throbber
Trials@uspto.gov
`571-272-7822
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`Paper: 9
`Entered: August 21, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`FINISAR CORP.,
`Petitioner,
`
`v.
`
`THOMAS SWAN & CO. LTD.,
`Patent Owner.
`____________
`
`Case IPR2014-00462
`Patent 8,089,683 B2
`
`____________
`
`
`Before SALLY C. MEDLEY, MICHELLE R. OSINSKI, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`

`

`IPR2014-00462
`Patent 8,089,683 B2
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`
`INTRODUCTION
`
`I.
`
`
`
`Finisar Corp. (“Petitioner”) filed a corrected Petition (Paper 5, “Pet.”)
`
`requesting an inter partes review of claims 18 and 19 of U.S. Patent No.
`
`8,089,683 B2 (Ex. 1001, “the ’683 patent”). Thomas Swan & Co. Ltd.
`
`(“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
`
`partes review may not be instituted “unless . . . there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” 35 U.S.C. § 314(a).
`
`Upon consideration of the Petition and Preliminary Response, we
`
`determine that Petitioner has established a reasonable likelihood that it
`
`would prevail in showing the unpatentability of claims 18 and 19 of the ’683
`
`patent. Accordingly, pursuant to 35 U.S.C. § 314, we institute an inter
`
`partes review as to claims 18 and 19 of the ’683 patent.
`
`A.
`
`Related Matters
`
`The parties represent that the ’683 patent is the subject of district court
`
`proceeding in Thomas Swan & Co. v. Finisar Corp., No. 2:13-cv-178 (E.D.
`
`Tex.). Pet. 5; Patent Owner’s Mandatory Notices under 37 C.F.R. § 42.8,
`
`Paper 7, 2.
`
`Petitioner filed additional Petitions for inter partes review of three
`
`other patents related to the ’683 patent, namely, U.S. Patent Nos. 7,145,710;
`
`7,664,395; and 8,335,033. Prelim. Resp. 3; See IPR2014-00460 (Paper 2,
`
`Paper 5); IPR2014-00461 (Paper 1, Paper 5); IPR2014-00465 (Paper 1,
`
`Paper 5), respectively.
`
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`2
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`IPR2014-00462
`Patent 8,089,683 B2
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`B.
`
`The ’683 Patent
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`
`
`
`
`The ’683 patent is directed to a method of operating an optical device
`
`comprising a spatial light modulator (SLM). Ex. 1001, 2:49–51. Figure 28
`
`of the ’683 patent is reproduced below.
`
`
`
` Figure 28 of the ’683 patent illustrates
`wavelength routing and selection device 600.
`As shown in Figure 28, wavelength routing and selection device 600
`
`receives input beam 601 through input port 611. Ex. 1001, 42:10–12.
`
`Grating 620 separates input beam 601 into single wavelength emergent
`
`beams 605, 606, and 607 each angularly offset by a different amount, and
`
`incident on lens 621. Id. at 42:22–25. Lens 621 refracts single wavelength
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`3
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`IPR2014-00462
`Patent 8,089,683 B2
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`emergent beams 605, 606, and 607 so that they emerge as mutually parallel
`
`
`
`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
`
`622. Id. at 42:26–28.
`
`Each of respective group 623, 624, and 625 of pixels on SLM 622
`
`displays a respective hologram, which provides a different deviation from
`
`the specular direction, resulting in reflected beams 635, 636, and 637. Id. at
`
`42:28–31. Reflected beams 635, 636, and 637 are incident upon lens 621
`
`and routed back to grating 620. Id. at 42:31–32.
`
`C.
`
`Illustrative Claim
`
`
`
`Claim 18 is the independent claim challenged by Petitioner. Claim 19
`
`depends directly from claim 18. Claim 18 is reproduced below:
`
`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.
`
`Ex. 1001, 61:61–62:2 (emphasis added).
`
`D.
`
`Prior Art Relied Upon
`
`Michael C. Parker, Dynamic Holograms for Wavelength Division
`
`Multiplexing (Nov. 1996) (Ph.D. dissertation, University of Cambridge) (on
`
`file with Cambridge University Library) (“Parker Thesis,” Ex. 1006).
`
`
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`4
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`IPR2014-00462
`Patent 8,089,683 B2
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`Stephen T. Warr, Free-Space Switching for Optical Fibre Networks
`
`
`
`(July 1996) (Ph.D. dissertation, University of Cambridge) (on file with
`
`Cambridge University Library) (“Warr Thesis,” Ex. 1005).
`
`E.
`
`Alleged Grounds of Unpatentability
`
`The information presented in the Petition sets forth Petitioner’s
`
`contentions of unpatentability of claims 18 and 19 of the ’683 patent based
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`on the following specific ground.
`
`Claims
`Challenged
`18 and 19
`
`Basis
`
`References
`
`§ 103
`
`Parker Thesis and Warr Thesis
`
`II.
`
`ANALYSIS
`
`A.
`
`Claim Construction
`
`We determine the meaning of certain claim terms for purposes of this
`
`Decision. In an inter partes review, claim terms in an unexpired patent are
`
`given their broadest reasonable construction in light of the patent
`
`specification. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide, 77
`
`Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under the broadest reasonable
`
`construction standard, claim terms are given their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007). Any special definition for a claim term must be set
`
`forth in the specification with reasonable clarity, deliberateness, and
`
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In
`
`determining the proper construction of a claim term, we must be careful not
`
`to read a particular embodiment appearing in the written description into the
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`IPR2014-00462
`Patent 8,089,683 B2
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`claim if the claim language is broader than the embodiment. In re Van
`
`
`
`Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Dictionaries may be relied on
`
`so long as the dictionary definition does not contradict a definition found in
`
`or ascertained by reading the patent documents. Vitronics Corp. v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1584 n.6 (Fed. Cir. 1996). We construe
`
`the terms below in accordance with these principles.
`
`1.
`
`“array”
`
`Independent claim 18 recites “array.” Petitioner asserts that “array”
`
`means “an assembly of two or more individual elements, appropriately
`
`spaced and energized to achieve desired directional properties.” Pet. 10.
`
`Patent Owner disagrees and asserts that “array” means “an arrangement of
`
`two or more elements.” Prelim. Resp. 14–15.
`
`Patent Owner contends that Petitioner incorrectly relies on a definition
`
`relating to antenna. Prelim. Resp. 14 (citing Pet. 10). Petitioner cites to a
`
`dictionary definition (Pet. 10), which refers to “radiating elements” and
`
`“beam antenna” Ex. 1014 (Peter M. B. Walker, Chambers Science and
`
`Technology Dictionary 51 (1988). The ’683 patent specification describes
`
`“an optical device” having “a two-dimensional array of controllable phase-
`
`modulating elements.” Ex. 1001, 2:50–52.
`
`We, therefore, decline to adopt Petitioner’s construction and agree
`
`with Patent Owner that the broadest reasonable interpretation of “array,” in
`
`the context of the ’683 patent, is an arrangement of two or more elements.
`
`2.
`
`“phase-modulating elements”
`
`The term “phase-modulating elements” is recited in independent claim
`
`18. Petitioner asserts that “phase-modulating elements” means
`
`
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`6
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`IPR2014-00462
`Patent 8,089,683 B2
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`“components, such as pixels, which can change the phase of incident light
`
`
`
`under certain conditions, such as application of voltage.” Pet. 10. Patent
`
`Owner asserts that “phase-modulating elements” means “elements that
`
`controllably modify the phase of light.” Prelim. Resp. 15.
`
`Petitioner’s assertion is that the modulating elements “change . . .
`
`light” (Pet. 10) and Patent Owner’s assertion is that the modulating elements
`
`“modify . . . light” (Prelim. Resp. 15). The ’683 patent specification does
`
`not provide an express definition of “modulating.” Patent Owner cites (id.)
`
`to the Fiber Optics Standard Dictionary, which states that “modulate” means
`
`“[t]o vary a characteristic or parameter of an entity in accordance with a
`
`characteristic or parameter of another entity.” Ex. 2004, 6 (Martin H. Weik,
`
`Fiber Optics Standard Dictionary 601 (3rd ed. 1997)). The ’683 patent
`
`specification states “[a]dvantageously, each phase modulating element is
`
`responsive to a respective applied voltage to provide a corresponding phase
`
`shift to emergent light.” Ex. 1001, 3:22–24. In the context of the ’683
`
`patent specification, each element shifts or modifies the light.
`
`We decline to read in the exemplary embodiment of pixels in the
`
`Petitioner’s assertion and the exemplary embodiment of controllably
`
`modifying light in the Patent Owner’s assertion. Upon review, we determine
`
`that the broadest reasonable interpretation of “phase-modulating elements”
`
`is elements that modify the phase of light.
`
`3.
`
`“pixel”
`
`The term “pixels” is recited in dependent claim 19. Petitioner asserts
`
`that “pixel” means “a component of a polarisation-independent reflective
`
`SLM which on one end consists of an electrode connected to circuitry and
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`IPR2014-00462
`Patent 8,089,683 B2
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`on the other a common electrode covered by glass, with several layers
`
`
`
`between the electrodes including liquid crystal material, alignment layers,
`
`and a quarter-wave plate.” Pet. 11–12. Patent Owner asserts that “pixel”
`
`means “the smallest element of the SLM’s display surface that can be
`
`assigned independent characteristics.” Prelim. Resp. 16.
`
`Petitioner cites to a specific embodiment of pixels described in the
`
`specification of the ’683 patent. Pet. 12 (citing Ex. 1001, 11:51–12:1). We
`
`decline to read a preferred embodiment into the claim. The ’033 patent
`
`specification does not provide an express definition of “pixel.”
`
`To show how one of ordinary skill in the art would use the term,
`
`Patent Owner cites to a dictionary, which states that “pixel” means (1) “the
`
`smallest element of a digital image that can be assigned a gray level” or (2)
`
`“[t]he smallest element of a display surface that can be assigned independent
`
`characteristics.” Ex. 2005, 8 (The Authoritative Dictionary of IEEE
`
`Standards Terms 830-31 (7th ed., 2000)).
`
`The specification of the ’683 patent describes that “each pixel can
`
`phase modulate light by a phase shift.” Ex. 1001, 6:12–13. The ’683 patent
`
`specification further states “the controller has a control input receiving data
`
`indicative of a desired phase modulation characteristic across an array of
`
`said pixels for achieving a desired control of light incident on said array.”
`
`Id. at 6:17–19. The ’683 patent specification is consistent with the second
`
`dictionary definition in describing a pixel as the smallest assignable element.
`
`The ’683 patent specification describes that the control is of “a desired phase
`
`modulation characteristic” for light incident on the display. Id. at 6:18–19.
`
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`8
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`IPR2014-00462
`Patent 8,089,683 B2
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`In the context of the ’683 patent specification, a pixel may be assigned one
`
`
`
`characteristic.
`
`Patent Owner’s assertion that a pixel is an element of the SLM’s
`
`display surface is consistent with an embodiment of the specification (Ex.
`
`1001, 6:5–7). We determine, however, that the plain meaning of “pixel” is
`
`not limited to a SLM display.
`
`Upon review, we determine that the broadest reasonable interpretation
`
`of “pixel” is the smallest element of a display that can be assigned an
`
`independent characteristic.
`
`4.
`
`“multiplex of optical signals” and “the optical signals of the
`
`multiplex”
`
`The terms “multiplex of optical signals” and “the optical signals of the
`
`multiplex” are recited in independent claim 18. Petitioner asserts that both
`
`“multiplex of optical signals” and “the optical signals of the multiplex”
`
`mean “an ensemble of optical channels.” Pet. 12. Patent Owner asserts that
`
`“multiplex of optical signals” means “ensemble of optical signals” and “the
`
`optical signals of the multiplex” means “the optical signals of the ensemble.”
`
`Prelim. Resp. 16.
`
`Use of the word “ensemble” to describe “multiplex” is consistent with
`
`the specification of the ’683 patent, which states, “Optical systems using
`
`SLMs may individually process the channels from an ensemble of channels
`
`on different wavelengths, entering the system as a multiplex of signals in a
`
`common beam.” Ex. 1001, 37:33–36 (emphases added).
`
`Patent Owner asserts its construction for “the optical signals of the
`
`multiplex” is correct for two reasons. Patent Owner first asserts that the
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`IPR2014-00462
`Patent 8,089,683 B2
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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
`
`that because of an amendment made during prosecution, the array of phase-
`
`modulating elements operates on individual channels, not on the common
`
`multiplexed beam. Id. We agree with Patent Owner that the order of the
`
`words in the second expression, “the optical signals of the multiplex,” is
`
`different from the order of these same words in the first expression.
`
`Individually processing optical channels, however, is not commensurate
`
`with the scope of the claim. We decline to read limitations into the claim
`
`from remarks made during prosecution.
`
`Upon review, we determine that the broadest reasonable interpretation
`
`of “multiplex of optical signals” is ensemble of optical signals and the
`
`broadest reasonable interpretation of “the optical signals of the multiplex” is
`
`the optical signals of the ensemble. The second construction, “the optical
`
`signals of the ensemble,” is not limited to processing, individually, optical
`
`channels.
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`5.
`
`“SLM” or “spatial light modulator”
`
`The term “SLM” is recited in independent claim 18. Petitioner asserts
`
`that “SLM” refers to “spatial light modulator” and means “a polarisation-
`
`independent device that act[s] on light beam or beams incident on the device
`
`to provide emerging light beams, which are controlled independently of one
`
`another.” Pet. 13. Patent Owner agrees that “SLM” refers to “spatial light
`
`modulator,” but disagrees with Petitioner’s construction. Prelim. Resp. 17.
`
`Patent Owner asserts that “SLM” or “spatial light modulator” means “a
`
`
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`10
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`IPR2014-00462
`Patent 8,089,683 B2
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`device that modifies a property of light as a function of time and position
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`
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`across it.” Id.
`
`The specification of the ’683 patent refers to SLMs as spatial light
`
`modulators. Ex. 1001, 11:42–43. In the context of the specification of the
`
`’683 patent, therefore, “SLM” refers to “spatial light modulator.”
`
`Petitioner asserts that the ’683 patent expressly disclaims any devices
`
`that are not polarization insensitive/independent by stating, “[t]he invention
`
`may be applied to other devices, provided they are capable of multiphase
`
`operation and are at least somewhat polarisation independent at the
`
`wavelengths of concern.” Pet. 14 (citing Ex. 1001, 12:38–41). Patent
`
`Owner asserts that the specification of the ’683 patent does not limit SLM to
`
`a particular structure. Prelim. Resp. 17 (citing Ex. 1001, 12:36–38) (“It is
`
`not intended that any particular SLM structure is essential to the invention,
`
`the above being only exemplary and illustrative.”) The citation on which
`
`Petitioner relies provides an example of an SLM that is “somewhat”
`
`polarization insensitive/independent (Ex. 1001, 12:40). The specification of
`
`the ’683 patent does not limit the claimed invention to this example. We,
`
`therefore, agree with Patent Owner that SLM is not limited to structures that
`
`are polarization insensitive or independent.
`
`To show how one of ordinary skill in the art would use the term
`
`“SLM,” Patent Owner cites to a few pages in a multi-volume book (Prelim.
`
`Resp. 17), which describe uses of liquid crystals, such as liquid crystal
`
`devices that are useful in parallel optical processing applications, and
`
`presents exemplary prototypes, such as liquid crystal television devices. Ex.
`
`2006, 4 (3 Liquid Crystals Applications and Uses 211 (Birendra Bahadur
`
`
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`11
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`IPR2014-00462
`Patent 8,089,683 B2
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`ed., 1992) (“Liquid Crystals Applications and Uses”)). Liquid Crystals
`
`
`
`Applications and Uses states “Spatial Light Modulators (SLMs),
`
`dynamically changeable devices which modify the amplitude, phase, and/or
`
`polarization of an optical wave front as a function of time and position
`
`across it.” Id.
`
`We turn to the specification of the ’683 patent, which describes that
`
`integrated SLM 200 is “for modulating light 201 of a selected wavelength.”
`
`Ex. 1001, 11:51–52. Neither party points us to an express definition of
`
`“modulating” in the ’033 patent specification. Modulation is defined in a
`
`technical dictionary as “the process of varying some characteristic of one
`
`signal (the carrier) in accordance with another signal (the message signal).”
`
`Hargrave’s Communications Dictionary (2001), available at
`
`http://search.credoreference.com/content/entry/hargravecomms/modulation/
`
`0 (June 19, 2014) (“Hargrave’s Dictionary”) (Ex. 3001). The ’683 patent
`
`specification describes an example of modulation that is consistent with the
`
`Hargrave’s Dictionary definition by stating, “[a]dvantageously, each phase
`
`modulating element is responsive to a respective applied voltage to provide a
`
`corresponding phase shift to emergent light.” Ex. 1001, 3:22–24. In the
`
`context of the ’683 patent specification, each modulating element shifts or
`
`modifies the light. Although the example in the ’683 patent specification
`
`describes phase modulation, no particular SLM structure is essential to the
`
`invention (id. at 12:36–38).
`
`Regarding Patent Owner’s contention that spatial light modulator
`
`modifies light “as a function of time and position across it,” Patent Owner
`
`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
`
`consistent with the ’683 patent specification.
`
`We agree with Petitioner and Patent Owner that “SLM” refers to
`
`“spatial light modulator.” We agree with Patent Owner that Petitioner’s
`
`construction is too narrow. We, however, decline to adopt in its entirety
`
`Patent Owner’s construction, and construe “SLM” and “spatial light
`
`modulator” in the context of the ’683 patent, as a device that modifies a
`
`spatial property of light.
`
`6.
`
`“LCOS”
`
`The term “LCOS” is recited in independent claim 18. Neither party
`
`offers a construction for “LCOS,” but the parties offer different phrases that
`
`purportedly are used to form the abbreviation “LCOS.” Petitioner refers to
`
`“LCOS” as “Liquid Crystal on Silicon.” Pet. 2. Patent Owner refers to
`
`“LCOS” as “liquid crystal over silicon.” Prelim. Resp. 4. The specification
`
`of the ’683 patent refers to “liquid crystal over silicon.” Ex. 1001, 6:57–58,
`
`11:42–43. For the purposes of this Decision, therefore, “LCOS” refers to
`
`“liquid crystal over silicon.”
`
`B.
`
`Asserted Obviousness of Claims 18 and 19 by Parker Thesis
`
`and Warr Thesis
`
`Petitioner contends that claims 18 and 19 are obvious over the
`
`combination of Parker Thesis and Warr Thesis. Pet. 17–28. In support of
`
`its asserted grounds of unpatentability, Petitioner sets forth the teachings of
`
`Parker Thesis and Warr Thesis, provides a detailed claim chart and cites to
`
`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,
`
`
`
`taken together. Pet. 17–28; Ex. 1003 ¶¶ 56–67. Petitioner has demonstrated
`
`that there is a reasonable likelihood that it would prevail in establishing that
`
`each of claims 18 and 19 is obvious over the combination of Parker Thesis
`
`and Warr Thesis.
`
`1.
`
`Parker Thesis
`
`Parker Thesis describes using dynamic holograms for wavelength
`
`division multiplexing. Ex. 1006, 1. Parker Thesis describes an addressable
`
`ferroelectric liquid crystal (FLC) SLM (id. at 12) and controlling the
`
`addressable SLM using a personal computer (id. at 14). Parker Thesis
`
`further describes holographic wavelength filtering and explains that the
`
`principle of operation of a tunable holographic wavelength filter is based on
`
`using a grating to disperse polychromatic light. Id. at 47.
`
`Parker Thesis also describes a concept for a polarization-insensitive
`
`space-wavelength switch using concepts developed in the thesis. Ex. 1006,
`
`97. Figure 6.1 of Parker Thesis is reproduced below.
`
`Figure 6.1 illustrates 3 x 3 space-wavelength switch.
`
`
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`14
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`IPR2014-00462
`Patent 8,089,683 B2
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`As illustrated in Figure 6.1, the space-wavelength switch described in
`
`
`
`Parker Thesis has an integrated SLM unit, which comprises a blazed grating,
`
`a pixelated FLC SLM, a quarter-wavelength plate, and a mirror. Ex. 1006,
`
`96–97. The switch acts as a 3 x 3 fiber cross-connect, but also can shuffle
`
`wavelengths between various fibers. Id. at 97.
`
`2. Warr Thesis
`
`Warr Thesis describes FLC SLMs consisting of an array of
`
`individually controllable pixels. Ex. 1005, 7. According to Warr Thesis, a
`
`design of miniature devices is to construct SLMs directly on top of silicon
`
`chips. Id. at 17. Each pixel is addressed by a signal applied to an aluminum
`
`pad, which doubles as a pixel mirror. Id.
`
`Warr Thesis further describes free-space switching for optical fiber
`
`networks. Ex. 1005, 1. Figure 5.4 of Warr Thesis is reproduced below.
`
`
`
`Figure 5.4 illustrates a double-pass holographic crossbar.
`
`As illustrated in Figure 5.4, multiple parallel light beams enter the
`
`system and are interconnected holographically by way of a crossbar. Ex.
`
`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
`
`
`
`divided so that each beam is deflected by a different computer generated
`
`hologram (CGH). Id. at 89. The beams are reflected back towards the SLM
`
`by a mirror before they output the system. Id.
`
`3.
`
`Determination as to Whether Parker Thesis and Warr Thesis
`Constitute Prior Art
`
`Petitioner relies on Parker Thesis and Warr Thesis as printed
`
`publications within the meaning of 35 U.S.C. § 102, and argues that each of
`
`the theses was indexed and shelved in the Cambridge University Library at
`
`least one year prior to the effective filing date of the ’683 patent. Pet. 16. In
`
`support of the contention that each thesis was indexed and shelved in the
`
`Cambridge University Library, Petitioner relies on a letter from Ms. Louise
`
`Clarke (Ex. 1007; “the Clarke letter”) and the testimony of Dr. Hall (Ex.
`
`1003 ¶ 49), who essentially opines as to the content of the Clarke letter.
`
`Patent Owner argues that Petitioner has not established properly that
`
`any one of the Parker and Warr Theses “was sufficiently publicly accessible
`
`so that interested persons in the art could locate it before at least the effective
`
`filing date of the ’683 patent.” Prelim. Resp. 48–49. Patent Owner argues
`
`that the evidence submitted to prove that each of Parker Thesis and Warr
`
`Thesis was available for public access is inadmissible under the Federal
`
`Rules of Evidence. Id. at 49. Patent Owner additionally argues that the
`
`substance of the evidence, if admitted, does not establish that each of Parker
`
`Thesis and Warr Thesis was publicly available. Id. at 50–51. We first
`
`address the admissibility arguments.
`
`With few exceptions, the Federal Rules of Evidence apply to inter
`
`partes proceedings. 37 C.F.R. § 42.62. The rules governing inter partes
`
`
`
`16
`
`

`

`IPR2014-00462
`Patent 8,089,683 B2
`
`
`
`review also set forth the proper procedure for objecting to, and moving to
`
`
`
`exclude, evidence when appropriate. When a party objects to evidence that
`
`was submitted during a preliminary proceeding, such an objection must be
`
`served within ten business days of the institution of trial. The objection to
`
`the evidence must identify the grounds for the objection with sufficient
`
`particularity to allow correction in the form of supplemental evidence. This
`
`process allows the party relying on the evidence to which an objection is
`
`served, the opportunity to correct, by serving supplemental evidence within
`
`ten days of the service of the objection. See, 37 C.F.R. 42.64(b)(1), (b)(2).
`
`If, upon receiving the supplemental evidence, the opposing party is still of
`
`the opinion that the evidence is inadmissible, the opposing party may file a
`
`motion to exclude such evidence. The time for filing a motion to exclude
`
`typically is several months into a trial. See, e.g., 77 Fed. Reg. at 48,768,
`
`App. A.
`
`In essence, Patent Owner moves for us to not consider, or exclude,
`
`(1) the Clarke letter (Ex. 1007), because the evidence allegedly is
`
`inadmissible hearsay and lacks foundation and (2) Dr. Hall’s testimony
`
`regarding the letter (Ex. 1003 ¶ 49), because Dr. Hall does not have the
`
`necessary expertise in library science to opine as an expert on the public
`
`availability of each thesis. Prelim. Resp. 49. These requests for us not to
`
`consider, or exclude, are made typically by way of a motion to exclude. See
`
`37 C.F.R. § 42.64(c). As stated above, motions to exclude are not
`
`authorized until much later during a trial. Patent Owner’s “motion to
`
`exclude” is premature and also prevents Petitioner from correcting, as
`
`permitted by the rules. Patent Owner will have full opportunity to object,
`
`
`
`17
`
`

`

`IPR2014-00462
`Patent 8,089,683 B2
`
`
`
`serve, reconsider any supplemental evidence and finally file a motion to
`
`
`
`exclude evidence. To the extent that Patent Owner urges the Board to
`
`consider the evidentiary issues as part of our determination to institute a
`
`trial, Patent Owner has failed to explain why we should deviate from the
`
`rules governing inter partes review. Thus, we need not decide, at this
`
`juncture, whether to exclude Exhibit 1007 or paragraph 49 of Exhibit 1003
`
`from consideration.
`
`Patent Owner additionally argues that the substance of the evidence, if
`
`admitted, does not establish that each of Parker Thesis and Warr Thesis was
`
`sufficiently publicly accessible so that interested persons could locate it
`
`before the effective filing date of the ’683 patent. Prelim. Resp. 50–51. A
`
`single printed document, sufficiently catalogued and available at a public
`
`library, generally is a printed publication within the meaning of 35 U.S.C.
`
`§ 102. In re Hall, 781 F.2d 897 (Fed. Cir. 1986). The Clarke letter indicates
`
`that each of Parker Thesis and Warr Thesis was approved by the Board of
`
`Graduate Studies on “23 April 1997” and “15 January 1997,” respectively.
`
`Ex. 1007, 1. According to the letter, the library catalogue was updated from
`
`an in-house database to a newer library management system in 2002, and
`
`that those catalogue items which pre-date 2002 do not have a record for
`
`when they were added to the library catalogue. The letter explains, however,
`
`that it was common practice for a thesis to be added to the catalogue
`
`approximately one month after the date on which the thesis was approved by
`
`the Board of Graduate Studies. Id. at 1–2.
`
`Patent Owner argues that the evidence does not establish that each of
`
`Parker Thesis and Warr Thesis was catalogued, citing In re Cronyn, 890
`
`
`
`18
`
`

`

`IPR2014-00462
`Patent 8,089,683 B2
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`
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`F.2d 1158, 1161 (Fed. Cir. 1989), because Ms. Clarke states that she cannot
`
`
`
`ascertain from the library’s records the exact date on which the theses were
`
`added to the library catalogue, but that the theses probably would have been
`
`added to the catalogue approximately one month after the date on which the
`
`theses were approved. Prelim. Resp. 50–51.
`
`We are aware of the Cronyn facts and decision. We, however, are
`
`persuaded that the facts in this case are more aligned with those in Hall. In
`
`Hall, the evidence was circumstantial, as it is here, as to when a particular
`
`paper was catalogued. The court in Hall accepted the evidence regarding the
`
`general library procedure for cataloging as probative value of routine
`
`business practice to show the performance of the specific act of cataloging a
`
`document. Based on the record before us, at this preliminary juncture of the
`
`proceeding, we find the evidence sufficient to establish that each of Parker
`
`Thesis and Warr Thesis was available to the public more than one year prior
`
`to the effective filing date of the ’683 patent, which is September 3, 2001.1
`
`4.
`
`Claim 18
`
`We are persuaded by Petitioner’s argument and evidence that
`
`Petitioner has shown sufficiently that there is a reasonable likelihood that it
`
`would prevail in establishing that claim 18 would have been obvious and we
`
`now address in detail Patent Owner’s arguments. Patent Owner contends
`
`
`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.
`
`
`
`
`19
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`

`

`IPR2014-00462
`Patent 8,089,683 B2
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`
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`that claim 18 requires that separation is provided by the array of phase-
`
`
`
`modulating elements, not a grating. Prelim. Resp. 19. Patent Owner
`
`contends that in Parker Thesis the separation is performed by the grating. Id.
`
`As explained above in our discussion of the construction of “phase-
`
`modulating elements,” we do not adopt Patent Owner’s construction because
`
`we decline to read in the exemplary embodiment of controllably modifying
`
`light. The specification of the ’683 patent describes an embodiment in
`
`which “grating 620 splits [] incoming beam 601.” Ex. 1001, 42:22. Patent
`
`Owner’s contention that Parker Thesis is distinguishable because it teaches
`
`separating input light using a grating is not commensurate with the scope of
`
`claim 18. Nonetheless, Parker Thesis also teaches separating input light
`
`using an SLM. Ex. 1006, 48.
`
`Patent Owner additionally contends that the claimed array uses
`
`multiple holograms (Prelim. Resp. 20), whereas in Parker Thesis, different
`
`channels are processed by a single hologram (id. at 30). Claim 18 does not
`
`recite “multiple holograms.” Patent Owner’s contention, therefore, is not
`
`commensurate with the scope of the claim. Parker Thesis, nonetheless,
`
`teaches that a “3 x 3 fibre cross-connect . . . shuffle[s] wavelengths between
`
`the various fibres.” Ex. 1006, 97. As Parker Thesis explains, this cross-
`
`connect that switches wavelengths from an input fiber to an appropriate
`
`output fiber uses “all the ideas developed in chapters 2 and 4” (id.), which
`
`includes programming a dynamic phase-modulating SLM to display
`
`different “holograms” (id. at 11).
`
`Patent Owner further contends that Parker Thesis is distinguishable
`
`because different channels are not processed independently from another.
`
`
`
`20
`
`

`

`IPR2014-00462
`Patent 8,089,683 B2
`
`
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`Prelim. Resp. 20; see also id. at 28 (“different groups of optical signals, are
`
`
`
`directed to the same hologram”). Claim 18 recites “to separate the optical
`
`signals into at least two groups, and to process at least one of the groups of
`
`optical signals” (emphasis added). Patent Owner’s contention that the claim
`
`requires processing more than one group is not commensurate with the scope
`
`of the claim.
`
`Patent Owner a

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