`added to the library catalogue, but that the theses probably would have been
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`added to the catalogue approximately one month after the date on which the
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`theses were approved. Prelim. Resp. 50–51.
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`We are aware of the Cronyn facts and decision. We, however, are
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`persuaded that the facts in this case are more aligned with those in Hall. In
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`Hall, the evidence was circumstantial, as it is here, as to when a particular
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`paper was catalogued. The court in Hall accepted the evidence regarding the
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`general library procedure for cataloging as probative value of routine
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`business practice to show the performance of the specific act of cataloging a
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`document. Based on the record before us, at this preliminary juncture of the
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`proceeding, we find the evidence sufficient to establish that each of Parker
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`Thesis and Warr Thesis was available to the public more than one year prior
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`to the effective filing date of the ’683 patent, which is September 3, 2001.1
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`4.
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`Claim 18
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`We are persuaded by Petitioner’s argument and evidence that
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`Petitioner has shown sufficiently that there is a reasonable likelihood that it
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`would prevail in establishing that claim 18 would have been obvious and we
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`now address in detail Patent Owner’s arguments. Patent Owner contends
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`1 Patent Owner argues that Petitioner makes no indication whether Ms.
`Clarke will be made available for cross examination. Prelim. Resp. 49. If
`Patent Owner seeks to depose Ms. Clarke, and the Petitioner does not make
`Ms. Clarke available for cross-examination, we will consider her
`unavailability in weighing the evidence.
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`19
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`that claim 18 requires that separation is provided by the array of phase-
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`modulating elements, not a grating. Prelim. Resp. 19. Patent Owner
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`contends that in Parker Thesis the separation is performed by the grating. Id.
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`As explained above in our discussion of the construction of “phase-
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`modulating elements,” we do not adopt Patent Owner’s construction because
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`we decline to read in the exemplary embodiment of controllably modifying
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`light. The specification of the ’683 patent describes an embodiment in
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`which “grating 620 splits [] incoming beam 601.” Ex. 1001, 42:22. Patent
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`Owner’s contention that Parker Thesis is distinguishable because it teaches
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`separating input light using a grating is not commensurate with the scope of
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`claim 18. Nonetheless, Parker Thesis also teaches separating input light
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`using an SLM. Ex. 1006, 48.
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`Patent Owner additionally contends that the claimed array uses
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`multiple holograms (Prelim. Resp. 20), whereas in Parker Thesis, different
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`channels are processed by a single hologram (id. at 30). Claim 18 does not
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`recite “multiple holograms.” Patent Owner’s contention, therefore, is not
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`commensurate with the scope of the claim. Parker Thesis, nonetheless,
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`teaches that a “3 x 3 fibre cross-connect . . . shuffle[s] wavelengths between
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`the various fibres.” Ex. 1006, 97. As Parker Thesis explains, this cross-
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`connect that switches wavelengths from an input fiber to an appropriate
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`output fiber uses “all the ideas developed in chapters 2 and 4” (id.), which
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`includes programming a dynamic phase-modulating SLM to display
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`different “holograms” (id. at 11).
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`Patent Owner further contends that Parker Thesis is distinguishable
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`because different channels are not processed independently from another.
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`20
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`Prelim. Resp. 20; see also id. at 28 (“different groups of optical signals, are
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`directed to the same hologram”). Claim 18 recites “to separate the optical
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`signals into at least two groups, and to process at least one of the groups of
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`optical signals” (emphasis added). Patent Owner’s contention that the claim
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`requires processing more than one group is not commensurate with the scope
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`of the claim.
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`Patent Owner a