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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`FINISAR CORPORATION
`Petitioner
`
`v.
`
`THOMAS SWAN & CO. LTD.
`Patent Owner
`
`U.S. Patent No. 8,335,033
`
`_____________________
`Inter Partes Review Case No. Unassigned
`_____________________
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`DECLARATION OF KATHERINE HALL, PH.D.
`
`
`
`FINISAR 1003
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`
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`TABLE OF CONTENTS
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`OVERVIEW ........................................................................................................................1
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`MY BACKGROUND AND QUALIFICATIONS ..............................................................2
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`LIST OF DOCUMENTS CONSIDERED IN FORMULATING MY OPINION ...............6
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`PERSON OF ORDINARY SKILL IN THE ART ...............................................................7
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`STATE OF THE ART AS OF SEPTEMBER 3, 2001 ........................................................8
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`THE ’033 PATENT SPECIFICATION ............................................................................14
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`I.
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`II.
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`III.
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`IV.
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`V.
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`VI.
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`VII. THE CLAIMS OF THE ’033 PATENT ............................................................................17
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`VIII. CLAIM CONSTRUCTION ...............................................................................................18
`
`A.
`
`B.
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`Anticipation............................................................................................................19
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`Obviousness ...........................................................................................................20
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`IX.
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`ANALYSIS OF INVALIDITY GROUNDS .....................................................................24
`
`A.
`
`B.
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`Ground 1: Claim 1, 29, 60, 63, 66, 71, 72, 73, and 76, are rendered
`obvious by the combination of Parker Thesis and Warr Thesis and Tan
`Thesis .....................................................................................................................28
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`Ground 2: Claim 91 is rendered obvious by the combination of Parker
`Thesis, Warr Thesis, Tan Thesis and Crossland 787 .............................................74
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`X.
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`CONCLUSION ..................................................................................................................80
`
`i
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`I.
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`I, Katherine Hall, hereby declare as follows.
`
`OVERVIEW
`1.
`
`I am over the age of eighteen (18) and otherwise competent to make
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`this declaration.
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`2.
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`I have been retained as an expert witness on behalf of Finisar
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`Corporation for the above captioned inter partes review (IPR). I am being
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`compensated for my time in connection with this IPR at my standard consulting
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`rate, which is $ 400 per hour. I understand that the petition for inter partes review
`
`involves U.S. Patent No. 8,335,033 (“the ’033 patent”), Ex. 1001. The ’033 patent
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`is part of a family of patents that originated from UK Patent Application No.
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`0121308.1, filed on September 3, 2001. PCT Application No. PCT/GB02/04011
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`was then filed on September 2, 2002. U.S. Patent Application No. 12/710,913,
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`filed February 23, 2010, is a continuation of application No.11/978,258, filed
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`October 29, 2007, now U.S. Patent 8,809,683, which is a continuation of
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`application No. 11/515,389, filed on Sep. 1, 2006, now U.S. Patent No. 7,612,930,
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`which is a division of application No. 10/487,810 filed on September 10, 2004,
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`now U.S. Patent No. 7,145,710, upon attaining national stage in the United States.
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`I further understand that, according to USPTO records, the ’033 patent is currently
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`assigned to Thomas Swan & Co. Ltd. (“Thomas Swan”).
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`1
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`3.
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`In preparing this Declaration, I have reviewed the ’033 patent and
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`considered each of the documents cited herein, in light of general knowledge in the
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`art. In formulating my opinions, I have relied upon my experience in the relevant
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`art. In formulating my opinions, I have also considered the viewpoint of a person
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`of ordinary skill in the art (i.e., a person of ordinary skill in the field of optical
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`communications, defined further below in Section IV) prior to September 3, 2001.
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`I am familiar with the technology at issue as of the September 3, 2001 filing date
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`of the ’033 patent. I am also familiar with the level of a person of ordinary skill in
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`the art with respect to the technology at issue as of the September 3, 2001 filing
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`date.
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`II. MY BACKGROUND AND QUALIFICATIONS
`4.
`I am an expert in the field of optical communications, high-speed
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`optical switches, and free space optics, and I have been an expert in this field since
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`prior to 2001. Throughout the remainder of this declaration, I will refer to the field
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`of optical communications, high speed optical switches, and free space optics as
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`the relevant field or the relevant art. In formulating my opinions, I have relied
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`upon my training, knowledge, and experience in the relevant art. A copy of my
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`current curriculum vitae is provided as Ex. 1004, and it provides a comprehensive
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`description of my academic, employment, and publication history.
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`5.
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`As an expert in the field of optical communications, high-speed
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`optical switches, and free space optics since prior to 2001, I am qualified to
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`provide an opinion as to what a person of ordinary skill in the art would have
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`known or concluded as of 2001. Since 1984, I have accumulated significant
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`training and experience in the field and I have extensive knowledge and experience
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`relating to techniques and reasoning used in the field.
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`6.
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`I received a B.A. degree in Physics from Wellesley College in 1984.
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`After working in the Lightwave Systems Research Department at AT&T Bell
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`Laboratories from 1984-1987, I attended graduate school at the Massachusetts
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`Institute of Technology where I received a M.S. degree in Electrical Engineering
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`and Computer Science in 1990 and a Ph.D. in Electrical Engineering and
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`Computer Science in 1993. During that time, my post-baccalaureate and doctoral
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`work focused on the development of optical fiber communication systems, short
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`pulse lasers, novel optical spectroscopic techniques and identifying, characterizing,
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`and utilizing non-linear effects in optical fibers and semiconductor amplifiers.
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`7.
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`In 1993, I went to work in the Advanced Networks Group at M.I.T.
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`Lincoln Laboratory, where I led an effort to develop optical time division
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`multiplexing (OTDM) technologies including high bit rate data sources, clocking
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`techniques and processors based on high speed all optical switches. I also worked
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`on terrestrial and space-based wavelength division multiplexing (WDM)
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`
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`3
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`
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`telecommunication components, sub-systems, and test beds being developed by
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`Lincoln Laboratory at that time. In 1999, I left Lincoln Laboratory to found an
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`optical networking company called PhotonEx. As the Chief Technology Officer at
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`PhotonEx, I led the teams that developed the first commercially available 40 Gb/s
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`long-haul wavelength division multiplexed systems, which were successfully field-
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`trialed by Deutsche Telekom in 2002. After PhotonEx, I founded Wide Net
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`Technologies, a small company developing novel technologies for high-speed
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`WDM optical telecommunications systems and high-speed quantum cryptographic
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`systems. In 2007, I joined WiTricity Corporation, a supplier of wireless power
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`solutions, as the CTO. I have continued to perform technical consulting on topics
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`related to optical networking, components and systems since founding Wide Net
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`Technologies in 2003.
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`8.
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`I am a Fellow of the Optical Society of America (OSA), a distinction
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`that is awarded to less than 10% of the membership, and I am a Senior Member of
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`the Institute of Electrical and Electronics Engineers (IEEE). In addition to serving
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`on numerous conference program committees and reviewing articles submitted to
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`peer reviewed journals such as the IEEE Journal of Lightwave Technology, IEEE
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`Photonics Technology Letters, and Electronics Letters, I was the Program Chair of
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`the IEEE/LEOS Annual Meeting in 2000 and the General Chair in 2002 and an
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`Organizer of the National Academy of Engineering’s Frontiers in Engineering
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`Conference in 2004. In addition, I have served on the Board of Governors for both
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`the OSA and for the IEEE Lasers and Electro-Optics Society (now the IEEE
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`Photonics Society) and was an Assessment Panel Member for the National
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`Research Council reviewing activities at the National Institute of Science and
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`Technology (NIST) from 2002 to 2006. I was an associate editor of IEEE
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`Photonics Technology Letters from 1996 to 2008. I have published over 100
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`journal articles and conference proceedings, a book chapter entitled “Nonlinearities
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`in Active Media” and I am an inventor on 35 issued U.S. Patents. I have published
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`papers describing novel lasers, optical amplifiers, optical memories and non-linear
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`optical switches with titles such as “Ultrafast Optical TDM Networking: Extension
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`to the Wide Area,” “Architectures and Technologies for High-Speed Optical Data
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`Networks” and “Interferometric All-Optical Switches for Ultrafast Signal
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`Processing.” I have also been invited to give overviews of the state of the art of
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`high-speed optical networking and optical communications techniques. I have
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`served as a faculty opponent for a graduate student in Sweden and I have
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`supervised MIT graduate and undergraduate students performing research on
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`optical devices and communication systems. In addition to being named a Fellow
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`of the OSA last year, I was recently awarded the NCWIT Symons Innovator
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`Award by the National Center for Women and Information Technology.
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`9.
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`Additional contributions of mine to the field are set forth in my
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`current curriculum vitae (Ex. 1004).
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`10. Accordingly, I am an expert in the field of optical communications,
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`optical switches, and free space optics and I have been since prior to 2001.
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`III. LIST OF DOCUMENTS CONSIDERED IN FORMULATING MY
`OPINION
`11.
`
`In formulating my opinion, I have considered any documents cited in
`
`this declaration, specifically including the following documents:
`
`Description
`
`U.S. Patent No. 7,145,710
`U.S. Patent No. 7,664,395
`U.S. Patent No. 8,089,683
`U.S. Patent No. 8,335,033
`U.S. Patent No. 6,549,865
`File History of U.S. Patent No. 7,145,710
`File History of U.S. Patent No. 7,664,395
`File History of U.S. Patent No. 8,089,683
`File History of U.S. Patent No. 8,335,033
`U.S. Patent Application No. 2001/0050787 (“Crossland 787”)
`Michael Charles Parker, Dynamic Holograms for Wavelength Division
`Multiplexing, Thesis at University of Cambridge, November 1996 (“Parker
`Thesis”)
`Kim Leong Tan, Dynamic Holography Using Ferroelectric Liquid Crystal on
`Silicon Spatial Light Modulators, Thesis at University of Cambridge, February
`1999 (“Tan Thesis”)
`Stephen Thomas Warr, Free Space Switching for Optical Fibre Networks, Thesis
`at University of Cambridge, July 1996 (“Warr Thesis”)
`W.A. Crossland, et al., “Holographic Optical Switching: The ‘ROSES’
`Demonstrator,” Journal of Lightwave Technology, Vol. 18, No. 12, pp. 1845-
`1854, December 2000
`Melanie Holmes, et al., “Low Crosstalk Devices for Wavelength-Routed
`Networks,” IEE, pp. 2/1-2/10, 1995
`
`
`
`6
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`
`
`Description
`Mathias Johansson, et al., “Computer-controlled, adaptive beam steering,
`implemented in a FLC-SLM free-space optical switch,” Diffractive Optics and
`Micro-Optics, T. Li, ed., Vol. 41 OSA Trends in Optics and Photonics, pp. 347-
`349, Optical Society of America, June 2000 (“Johansson”)
`Screenshot of Optics Info Base, OSA’s Digital Library, Mathias Johansson, et
`al., “Computer-controlled, adaptive beam steering, implemented in a FLC-SLM
`free-space optical switch,” Diffractive Optics and Micro-Optics, T. Li, ed., Vol.
`41 OSA Trends in Optics and Photonics, pp. 347-349, Optical Society of
`America, June, 2000
`Paul F. McManamon, et al., “Optical Phased Array Technology,” IEEE, Vol. 84,
`No. 2, pp. 268-298, February 1996
`Letter from Louise Clarke of Cambridge University, February 24, 2014
`Biography of Prof. Crossland, http://www-
`g.eng.cam.ac.uk/photonics_sensors/people/bill-crossland.htm
`Listing of Publications from Photonics & Sensors group, http://www-
`g.eng.cam.ac.uk/photonics_sensors/publications/index.htm
`W.J. Tomlinson, et al., “Technologies and Architectures for Multiwavelength
`Optical Cross-connects,” LEOS, pp. 53-54, 1995
`Robert J. Mears, et al., “Telecommunications Applications for Ferroelectric
`Liquid-Crystal Smart Pixels,” IEEE Journal of Selected Topics in Quantum
`Electronics, Vol., 2, No. 1, pp. 35-46, April 1996
`“Array,” Chambers Science and Technology Dictionary, 1988
`“Wave plate,” McGraw-Hill Dictionary of Scientific and Technical Terms,
`Fourth Edition, 1989
`“Arbitrary,” Webster’s New Universal Unabridged Dictionary, Deluxe Second
`Edition, 1983
`
`
`IV. PERSON OF ORDINARY SKILL IN THE ART
`12.
`I understand that a person of ordinary skill in the art is one who is
`
`presumed to be aware of all pertinent art, thinks along conventional wisdom in the
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`art, and is a person of ordinary creativity. A person of ordinary skill in the art
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`
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`7
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`
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`(“PHOSITA”) would have had knowledge of the literature concerning optical
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`switches and related arts as of 2001.
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`13. Based on my review of the patent specification and file history, in my
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`opinion, a person of ordinary skill in the art would have at least a Ph.D., or
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`equivalent experience, in optics, physics, electrical engineering, or a related
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`field, including at least three years of experience designing, constructing, and/or
`
`testing optical systems. I would have been a person of ordinary skill in the art at
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`least by 1993.
`
`V.
`
`STATE OF THE ART AS OF SEPTEMBER 3, 2001
`14. Once the loss of optical fibers became low enough that optical signals
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`could travel distances of a few tens of kilometers before the signals needed to be
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`received, electronically regenerated, and retransmitted, optical transmission
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`systems began to replace wired electrical transmission systems in multiple back-
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`bone communication routes throughout the United States. With the success of
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`these first systems, researchers began to investigate ways to increase the distance
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`the optical signals could travel before they needed to be electronically regenerated,
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`because the costs of the electronic regenerators dominated the total system costs.
`
`In the late 1980s, the discovery of the erbium doped fiber amplifier (EDFA), which
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`many people credit with driving the incredible adoption of optical networking
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`equipment, was made. The EDFA not only enabled a single wavelength optical
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`data signal to propagate over hundreds of kilometers before it required electronic
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`regeneration, but it also enabled simultaneous amplification of multiple different
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`wavelength signals all traveling on a single fiber. Initially EDFAs were used to
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`extend the optical propagation distance and number of wavelengths, or data
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`channels, that could be carried on a single fiber, but along fixed routes and without
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`a great deal of network flexibility or reconfigurability.
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`15.
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`It didn’t take long, however, for researchers to realize that while the
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`EDFA could be used to overcome losses accumulated as optical signals traveled
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`along optical fibers, they could also be used to compensate for losses in optical
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`components that could be inserted into an optical network to make it more flexible,
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`more reconfigurable, and ultimately, more able to respond to varying traffic
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`demands and requirements in a cost effective manner. One of the optical
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`components receiving a great deal of attention early on was the optical cross-
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`connect switch. These switches could be used to route optical signals from an
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`input fiber to different output fibers, similar to the electrical cross-bar switches that
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`were well known in electrical networks. And while first applications focused on
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`cross-bar type switches that could be used to switch all the signals traveling on one
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`fiber to another, it wasn’t long before it was realized that by placing wavelength
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`multiplexing and demultiplexing components around those optical cross-connects,
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`individual control of each wavelength could be realized and that the switches could
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`route all or only certain wavelength channels from one port to another (See for
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`example, M.J. Holmes et al., “Low-Crosstalk Devices for Wavelength Routed
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`Networks”, IEE Proceedings, Savoy Place, London, 1995). Ex. 1010. Another
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`variation researchers discovered fairly early on was that certain wavelengths could
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`be added or dropped at a node and electronically processed, while other
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`wavelengths “bypassed” the node. That is, ”bypass” wavelength signals could
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`remain in the optical domain and travel on to other nodes in the optical network.
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`With the ability to individually process individual wavelength channels from
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`multiple wavelength multiplexed signals, researchers began to demonstrate devices
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`such as dynamic gain equalizers, tunable lasers, tunable filters, and wavelength
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`selective switches. All of this technology was well-known at the time Dr. Holmes
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`submitted her original Great Britain patent application.
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`16. While Dr. Holmes discloses “[i]t has previously been proposed to use
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`so-called spatial light modulators to control the routing of light beams within an
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`optical system”, she must have known that it had not only been proposed, but also
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`demonstrated, for many years, by many different groups using a variety of
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`technologies. In a review article by W.J. Tomlinson, “Technologies and
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`Architectures for Multiwavelength Optical Cross-Connects”, 8th Annual Meeting
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`Conference Proceedings, Vol. 1, IEEE Lasers and Electro-Optics Society Annual
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`Meeting (1995), (Ex. 1012) Tomlinson highlights optical cross-connects based on
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`10
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`various switching technologies including “micro-optic devices using mechanical
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`motion”, “multiple electro-optic switch elements”, “semiconductor switch
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`elements”, and “liquid-crystal switch elements.” Concentrating on the switch
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`technology proposed by Dr. Holmes, Dr. Mears and others in
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`“Telecommunications Applications of Ferroelectric Liquid-Crystal Smart Pixels,”
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`IEEE J. Selected Topics in Quantum Electron., vol. 2, no. 1, 1996, (Ex. 1013)
`
`reviewed demonstrations of “ferroelectric liquid crystal (FLC) over silicon
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`technology” as of 1996, which are described as “giving rise to a number of useful
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`switching applications” including “fiber-to-fiber space and wavelength switches.”
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`As discussed in the sections that follow, the research groups led by Dr. Crossland
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`and Dr. Mears were very active in publishing demonstrations of liquid crystal
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`based optical devices including switches, wavelength selective switches, filters,
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`dynamic gain equalizers and beam aligners, and Dr. Holmes co-authored some of
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`that work. Clearly, by the mid-to-late-1990s, there were already many reports in
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`the literature of free-space optical cross-connects and wavelength switches based
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`on liquid crystal devices. It is not clear why Dr. Holmes summarized the state-of-
`
`the-art at the time by saying that such devices had simply been “proposed” when it
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`is quite clear from the publications available at that time that many of the devices
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`had already been demonstrated and many of the draw-backs she describes had
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`already been addressed.
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`17.
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`In the “Background” section of her application, Dr. Holmes also
`
`points to problems in optical switches owing to issues with misalignment, beam
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`aberration and cross-talk, and points out that for reconfigurable switches, these
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`problems may be exacerbated by the fact that the path an optical beam follows may
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`be variable. She seems to recognize that many of these issues had already been
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`addressed in “adaptive optical components in the field of astronomical devices,”
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`but she inaccurately states that such solutions “have been proposed,” whereas in
`
`fact, they had already been demonstrated for many years, and she discounts the
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`importance of those solutions stating that the “constraints are different to the
`
`present field,” but that is not necessarily true. In “Optical Phased Array
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`Technology” by McManamon et al., Proc. of the IEEE, vol. 84, no. 2, February
`
`1996, (Ex. 1016, hereinafter “McManamon”) McManamon discloses that “[l]aser
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`communication, whether effected with directed beams in free space or by
`
`switching guided beams within fiber links is another application area” of his
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`adaptive optical components. McManamon at 269. Here McManamon is stating
`
`that the constraints may not be that different to Holmes’ “present field” and he
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`describes applying the liquid crystal SLM technology he has developed and
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`demonstrated to optical communication systems throughout his paper.
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`Interestingly, McManamon’s paper published in 1996 describes that “two
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`dimensional beam steering can be achieved” and that “any optical distortion that is
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`12
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`
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`separable in Cartesian coordinates can be fully compensated.” McManamon at
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`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`272. He also discloses that “[t]he concepts underlying operation of optical phased
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`array are identical to those for microwave arrays. Orders-of-magnitude differences
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`in wavelength between the microwave and optical worlds has resulted on a
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`different implementation of practical phased arrays than that taken with microwave
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`arrays.” McManamon at 274. Here, McManamon is crediting much older work
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`with some of the ideas that have been adapted for use in optical systems rather than
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`electrical systems. Dr. Holmes seems to have dismissed this prior art related to
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`free-space adaptive optics systems, and in so doing failed to realize that much of
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`what she went on to claim, was already well known. In yet another example,
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`McManamon discloses that “[t]he programmable, dynamic nature of the diffractive
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`element offers significant advantages over fixed element systems. Dynamic
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`pointing and focus control enables real-time compensation in optical systems that
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`experience variations with temperature or other environmental variables. Such
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`control will also be useful for auto-alignment in systems for which it may be
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`difficult or impossible to maintain alignment manually.” McManamon at 281-82.
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`Dr. Holmes is incorrect to characterize the state of the art as not having addressed
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`some of the issues she raises as problematic for free-space reconfigurable optical
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`devices. In fact multiple solutions had already been disclosed in the prior art.
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`13
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`Certainly the solutions she has claimed were already known, and in many cases,
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`had been for years.
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`VI. THE ’033 PATENT SPECIFICATION
`18.
`I have considered the disclosure of the ’033 patent in light of the
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`knowledge of a PHOSITA as of the claimed priority date of the ’033 patent, which
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`I understand to be September 3, 2001.
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`19. The ’033 patent is “relate[d] to the general field of controlling one or
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`more light beams by the use of electronically controlled devices.” (Ex. 1001 at
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`1:22-25). The central element of the claimed devices is a “spatial light modulator”
`
`or “SLM.” The SLM is made up of a two-dimensional array of “controllable
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`elements” or “phase modulating elements” – e.g. liquid crystal pixels. (Ex. 1001
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`at 2:55-56; 3:36-37; 6:11-12). The specification describes grouping the
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`controllable elements such that input light beams travel through a “dispersion
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`device” or grating and are incident on particular groups are controllable
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`independently of each other. (Ex. 1001 at 2:57-68; 5:10-25). The ’033 patent
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`further describes the use of a “focussing device” or lens to focus the light from the
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`“dispersion device” onto the SLM. (Ex. 1001 at cl. 1). The specification suggests
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`that the size, shape and position of groups of phase-modulating elements need not
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`be fixed and can, if need be, be varied. (Ex. 1001 at 11:31-33).
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`20. The specification teaches that the SLM is able to modify, in a
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`controlled manner, the direction, power, focus, aberration, or beam shape of a light
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`beam. (Ex. 1001 at 11:43-47). That modification is achieved through the display
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`of a “hologram” at each group of pixels. (Ex. 1001 at 11:33-38). A “hologram” is
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`displayed by applying certainvoltages to each pixel of the group. (Ex. 1001 at
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`22:7-9). The applied voltage affects the orientation of the liquid crystal. (Ex. 1001
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`at 12:6-10). When the light strikes the liquid crystal, the phase of the light at each
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`pixel is “modulated” or modified based on the orientation of the liquid crystal.
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`(Ex. 1001 at 12:18-21).
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`15
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`21. One functionality described in the specification is routing. (Ex. 1001
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`at Fig. 28; 42:8-33). Routing is described in connection with Figure 28:
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`22. Figure 28 shows a multiwavelength input beam, 601 that originates
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`from input port 611 and is incident upon grating 620. (Ex. 1001 at 42:8-19). The
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`grating splits beam 601 into three single wavelength beams, 605, 606, and 607,
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`respectively. (Ex. 1001 at 42:20:23). The three beams pass through lens 621
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`which refracts them so that they emerge parallel as beams 615, 616, and 617,
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`respectively, as they head towards the SLM 622. (Ex. 1001 at 42:23-26). Each
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`beam is incident upon a different group of pixels, 623, 624, or 625, where different
`16
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`holograms are displayed. (Ex. 1001 at 42:24-26). The displayed holograms each
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`provide a different angle of reflection to the respective beams such that the beams
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`are routed to one of the output ports, 612, 613, or 614. (Ex. 1001 at 42:26-29). In
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`the example in Figure 28, beams 605 and 607 are routed to output port 614, and
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`beam 607 is routed to output port 612. (Ex. 1001 at 42:31-33). However, the
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`specification teaches that the depending on the selection of the hologram to be
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`displayed at each group, the light can be routed differently. (Ex. 1001 at 42:34-
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`42).
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`VII. THE CLAIMS OF THE ’033 PATENT
`23. The claims of the ’033 patent are directed to optical processors or
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`devices that have an input, an output, a dispersion device, a focussing device, an
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`SLM, and circuitry to display certain holograms. The independent claims are
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`directed to a device that routes light through a dispersion device that disperses light
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`of differing frequencies. These channels are then incident on a groups of
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`controllable elements of a two dimensional “spatial light modulator (SLM).” The
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`processor is configured to display holograms on the SLM in order to route the
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`channels to the desired output port.
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`24. As described more fully below, the claimed methods and devices in
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`the ’033 patent were known to PHOSITA well before September 3, 2001. By that
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`time, the device architecture, hologram mathematics, and adaptive nature of the
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`17
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`devices were well understood and described in the art. Thus, the claims of the ’033
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`patent represent nothing more than the obvious combination or rearrangement of
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`teachings from others—especially those at the University of Cambridge—who
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`preceded the ’033 patent.
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`VIII. CLAIM CONSTRUCTION
`25.
`I understand that the challenged claims must be given their broadest
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`reasonable interpretations in light of the specification of the ‘033 patent, which
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`means that the words of the claims should be given their broadest possible meaning
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`consistent with the specification of the ‘033 patent.
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`26.
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`I understand that Finisar has proffered the following constructions of
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`terms in the ’710 patent:
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` “SLM” or “spatial light modulator”: “a polarisation-independent
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`device that acts on a light beam or beams incident on the device to
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`provide emerging light beams, which are controlled independently of
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`one another.”
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` “dispersion device”: “a device that separates a light beam having
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`different wavelengths into its constituent spectral components based
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`on wavelength.”
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` “focusing device” in light of the specification is “an optical device
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`used to focus beams of light, such as a lens, a mirror, or a combination
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`18
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`of the two.” See, e.g., Ex. 1001 at 38:22-24 (“The optics used to focus
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`the beams can be based on refractive elements such as lenses or
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`reflective elements such as mirrors or a combination of the two.”).
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` “array”: “an assembly of two or more individual elements,
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`appropriately spaced and energized to achieve desired directional
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`properties.”
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` “controllable elements”: “components, such as pixels, which can
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`change the phase of incident light under certain conditions, such as
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`application of voltage.”
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` “hologram”: “a set of modulation values for achieving the desired
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`change in incident light.”
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`27.
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`I have applied the constructions above throughout my declaration. I
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`agree that the above constructions are correct.
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`A. Anticipation
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`28.
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`It is my understanding that a reference anticipates a claim if it
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`discloses each and every element recited in the claim, arranged as in the claim, so
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`as to enable one of skill in the art to make and use the claimed invention without
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`the need for undue experimentation in light of the general knowledge available in
`
`the art. I understand that in order to anticipate an invention, a prior art reference
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`must be enabling to one of ordinary skill in the art.
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`19
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`Inter Partes Review of USPN 8,335,033
`Declaration of Katherine Hall, Ph.D. (Exhibit 1003)
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`29.
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`I understand that the express and inherent disclosures of a prior art
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`reference may be relied upon. However, I understand that the fact that a certain
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`result or characteristic may occur or may be present in the prior art is not sufficient
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`to establish the inherency of that result or characteristic.
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`30. The factors that I have considered in determining whether a reference
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`sets forth the elements of a claim in a sufficient manner such that a PHOSITA
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`could have readily made and used the claimed invention without undue
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`experimentation include: the breadth of the claim, the nature of the invention, the
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`state of the prior art, the level of one of ordinary skill, the level of predictability in
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`the art, the amount of direction provided by the reference, the existence of working
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`examples, and the quantity of experimentation needed to make or use the invention
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`claimed.
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`B. Obviousness
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`31.
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`I understand that even if a patent is not anticipated, it is still invalid if
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`the differences between the claimed subject matter and th
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