`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`FINISAR CORPORATION
`Petitioner
`v.
`THOMAS SWAN & CO. LTD.
`Patent Owner
`_____________________
`Inter Partes Review Case No. Unassigned
`_____________________
`
`
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,335,033
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. §§ 42.1-.80, 42.100-.123
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`
`
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Inter Partes Review of USPN 8,335,033
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES AND FEES ......................................................... 4
`III. CERTIFICATION OF GROUNDS FOR STANDING .................................. 5
`IV. BACKGROUND ............................................................................................. 5
`A. OVERVIEW OF THE ’033 PATENT .................................................. 5
`CLAIM CONSTRUCTION ............................................................................ 8
`V.
`VI. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 15
`VII. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED .................. 15
`A.
`Summary of Grounds for Challenge ................................................... 16
`B. Ground 1: Claims 1, 29, 60, 63 66, 71-73, 76 are rendered
`obvious by the combination of Parker Thesis and Warr Thesis
`and Tan Thesis ..................................................................................... 17
`C. Ground 2: Claim 91 is rendered obvious by the combination of
`Parker Thesis and Warr Thesis and Tan Thesis and Crossland
`787 ....................................................................................................... 51
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`I.
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`INTRODUCTION
`Petitioner Finisar Corporation (“Finisar”) request inter partes review of claims
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`1, 29, 60, 63 66, 71-73, 76 and 91 of U.S. Patent No. 8,335,033 (“the ’033 patent”)
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`(Ex. 1001), assigned on the face of the patent to Thomas Swan & Co. Ltd. (“Thomas
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`Swan”). The claims of the ’033 patent are generally directed to “optical processors”
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`that use a “dispersion device” to disperse light beams of multiple frequencies into
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`channels and a “focussing device” to focus the light onto a two-dimensional spatial
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`light modulator (“SLM”) having an “array of controllable elements. “ The optical
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`processor includes circuitry that displays “holograms” on the SLM in order to
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`control the direction of light emerging from the SLM. The technology claimed in
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`the ’033 patent has applications in fiber optic communications. The original patent
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`application that led to the issuance of the ’033 patent was filed in the United
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`Kingdom on September 3, 2001.
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`As explained further below, the named inventor on the ’033 patent, Melanie J.
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`Holmes, improperly claimed as her own subject matter that was previously
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`developed and published by her former colleagues at the University of Cambridge
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`(“Cambridge”). For about a decade prior to the filing of the priority application in
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`2001, students and researchers at Cambridge, working in Professor William
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`Crossland’s Photonics & Sensors group, had investigated and published research
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`relating to the use of liquid crystal SLMs for performing all kinds of optical
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`functions for use in optical communication and other applications. This work is well
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`documented and described in numerous publications emanating from Prof.
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`Crossland’s group in the 1990s. See Ex. 1014, http://www-
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`g.eng.cam.ac.uk/photonics_sensors/ people/bill-crossland.htm (biography of Prof.
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`Crossland: “Bill Crossland held the position of Group Leader of the Photonics &
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`Sensors Group . . . from 1992 . . . until his retirement at the end of September 2009. .
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`. He is generally regarded as the founding father of liquid crystal over silicon
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`(LCOS) technologies.”) and Ex. 1015, http://www-
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`g.eng.cam.ac.uk/photonics_sensors/publications/index.htm (providing an exemplary
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`listing of publications from the Photonics & Sensors group).
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`In the years prior to the filing of the U.K. priority application, Dr. Holmes
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`collaborated with Cambridge on the development and use of liquid crystal SLMs for
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`optical beam routing and other applications. The collaboration began in at least 1995
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`(Ex. 1010) (article entitled “Low Crosstalk Devices for Wavelength-Routed
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`Networks,” by M. J. Holmes, W. Crossland et al., IEE Colloquium on Guided Wave
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`Optical Signal Processing, IEE Dig. No. 95-128 London, UK) and continued through at
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`least 2001 (Ex. 1011) (article entitled “Holographic Optical Switching: The
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`‘ROSES’ Demonstrator,” by W. A. Crossland, K.L. Tan, M.J. Holmes et al., Journal
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`of Lightwave Technlogy, Vol. 18, No. 12, Dec. 2000, at 1845-54). During this time,
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`there were three particular students that worked in Prof. Crossland’s group that are
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`relevant to this petition: Michael C. Parker, Stephen T. Warr and Kim L. Tan. Each
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`of these students conducted research relating to liquid crystal SLMs for use in optical
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`routing that culminated in Ph.D. dissertations published by Cambridge. These three
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`Ph.D. dissertations form the basis of this petition along with a United States patent
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`application filed by Prof. Crossland, each of which are prior art under either § 102(b)
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`or § 102(e).
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`As explained further below, it is apparent that Dr. Holmes claimed as her own
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`the work of Drs. Parker, Warr, and Tan and Prof. Crossland after learning about their
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`research through her collaboration with Cambridge. A review of the publication
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`history of the Cambridge group preceding Dr. Holmes’s U.K. priority application
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`makes clear that the researchers in the group worked closely together—sometimes
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`even in the same laboratory using the same devices—and openly shared their ideas
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`with each other. In addition, these researchers frequently cite each other’s work in
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`their publications. Thus, by the time of Dr. Holmes filed her U.K. priority
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`application, a person having ordinary skill in the art (“PHOSITA”1) would have
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`understood that the inventions claimed in the ’033 patent were rendered obvious by
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`the prior work of others at Cambridge. Given the working environment at
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`Cambridge and the long history of cross-cited publications, a PHOSITA would have
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`1 All references to the knowledge or understanding of a PHOSITA are as of September 3,
`2001 unless otherwise specified.
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`been strongly motivated to combine the Cambridge publications relied upon in this
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`petition.
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`This petition shows that there is a reasonable likelihood that Petitioner will
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`prevail on all claims based on the three Cambridge Ph.D. dissertations discussed
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`herein, none of which were before the PTO, as well as the Crossland patent
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`application. This prior art renders obvious all petitioned claims. Claims 1, 29, 60,
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`63 66, 71-73, 76 and 91 of the ’033 patent should be found invalid and canceled.
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`II. MANDATORY NOTICES AND FEES
`Real Party-in-Interest: Finisar Corporation is the real party-in-interest in this
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`petition.
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`Related Matters: The following matter may affect or be affected by a decision
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`in this proceeding: Thomas Swan & Co. Ltd. v. Finisar Corp., No. 2:13-cv-178 (E.D.
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`Texas). The ’033 patent has been asserted in that matter. Additionally, Petitioner is
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`filing additional petitions for inter partes review against three other patents asserted
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`in the above litigation, against U.S. Pat. Nos. 7,145,710; 7,664,395; and 8,089,683.
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`Counsel: Lead counsel in this case is David Radulescu (PTO Reg. No.
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`36,250); backup counsel is Gregory Maskel (PTO Reg. No. 56,229) and Kurt
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`Rauschenbach (PTO Reg. No. 40,137). Powers of attorney accompany this Petition.
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`Service Information: Email: david@radulescullp.com; greg@radulescullp.com
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`Address: Radulescu LLP, 136 Madison Ave., 6th Floor, New York, NY 10016
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`Inter Partes Review of USPN 8,335,033
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`Telephone: (646) 502-5950
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`Facsimile: (646) 502-5959
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`Email: kurt@rauschenbach.com
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`Address: Rauschenbach Patent Law Group, PO Box 849, Franconia, NH
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`03580
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`Telephone: (603) 823-5590
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`Facsimile: (603) 823-5706
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`Please direct all correspondence to lead counsel at the above address.
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`Petitioners consent to email service at: david@radulescullp.com and
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`greg@radulescullp.com.
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`Payment: Under 37 C.F.R § 42.103(a), the Office is authorized to charge the
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`fee set forth in 37 C.F.R. § 42.15(a) to Deposit Account No. 506352 as well as any
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`additional fees that might be due in connection with this Petition.
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`III. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies under 37 C.F.R § 42.104(a) that the patent for which
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`review is sought is available for inter partes review and that Petitioner is not
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`barred or estopped from requesting an inter partes review challenging the patent
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`claims on the grounds identified in this Petition.
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`IV. BACKGROUND
`A. OVERVIEW OF THE ’033 PATENT
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`Summary: The ’033 patent is “relate[d] to the general field of controlling one
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`or more light beams by the use of electronically controlled devices.” (Ex. 1001 at
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`5
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`1:22-25). The central element of the claimed devices is a “spatial light modulator”
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`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 at
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`2:55-56; 3:36-37; 6:11-12). The specification describes grouping the controllable
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`elements such that input light beams travel through a “dispersion device” or grating
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`and are incident on particular groups are controllable independently of each other.
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`(Ex. 1001 at 2:57-68; 5:10-25). The ’033 patent further describes the use of a
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`“focussing device” or lens to focus the light from the “dispersion device” onto the
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`SLM. (Ex. 1001 at cl. 1). The specification suggests that the size, shape and position
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`of groups of phase-modulating elements need not be fixed and can, if need be, be
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`varied. (Ex. 1001 at 11:31-33).
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`The specification teaches that the SLM is able to modify, in a controlled
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`manner, the direction, power, focus, aberration, or beam shape of a light beam. (Ex.
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`1001 at 11:43-47). That modification is achieved through the display of a
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`“hologram” at each group of pixels. (Ex. 1001 at 11:33-38). A “hologram” is
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`displayed by applying certain voltages to each pixel of the group. (Ex. 1001 at 22:7-
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`9). The applied voltage affects the orientation of the liquid crystal. (Ex. 1001 at
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`12:6-10). When the light strikes the liquid crystal, the phase of the light at each pixel
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`is “modulated” or modified based on the orientation of the liquid crystal. (Ex. 1001
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`at 12:18-21).
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`Cited Art: Except for U.S. Patent Application No. 2001/0050787 (“Crossland
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`787”), none of the references listed below in Section VII were part of the original
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`prosecution record of the ’033 patent.
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`Prosecution History: The ’033 patent is part of a family of patents that
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`originated from UK Patent Application No. 0121308.1, filed on September 3, 2001.
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`PCT Application No. PCT/GB02/04011 was then filed on September 2, 2002. U.S.
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`Patent Application No. 12/710,913, filed February 23, 2010, is a continuation of
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`application No.11/978,258, filed October 29, 2007, now U.S. Patent 8,809,683,
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`which is a continuation of application No. 11/515,389, filed on Sep. 1, 2006, now
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`U.S. Patent No. 7,612,930, which is a division of application No. 10/487,810 filed on
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`September 10, 2004, now U.S. Patent No. 7,145,710, upon attaining national stage in
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`the United States. This application led to the issuance of the ’033 patent. The ’033
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`patent lists Thomas Swan & Co. Ltd as assignee.
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`Claims of the ’033 Patent: Independent Claim 1 is exemplary and reads:
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`1. An optical processor having a reflective SLM, a dispersion device
`and a focussing device,
`wherein the SLM has an array of controllable elements,
`wherein the processor is configured such that light from a
`common point on the dispersion device is spatially distributed over at
`least part of the SLM, and
`wherein the processor is configured such that the controllable
`elements display different holograms at chosen locations of the SLM
`where said light is incident, for controlling directions at which light
`from respective said locations emerges.
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`V. CLAIM CONSTRUCTION
`This Petition shows that the challenged claims of the ’033 patent (Ex. 1001)
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`are unpatentable when the challenged claims are given their broadest reasonable
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`interpretation in light of the specification, and in view of patentee’s allegations in
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`the co-pending litigation.2 The constructions set forth below are provided for
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`purposes of this inter partes review only.
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`Because the named inventor, Dr. Holmes, was a former collaborator of Drs.
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`Warr, Parker, Tan, and Crossland and a member of the Crossland group at
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`Cambridge, and in fact claimed the work of these and other individuals after learning
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`about their work through her many interactions with various researchers at
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`Cambridge, the ‘033 patent shares with the asserted prior art references vastly
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`common terminology concerning the same subject matter. As a result, there are few
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`terms in the asserted claims that require construction, as most of the claim terms can
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`be found verbatim in the asserted prior art in the very same context.
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`The broadest reasonable construction for the term “SLM” or “spatial light
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`modulator” in light of the specification is “a polarisation-independent device that
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`2 District Courts employ different standards of proof and approaches to claim
`interpretation that are not applied by the USPTO for inter partes review.
`Accordingly, any interpretation or construction of the challenged claims in this
`Petition, either implicitly or explicitly, should not be viewed as constituting, in whole
`or in part, Petitioner’s own interpretation or construction, except as regards the
`broadest reasonable construction of the claims presented. Petitioner reserves the
`right to seek different constructions of these claim terms in a different forum.
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`acts on a light beam or beams incident on the device to provide emerging light
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`beams, which are controlled independently of one another.” See, e.g., Ex. 1001 at
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`Fig. 1, 11:43-47 (“Devices embodying the invention act on light beams incident on
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`the device to provide emerging light beams which are controlled independently of
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`one another. Possible types of control include control of direction, control of power,
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`focussing, aberration compensation, sampling and beam shaping.”); 11:27-29 (“the
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`problems of the prior art can be solved by using a reflective SLM having a two-
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`dimensional array of phase-modulating elements that is large in number, and
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`applying a number of light beams to groups of those phase-modulating elements”).
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`The specification makes clear that the spatial light modulator of the alleged invention
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`must be polarization insensitive or independent for the device to work. See, e.g., Ex.
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`1001 at 11:48-50 (“polarisation-independent multiple phase liquid crystal over
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`silicon spatial light modulators (SLMs)”). Indeed, the ‘033 patent expressly
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`disclaims any devices that are not polarisation insensitive/independent. See, e.g., Ex.
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`1001 at 12:45-47 (“The invention may be applied to other devices, provided they are
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`capable of multiphase operation and are at least somewhat polarisation independent
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`at the wavelengths of concern.”). The specification describes several ways of
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`achieving polarisation independence of the SLM. One disclosed way is use of
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`ferroelectric liquid crystal (“FLC”) known to be inherently polarization independent.
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`See, e.g., Ex. 1001 at 12:51-54 (“Where liquid crystal materials other than
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`ferroelectric are used, current practice indicates that the use of an integral quarter
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`wave plate contributes to the usability of multiphase, polarisation-independent
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`SLMs.”). Another disclosed way is use of quarter-wave plate that creates
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`polarisation independence. See, e.g., Ex. 1001 at 4:6-8 (“The SLM may be
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`integrated on a substrate and have an integral quarter-wave plate whereby it is
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`substantially polarisation insensitive.”), 7:6-8 (“The use of the wave plate and the
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`successive pass architecture allows the SLM to be substantially polarisation
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`independent.”).
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`The broadest reasonable construction for the term “dispersion device” in light
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`of the specification is “a device that separates a light beam having different
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`wavelengths into its constituent spectral components based on wavelength.” See,
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`e.g., Ex. 1001 at 38:33-36 (“As a result of the grating 300 the beam 301 is split into
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`separate beams 301a, 301b, 301c for each wavelength channel, each travelling in a
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`different direction governed by the grating equation.”).
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`The broadest reasonable construction for the term “focusing device” in light
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`of the specification is “an optical device used to focus beams of light, such as a lens,
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`a mirror, or a combination of the two.” See, e.g., Ex. 1001 at 38:22-24 (“The optics
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`used to focus 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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`The broadest reasonable construction for the term “array” is “an assembly of
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`two or more individual elements, appropriately spaced and energized to achieve
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`desired directional properties.” See Ex. 1017, Chambers Science and Technology
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`Dictionary at 51. This definition from a technical dictionary available on or before
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`the priority date of the ’033 patent is consistent with the use of the term “array” in
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`the specification of the ’033 patent. For example, Figures 2, 4, and 7 and the
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`corresponding description in the specification describe arrays of pixels consistent
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`with the proposed construction. See, e.g., Ex. 1001 at Figs. 2, 4, 7, 13:4-13 (“a first
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`array, or block 13 of pixels,” “a second array, or block 14 of pixels,” “displaying a
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`linearly changing phase ramp in an at least one direction across the blocks or arrays
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`13, 14”). Other disclosure of the term in the patent is also consistent with the
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`proposed construction. See, e.g., Ex. 1001 at 13:31-33 (“Having established a
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`desired phase modulation characteristic across the array so as to achieve the desired
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`control of said beam”); 14:1-2 (“the value of phase across an array of pixels”).
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`The broadest reasonable construction for the term “controllable elements” in
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`light of the specification is “components, such as pixels, which can change the phase
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`of incident light under certain conditions, such as application of voltage.” This
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`definition is consistent with the use of the term “phase-modulating elements” in the
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`specification of the ‘033 patent. In particular, the specification makes clear that there
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`needs to be a large number of phase-modulating elements for the contemplated
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`optical device to operate. See, e.g., Ex. 1001 at 11:28-29 (“array of phase-
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`modulating elements that is large in number”). The specification also discloses
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`embodiments where the phase-modulating elements are pixels. See, e.g., Ex. 1001 at
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`38:56-58 (“the SIM [sic] 320 is a continuous pixel array of phase-modulating
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`elements and is polarisation independent”). The specification also provides details of
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`the operation and function of the controllable phase modulating elements, consistent
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`with the proposed construction. See, e.g., Ex. 1001 at 13:31-57 (“Having established
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`a desired phase modulation characteristic across the array so as to achieve the desired
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`control of said beam the processing circuitry 11 transforms this characteristic into
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`one that can be displayed by the pixels 13,14 of the SLM 10. Firstly it should be
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`borne in mind that the processing circuitry 11 controlling the pixels of an SLM 10 is
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`normally digital. . . . To allow the pixels 13,14 of the SLM 11 to display a suitable
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`phase profile, the processing circuitry 11 carries out a level selecting operation for
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`each pixel. . . . [F]or each pixel, the available level nearest the desired modulation is
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`ascertained and used to provide the actual pixel voltage. This voltage is applied to
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`the pixel electrode for the pixel of concern.”).
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`The broadest reasonable construction for the term “hologram” in light of the
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`specification is “a set of modulation values for achieving the desired change in
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`incident light.” See, e.g., Ex. 1001 at 13:50-57 (“In one example of this operation,
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`the desired phase modulation is expressed modulo 2pi across the array extent, and
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`the value of the desired modulo-2pi modulation is established at the centre of each
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`pixel. Then for each pixel, the available level nearest the desired modulation is
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`ascertained and used to provide the actual pixel voltage. This voltage is applied to
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`the pixel electrode for the pixel of concern."); 20:50-65 (“The holograms are
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`generated by processing circuitry 82 which responds to a control input 83 to apply
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`voltages to an array of pixellated elements of the SLM, each of which is applied
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`substantially uniformly across the pixel of concern. This result is a discrete
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`approximation of a linear phase modulation to route the beams. The processing
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`circuitry 82 calculates the ideal linear phase ramp to route the beams, on the basis of
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`the routing control input 83 and resolves this phase modulo 2Pi. The processing
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`circuitry at each of the pixels then selects the closest available phase level to the
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`ideal value. For example if it is desired to route into the m’th diffraction order with a
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`grating period Ω the ideal phase at position u on the SLM 81 is 2pi.mu/Ω. Therefore,
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`approximately, the phase goes linearly from zero up to 2pi over a distance Ω/m after
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`which it falls back to zero, see FIG. 8a."); 14:21-24 ("The hologram pattern
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`associated with any general non-linear phase modulation exp jφ(u)=exp j
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`(φ0(u)+φ1(u)+φ3(u) . . . ) where j is the complex operator, can be considered as a
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`product."); 14:51-55 ("Therefore the routing phase modulation results in a set of
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`equally spaced diffraction orders. The greater the number of available phase levels
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`the closer the actual phase modulation to the ideal value and the stronger the selected
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`diffraction order used for routing.”). While the full scope of this term is not clear in
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`the specification, and is context dependent in the industry, it is clear that the term
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`“hologram” in the ‘033 patent refers generally to modulation “data,” or “values,” or
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`“characteristics,” or “parameters,” or “levels” for a achieving a specific desired
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`modulation of incident light, and the proposed construction encompasses the
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`broadest ascertainable use of the term in the specification. See, e.g., Ex. 1001 at
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`19:48-51 (“In one embodiment, in the training stage, a set of initial starting values is
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`read in for application to the SLM 30 as hologram data, then light is applied at a
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`fibre and the result of varying the hologram is noted.”); 13:31-33 (“Having
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`established a desired phase modulation characteristic across the array so as to
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`achieve the desired control of said beam”); 13:37-39 (“Thus there is only a discrete
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`population of values of phase modulation for each pixel, depending on the number
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`of bits used to represent those states.”); 13:12-14 (“The processing circuitry 11
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`determines the parameters of the ramp depending on the required angle of
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`deflection of the beam 1,2.”); 13:40-56 (“To allow the pixels 13,14 of the SLM 11 to
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`display a suitable phase profile, the processing circuitry 11 carries out a level
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`selecting operation for each pixel. . . . Then for each pixel, the available level
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`nearest the desired modulation is ascertained and used to provide the actual pixel
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`voltage.”).
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`The broadest reasonable interpretation of the remaining terms of the
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`challenged claims should be presumed to take on their ordinary and customary
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`meanings for purposes of the IPR.
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
`The level of ordinary skill in the art is evidenced by the references. See In re
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`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). A person of ordinary skill in
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`the art (“PHOSITA”) for this patent would have at least a Ph.D., or equivalent
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`experience, in optics, physics, electrical engineering, or a related field, including at
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`least three years of experience designing, constructing, and/or testing optical
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`systems. Ex. 1003 (Hall Decl.) at ¶¶ 11-12. For purposes of this petition, Finisar
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`relies on the September 3, 2001 priority date listed on the face of the ’033 patent as
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`the latest date relevant for the person of ordinary skill in the art analysis.3
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`VII. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Under 37 C.F.R §§ 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner challenges
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`claims 1, 29, 60, 63 66, 71-73, 76, and 91 of the ’033 patent. Petitioners request this
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`relief in view of the following references:
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`3 Finisar reserves the right to contest this date in this proceeding and in the
`companion district court case, Thomas Swan & Co. Ltd. v. Finisar Corp., No. 2:13-
`cv-178 (E.D. Texas), for any alleged conception date that Thomas Swan should
`submit during this proceeding, whether earlier or later than the filing of the U.K.
`application in September 2001.
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`Exhibit
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`Description
`
`Ex. 1005 “Free Space Switching for Optical Fibre
`Networks,” Stephen Thomas Warr
`(“Warr Thesis”)
`Ex. 1006 “Dynamic Holography Using
`Ferroelectric Liquid Crystal on Silicon
`Spatial Light Modulators,” Kim Leong
`Tan (“Tan Thesis”)
`Ex. 1007 “Dynamic Holograms for Wavelength
`Division Multiplexing,” Michael Charles
`Parker (“Parker Thesis”)
`Ex. 1008 U.S. Patent Application No.
`2001/0050787 (“Crossland 787”)
`
`
`
`Publication or
`Filing Date
`July 1996
`
`Type of
`Prior Art
`§ 102(b)
`
`February 1999
`
`§ 102(b)
`
`November
`1996
`
`December
`2001
`
`§ 102(b)
`
`§ 102(e)
`
`Each of the Parker Thesis, Warr Thesis and Tan Thesis are “printed
`
`publication” prior art under 35 U.S.C. § 102(b). Each of these three theses was
`
`indexed and shelved in the Cambridge University library by at least one year prior to
`
`the U.K. Priority Application date of September 3, 2001. See Hall Decl. at ¶ 50.
`
`A full list of exhibits relied on in this petition is included as Appendix A.
`
`A.
`
`Summary of Grounds for Challenge
`
`Inter partes review is requested on the grounds for unpatentability listed in the
`
`index below. In support of the proposed grounds for unpatentability, this Petition is
`
`accompanied by a declaration of a technical expert, Dr. Katie Hall, Ex. 1003, which
`
`explains what the art would have conveyed to a PHOSITA.
`
`Ground
`1
`
`35 USC
`§ 103
`
`Index of References
`Parker Thesis and Warr Thesis and
`Tan Thesis
`
`Claims
`1, 2, 4, 5, 17-19, 22-
`30, 56, 58, 60-61, 63-
`68, 70-74, 76, 78, 89-
`
`16
`
`
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`Inter Partes Review of USPN 8,335,033
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`2
`
`§ 103
`
`
`
`Parker Thesis and Warr Thesis and
`Tan Thesis and Crossland 787
`
`90
`31, 62, 75, 91
`
`As cited in the context of specific obviousness grounds of unpatentability, and
`
`as supported by Dr. Hall, the petitioned claims are rendered obvious by the art cited
`
`in the grounds of unpatenability described above. In the attached declaration, Dr.
`
`Hall provides a thorough discussion of the state of the art at the time of this alleged
`
`“invention.” Her declaration makes it clear that all the elements of all the challenged
`
`claims lack invention, not only because they had already been done, but also because
`
`they were obvious to try. Ex. 1003.
`
`B. Ground 1: Claims 1, 29, 60, 63 66, 71-73, 76 are rendered obvious
`by the combination of Parker Thesis and Warr Thesis and Tan
`Thesis
`
`The combination of Parker Thesis and Warr Thesis renders claims 1, 29, 60,
`
`63 66, 71-73, 76 obvious. Every element of each of these claims is either disclosed
`
`or would be an obvious variant on the teachings of Parker Thesis, Warr Thesis, and
`
`Tan Thesis. The subject matter, history, and equipment used in these three
`
`references evidence a clear motivation to combine.
`
`The Parker Thesis is a prior art reference to the ’033 patent under § 102(b).
`
`Parker Thesis is a Ph.D. dissertation submitted by Michael Parker at the conclusion
`
`of his studies at the University of Cambridge, in November 1996. Dr. Parker worked
`
`in Prof. Crossland’s group at Cambridge under the supervision of Dr. Robert Mears.
`
`17
`
`
`
`Inter Partes Review of USPN 8,335,033
`
`Parker Thesis at iii. The thesis discusses the use of a polarization insensitive
`
`ferroelectric liquid crystal SLM to make a tunable wavelength filter, a tunable fibre
`
`laser, and a design for a space-wavelength switch. The design for the space-
`
`wavelength switch is the basic optical geometry found in the independent claims of
`
`the ’033 patent. The geometry for this device is depicted in the dissertation as
`
`follows:
`
`
`The Warr Thesis is a prior art reference to the ’033 patent under § 102(b).
`
`The Warr Thesis is a Ph.D. dissertation by Steven Warr, a student who worked in
`
`Prof. Crossland’s group at Cambridge under the supervision of Dr. Robert Mears.
`
`Warr Thesis at x. The key disclosure in Chapter 5 of the Warr Thesis is “a single-
`
`mode FLC-SLM crossbar architecture for interconnecting large arrays of input and
`
`output fibres. An array of dynamic holograms can be used to achieve an arbitrary
`
`routeing pattern between N inputs and M outputs, and two methods of re-entering the
`
`fibre network are considered.” Warr Thesis at 4.
`
`18
`
`
`
`Inter Partes Review of USPN 8,335,033
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`The Tan Thesis is a prior art reference to the ’033 patent under § 102(b). The
`
`Tan Thesis is a Ph.D. dissertation by Kim L. Tan, a student who worked in Prof.
`
`Crossland’s group at Cambridge under the supervision of Dr. Robert Mears. Tan
`
`Thesis at iv. Dr. Tan’s work focused on the performance characteristics of pixelated
`
`liquid crystal spatial light modulators, “including theoretical analysis, numerical
`
`simulations with realistic examples and the design, fabrication, characterization and
`
`experimentation [on] demonstrator devices…” Tan Thesis at 3.
`
`A PHOSITA would have been motivated to combine the Parker Thesis with
`
`the Warr Thesis and the Tan Thesis for a number of independent reasons.
`
`Fundamentally, the three theses cover nearly identical subject matter. Each discloses
`
`the use of an adaptive optical processor that uses a conventional holographic liquid
`
`crystal spatial light modulator to switch, route, filter, and analyze light signals.
`
`Parker Thesis at 2, 8-9, 11-12, 95-97; Warr Thesis at 2-4, 36, 42, 83-84, 95; Tan
`
`Thesis at iii, 2, 6. As a result, any element, technique or other solution implemented
`
`by the optical processors described in one thesis would yield the same predictable
`
`result if transplanted to the optical processors described in one of the other theses.
`
`For example, each thesis describes techniques that were well known to a PHOSITA
`
`for designing holograms, minimizing crosstalk, and dealing with device
`
`misalignment. Parker Thesis at 24-46, 98; Warr Thesis at 43-44, 58, 118; Tan Thesis
`
`at iii, 41, 42-64, Because of the similarity between the devices disclosed in each
`
`19
`
`
`
`thesis, each of these well-known techniques could be applied to the devices in any of
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`Inter Partes Review of USPN 8,335,033
`
`the other theses.
`
`Similarly, in the theses’ common field of endeavor there are a finite number of
`
`conventional and predictable solutions to the problems that the
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