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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`FINISAR CORP.
`Petitioner
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`v.
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`THOMAS SWAN & CO. LTD.
`Patent Owner
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`Case IPR2014-00465
`Patent 8,335,033
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`PRELIMINARY RESPONSE BY PATENT OWNER UNDER 37 C.F.R. § 42.107
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`

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`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
`
`TABLE OF CONTENTS
`
`I.  Overview ......................................................................................................................... 1 
`II.  Related Proceedings ....................................................................................................... 4 
`III.  The Intrinsic Record of the ‘033 Patent ........................................................................... 4 
`A. 
`Summary of an Exemplary Embodiment from the ‘033 Patent ................................. 4 
`B. 
`The challenged claims recite optical processors and methods in which multiple
`holograms are used on an SLM to control directions at which light emerges from the SLM
`
` ................................................................................................................................... 8 
`C. 
`The challenged claims further recite optical processors and methods in which light
`from a common point on a dispersion device is spatially distributed over at least part of an
`SLM ................................................................................................................................. 11 
`D.  Challenged claims 29 and 63 further recite optical processors and methods that
`expressly recite that the focusing device is the element that focuses dispersed light from
`the dispersion device onto the SLM .................................................................................. 12 
`E. 
`The prosecution histories of the ‘033 patent and the related ’395 patent indicate that
`Parker does not disclose an optical processor in which light from a common point on a
`dispersion device is spatially distributed over multiple holograms displayed on an SLM . 13 
`IV. 
`Claim Construction .................................................................................................. 16 
`V.  The Petition Does Not Establish a Reasonable Likelihood that any of the Challenged
`Claims are Unpatentable as Obvious ................................................................................... 21 
`A. 
`The cited prior art does not disclose optical processors or methods in which light
`from a common point on a dispersion device is spatially distributed over multiple
`holograms displayed on an SLM....................................................................................... 21 
`1. 
`Parker purposefully uses a single hologram to process light from a dispersion
`device ............................................................................................................................ 21 
`i. 
`Additional portions of Parker confirm the display of a single hologram to
`process dispersed light incident on the SLM ........................................................... 24 
`ii.  Dr. Hall’s testimony with respect to Figure 6.1 in Parker is not credible .......... 32 
`The Petition fails to explain how or why a PHOSITA would have modified Parker
`2. 
`based on Warr and/or Tan to provide the material missing from Parker ...................... 35 
`i. 
`The Petition’s reliance on Warr is insufficient .................................................. 35 
`ii.  The Petition’s reliance on Tan is insufficient .................................................... 40 
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`Case No.: IPR2014-00461
`Attorney Docket: 28733-0003IP1
`B. 
`The Petition fails to identify where the cited prior art discloses optical processors or
`methods in which dispersed light from a dispersion device is focused onto an SLM by a
`focusing device ................................................................................................................. 43 
`C. 
`The Petition’s Obviousness Analysis is Insufficient to Institute Trial ....................... 47 
`D. 
`Even Finisar touts the Non-obviousness of the Claimed Invention ......................... 52 
`VI. 
`Petitioner has not Properly Established that any of the Parker, Warr, and Tan
`Theses are Prior Art .............................................................................................................. 56 
`VII. 
`Conclusion ............................................................................................................... 59 
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`ii
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`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
`TABLE OF AUTHORITIES
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`Case Law
`
`Alexsam, Inc. v. IDT Corp., 715 F.3d 1336, 1347-48 (Fed. Cir. 2013) ................................. 50
`
`Apple Inc. v. Int’l Trade Comm’n, 725 F.3d 1356, 1366 (Fed. Cir. 2013) ............................. 55
`
`Graham v. John Deere Co., 383 U.S. 1, 17 (1966) ........................................................ 48, 55
`
`In re Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989) ............................................................ 58
`
`In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) ................................................................. 51
`
`In re Lister, 583 F.3d 1307, 1311-12 (Fed. Cir. 2009) .......................................................... 56
`
`In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) ........................................................... 35
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1366 (Fed. Cir. 2012) ...... 50
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ...................................................... 48
`
`Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325–26 (Fed. Cir. 2003) .................. 17
`
`Power-One Inc., v. Artesyn Techs., Inc., 599 F.3d 1343, 1351 (Fed. Cir. 2010) ................. 50
`
`Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092
`(Fed. Cir. 1997) ........................................................................... 34, 37, 39, 43, 45, 46
`
`
`Statutes
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`35 U.S.C. § 312(a)(3) ........................................................................................................... 47
`35 U.S.C. § 314(a) .......................................................................................................... 47, 56
`37 C.F.R. § 42.104(b)(4) ....................................................................................................... 47
`37 C.F.R. § 42.20(c) ....................................................................................................... 47, 56
`37 C.F.R. § 42.204(b) ..................................................................................................... 47, 56
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`Case No.: IPR2014-00461
`Attorney Docket: 28733-0003IP1
`37 C.F.R. § 42.22(a)(2) ................................................................................................... 47, 56
`37 CFR § 1.68 ...................................................................................................................... 57
`37 CFR § 42.2 ...................................................................................................................... 57
`37 CFR § 42.53(a) ................................................................................................................ 57
`37 CFR § 42.62(a) ................................................................................................................ 57
`37 CFR § 42.65(a) .................................................................................. 34, 37, 39, 43, 45, 46
`Fed. R. Evid. 701 .................................................................................................................. 57
`Fed. R. Evid. 801(c) .............................................................................................................. 57
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`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
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`EXHIBIT LIST
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`TS 2001
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`TS 2002
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`“WDM channel management using programmable holographic elements,” IEE
`Colloquium on Multiwavelength Optical Networks: Devices, Systems and
`Network Implementations (Ref. No. 1998/296), by Mears et al. (“Mears”)
`
`“Why Use LCoS in a Wavelength Selective Switch?” reprinted from
`http://www.finisar.com/blogs/lightspeed/why-use-lcos-in-a-wavelength-
`selective-switch/, dated June 6, 2014, 8:51:36 AM
`
`TS 2003
`
`U.S. Patent No. 7,664,395 (“the ‘395 Patent”)
`
`TS 2004
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`Prosecution History for U.S. Patent No. 7,664,395
`
`TS 2005
`
`TS 2006
`
`B. Bahadur, Liquid Crystals - Applications and Uses (Vol. 3), World Scientific
`(1996) (“Bahadur”)
`
`Webster’s New World Dictionary of American English, 3rd College Edition
`(1993)
`
`TS 2007
`
`Palmer, “Diffraction Grating Handbook” (4th Edition) (2000)
`
`TS 2008
`
`TS 2009
`
`
`
`
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`Joint Claim Construction and Prehearing Statement, Thomas Swan & Co. Ltd.
`V. Finisar Corp., 2:13-cv-178 (E.D. Texas).
`
`Fiber Optics Standard Dictionary, 3rd Edition (1997)
`
`v
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`

`

`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
`Patent Owner Thomas Swan & Co. Ltd. (“Patent Owner”) submits this Preliminary
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`Response to the Petition seeking inter partes review (“IPR”) in this matter. This Preliminary
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`Response to the Petition is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107 because it
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`is being filed within three months of the March 6, 2014 mailing date of the Notice according
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`the Petition a filing date of February 26, 2014. A trial should not be instituted because the
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`Petition does not establish a reasonable likelihood of Petitioner prevailing with respect to
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`any challenged claim of the U.S. Patent No. 8,335,033 (hereinafter “the ’033 patent”) as
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`required by 37 CFR § 42.108(c).
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`I.
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`Overview
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`The ’033 patent contains 91 claims, of which claims 1, 60, 63, 66, 71-73, 76, and 91
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`are independent. Independent claim 1 is directed to an optical processor that includes a
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`reflective spatial light modulator (SLM), a dispersion device, and a focusing device, and
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`configured so that controllable elements of the SLM display different holograms at chosen
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`locations where light is incident to control directions at which light from the respective
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`locations emerges. The Petition (“Pet.”) proposes a single ground of unpatentability to
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`address independent claims 1, 60, 63, 66, 71-73, and 76, and dependent claim 29,
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`contending that these claims are obvious under Section 103 in view of: (1) Parker Thesis
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`(Ex. 1007) (“Parker”), Warr Thesis (Ex. 1005) (“Warr”), and Tan Thesis (Ex. 1006)(“Tan”).
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`(Pet. 17-21.) The Petition further proposes a single ground of unpatentability to address
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`independent claim 91, contending that this claim is obvious under Section 103 in view of
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`1
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`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
`Parker, Warr, Tan, and U.S. Patent App. Pub. No. 2001/0050787 (Ex. 1008) (“Crossland”).
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`(Pet. 54-56.) The Petition fails to establish a prima facie case of obviousness for any of the
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`foregoing claims.
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`The Petition does not identify the differences between the prior art and the
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`challenged claims, nor explain why it would have been obvious at the time of the invention
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`to arrange different elements from the prior art as set forth in the claims. Remarkably, the
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`Petition does not even explain that the specific embodiment from Parker it repeatedly
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`references is the same as the one that appeared in an article by Mears (co-authored by
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`Parker) that was reviewed by the Examiner during prosecution. (TS 2001) (“Mears.”)
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`Moreover, the same article was expressly distinguished during prosecution of related
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`predecessor U.S. Patent No. 7,664,395 (the ‘395 patent).
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`As explained in the prosecution history of the ‘395 patent, Mears, and by extension
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`Parker, does not teach optical processors or methods in which light from a common point on
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`a dispersion device is spatially distributed over multiple holograms of an SLM to generate
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`beams emerging from the SLM with controllable directions, as claimed and described in the
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`‘033 patent. To the contrary, the components in the wavelength filter of Mears and Parker
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`are purposefully arranged so that all of the wavelength channels are processed by the same
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`hologram.
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`Petitioner’s reliance on Warr and Tan in its obviousness argument demonstrates that
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`Parker alone is insufficient. Yet, the Petition provides no specific, articulated reasoning with
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`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
`rational underpinning to explain how or why Parker would have been modified by Warr and
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`Tan. To the contrary, neither Warr, nor Tan, discloses an SLM arrangement in which light
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`from a common point on a dispersion device is spatially distributed over multiple holograms
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`displayed on an SLM. Moreover, although these references may generally describe
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`focusing elements and gratings among other basic building blocks for optical systems, they
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`provide no guidance as to why or how to modify Parker to achieve the arrangement of
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`elements and functionality recited in the independent claims.
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`The Petition’s obviousness argument rests on its unsupported position that, because
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`Messrs. Parker, Warr, and Tan may have worked in a common research group, any
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`element disclosed in any one of their multi-hundred page theses can be combined with any
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`other element disclosed in the theses to meet the limitations of the claim. (Pet. 19-21.)
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`Even if this far-reaching proposition were legally proper, which it is not, the Petition fails to
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`show why or how it would have been obvious to arrange the disparate elements (e.g., SLMs,
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`dispersion devices, and focusing elements) from the different theses to meet the limitations
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`as set forth in the challenged claims. To the contrary, even Petitioner (when crediting the
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`work of its own Chief Technology Officer from 2003) describes arranging such optical
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`building blocks to achieve the optical routing claimed in the ‘033 patent as an “intuitive leap,”
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`and that, up until that time, a wavelength selective switch (“WSS”) did not exist. (TS 2002.)
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`In sum, the Petition does not show a reasonable likelihood of prevailing with respect
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`to any of the challenged claims, and its Petition for IPR should be denied.
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`3
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`

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`II.
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`Related Proceedings
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`The present Petition for IPR is one of four related Petitions that the Petitioner filed.
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`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
`
`The other three Petitions are:
`
`1.
`
`2.
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`3.
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`IPR2014-00460 (U.S. Patent No. 7,145,710);
`
`IPR2014-00461 (U.S. Patent No. 7,664,395); and
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`IPR2013-00462 (U.S. Patent No. 8,089,683).
`
`The four patents are based on a common specification and all claim priority to Great
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`Britain Application No. 0121308.1, filed September 3, 2001. The four patents are being
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`asserted in Thomas Swan & Co. v. Finisar Corp., No. 2:13-cv-178 (E.D. Texas). In addition,
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`related U.S. patent application 11/515,389 has issued as U.S. Patent No. 7,612,930, and
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`related U.S. patent application 13/677,926, filed November 15, 2012, is presently pending
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`before the Office.
`
`III.
`
`The Intrinsic Record of the ‘033 Patent
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`A. Summary of an Exemplary Embodiment from the ‘033 Patent
`
`The ’033 patent discloses an optical device that is configured to perform wavelength
`
`routing and selection. (Ex. 1001, 42:8-11.) Referring to Figure 28 (reproduced and
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`annotated below), the optical module includes a reflective Spatial Light Modulator (SLM)
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`having a two dimensional array of pixels. (Id., 11:26-31 and 42:12-19.) One
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`implementation of an SLM is based on liquid crystal materials, where each pixel of the SLM
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`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
`is controlled by an electrode in the pixel electrode array 230 as shown in Figure 1
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`(reproduced below). (Id., 11:58–12:56.)
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`The two dimensional array of pixels may be separated into multiple groups of pixels,
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`each group capable of displaying a different hologram. (Id., 42:20-30.) For example,
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`referring to Figure 1, circuitry may be constructed to connect to the pixel electrodes 230
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`such that different selected voltages are applied between respective pixel electrodes 230
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`and a common electrode layer 224. (Id., 11:58-12:5.) An applied voltage between one pixel
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`electrode and the common electrode layer 224 creates a local electric field passing through
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`a localized portion of the liquid crystal layer 222, and modifies the characteristics of the
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`localized portion of the liquid crystal layer 222. (Id.)
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`By applying different selected voltages between respective pixel electrodes 230 of a
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`group and the common electrode layer 224, a hologram may be displayed on each group.
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`(Id., 12:57-13:3.) Because the pixel electrodes are independent of one another, a hologram
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`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
`displayed on one group of pixels is independent of a hologram displayed on another group
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`of pixels. (Id., 42:20-30.)
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`Referring to Figure 28 above, the optical device includes an input port 611 and
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`multiple output ports 612, 613, and 614. (Id., 42:8-33.) The input port 611 is configured to
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`receive a light beam having an ensemble of different channels (“a multiwavelength input”),
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`where each channel corresponds to a different wavelength. (Id., 42:8-11 and 38:31-33.)
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`The light beam having the ensemble of different channels is incident on a dispersion device
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`620 that is constructed to disperse light beams of different wavelengths (or different
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`frequencies) in different directions. (Id., 42:20-30.) For example, in Figure 28, the
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`dispersion device 620 spreads the incoming light beam 601 into three single wavelength
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`emergent beams 605, 606, and 607 corresponding to different channels of the
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`multiwavelength input beam. (Id.)
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`The dispersion device 620 is further arranged such that the dispersed wavelength
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`beams 605, 606, and 607 are incident upon respective different groups of the pixels of the
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`SLM. (Id.) For example, the ’033 patent discloses an embodiment in which the dispersion
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`device 620 is placed before lens 621, such that the lens 621 refracts wavelength beams 605,
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`606, and 607 into the dispersed wavelength beams 615, 616, and 617, respectively. (Id.)
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`The lens 621 is also arranged to focus each of the wavelength beams 615, 616, and 617 to
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`a respective group of pixels 623, 624, and 625 on the SLM 622. (Id.) The SLM receives the
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`optical signals of the multiplex as wavelength beams 615, 616, and 617. In other words,
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`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
`referring to Figure 28 above, light from a common point on dispersion device 620 – the point
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`where incoming beam 601 is incident on dispersion device 620 – is distributed over at least
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`a part of the SLM through the dispersive action of device 620 and the focusing action of lens
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`621.
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`Moreover, the SLM logically separates these optical signals by applying different
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`holograms to different wavelength beams. (Id.) Because each phase-modulating element
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`is independently controlled by the circuitry, the circuitry can display a different hologram on
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`each group of phase-modulating elements so that the array of phase-modulating elements
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`can independently process each corresponding group of optical signals. (Id.,12:57-13:3.)
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`Each hologram provides a different controllable deviation from specular reflection for the
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`incident wavelength beam to thereby control the angle at which each beam reflects from
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`SLM 622 as reflected beams 635, 636, and 637, after which each beam returns to lens 621
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`and grating 620. (Id., 42:26-30 and 11:26-38.) A controllable deviation from specular
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`reflection is a controllable deviation from light reflected in a mirror-like direction. As a result,
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`the hologram on which the respective beams 615, 616, and 617 lands determines to which
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`output port, 612, 613, 614, the corresponding wavelength channel is directed. (Id., 42:34-
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`48.)
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`As discussed above in connection with Figure 28, the SLM is positioned after lens
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`621 (a focusing device), which is in turn positioned between dispersion device 620 and the
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`SLM. Accordingly, lens 621 receives light that has been dispersed by dispersion device 620.
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`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
`(Id., 42:12:30.) The dispersed light is represented in Figure 28, for example, by emergent
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`beams 605, 606, and 607. The lens focuses the dispersed light (as beams 615, 616, and
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`617) so that the focused light is incident on the SLM. (Id.) The relative position of lens 621
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`with respect to other optical components is important — if it is not positioned between the
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`dispersion device and the SLM, then it cannot focus the dispersed beams from the
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`dispersion device onto the SLM.
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`To summarize, each wavelength channel from a multiwavelength input is dispersed
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`by dispersion device 620 and then focused by lens 621 onto a respective group of pixels on
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`the SLM. Holograms displayed at the respective groups of pixels on the SLM controllably
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`and independently process each wavelength channel (e.g., route to the desired output port).
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`Accordingly, the described optical switch can route, add/drop, filter, and attenuate multiple
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`wavelengths independently using holograms displayed on the SLM. (Id., 42:34-61.)
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`B. The challenged claims recite optical processors and methods in which
`multiple holograms are used on an SLM to control directions at which light
`emerges from the SLM
`
`Claim 1 recites (emphasis added):
`
`
`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
`
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`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
`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.
`
`Accordingly, consistent with the embodiment from the ‘033 patent described above, claim 1
`
`is directed to an optical processor in which: 1) incoming light (e.g., light beam 601) is
`
`incident on a dispersion device (such as dispersion device 620); 2) light from a common
`
`point on the dispersion device (e.g., the point where beam 601 is incident on dispersion
`
`device 620) is spatially distributed over part of the reflective SLM (e.g., over pixel groups
`
`623, 624, and 625, which are at different locations on the SLM); and 3) the controllable
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`elements display different holograms (e.g., each one of pixel groups 623, 624, and 625
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`displays a different hologram) to control the respective directions of emerging beams 635,
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`636, and 637. Claim 29 depends from claim 1, and therefore includes the same features
`
`discussed above. In addition, claim 29 requires that the focusing device spatially distributes
`
`the dispersed light from the dispersion device onto the SLM. The remaining challenged
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`claims (independent claims 60, 63, 66, 71-73, 76, and 91) similarly recite controllable
`
`elements that display different holograms on the SLM.
`
`Independent claims 60, 63, 66, 71, 73, and 91 each recite methods. Claim 60 covers
`
`methods of operating an optical processor “having a reflective SLM having an array of
`
`controllable elements,” where “the SLM is configured to display holograms at respective
`
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`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
`locations of incidence of … light beams.” As is evident from the use of the plural
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`“holograms” in claim 60 and the discussion of Figure 28 above, the methods of claim 60
`
`require that multiple holograms are displayed on the SLM. Claims 73 and 91 each similarly
`
`recite methods of operating an optical processor “having a reflective SLM having a two-
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`dimensional array of controllable elements,” where the “SLM is configured to display
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`holograms at respective locations of incidence of said light beams to provide emergent
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`beams having controllable directions.”
`
`Claim 63 covers methods of controlling input light that include making focused light
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`incident on a reflective SLM that “has an array of controllable elements,” and “displaying
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`respective holograms at respective locations of incidence of said light” on the SLM “to
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`provide emergent light whose direction is controlled by the respective holograms.” Claims
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`66 and 71 each recite methods of using “a reflective SLM, a dispersion device and a
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`focussing device,” where the SLM “has an array of controllable elements,” the methods
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`including “causing the controllable elements to display different holograms at chosen
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`locations whereon light is incident, whereby light from said locations emerges in controllable
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`directions.”
`
`Independent claims 72 and 76 each recite optical processors featuring a reflective
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`SLM, a dispersion device, and a focusing device. The optical processors of claim 72
`
`include a “SLM ha[ving] an array of controllable elements,” where “the controllable elements
`
`display different holograms at chosen locations” of the SLM. The optical processors of
`
`
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`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
`claim 76 include a “SLM ha[ving] a two-dimensional array of controllable elements,” where
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`“the controllable elements display different holograms using two-dimensional groups of
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`controllable elements selected from said two-dimensional array at chosen locations.”
`
`C. The challenged claims further recite optical processors and methods in
`which light from a common point on a dispersion device is spatially
`distributed over at least part of an SLM
`
`
`As shown in claim 1 reproduced above, in the optical processors of claim 1, “light
`
`from a common point on the dispersion device is spatially distributed over at least part of the
`
`SLM.” This feature is consistent with the description of Figure 28 above, in which light from
`
`the point at which beam 601 is incident on dispersion device 620 is spatially distributed over
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`the portion of the SLM corresponding to pixel groups 623, 624, and 625. Claim 29 features
`
`the same element, as it depends from claim 1. Claims 72 and 76 also recite optical
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`processors in which “light from a common point on the dispersion device is spatially
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`distributed over the SLM.”
`
`In the methods of operating an optical processor covered by each of claims 60, 73,
`
`and 91, “light beams from a common point on the dispersion device are spatially separated
`
`when incident upon the SLM.” Similarly, in the methods covered by each of claims 66, and
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`71, “light from a common point on the dispersion device is spatially distributed over the
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`reflective SLM.”
`
`Moreover, as described supra, the challenged claims require displaying different
`
`holograms at the locations where this light is incident on the SLM to control the directions at
`
`
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`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
`which light emerges from these locations of the SLM. Accordingly, in all of the challenged
`
`claims, light that is dispersed by the dispersion device is spatially distributed over at least a
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`part of the SLM, and it is this dispersed and spatially distributed light that is incident on the
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`different holograms displayed at the chosen locations of the SLM. As a result, the claimed
`
`optical processor can independently process dispersed light incident on the SLM at different
`
`locations using corresponding holograms.
`
`D. Challenged claims 29 and 63 further recite optical processors and methods
`that expressly recite that the focusing device is the element that focuses
`dispersed light from the dispersion device onto the SLM
`
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`The optical processors covered by dependent claim 29 include a focusing device
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`and are configured so that “using the focusing device, light from a common point on the
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`dispersion device is spatially distributed by wavelength across at least one of the two-
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`dimensional groups” of “controllable elements … formed at chosen locations of the reflective
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`SLM” (emphasis added). Accordingly, claim 29 expressly requires that the focusing device
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`spatially distributes the dispersed light from dispersion device onto the SLM. Similarly, the
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`methods covered by independent claim 63 expressly include the steps of “focussing [sic], by
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`a focussing [sic] device, angularly dispersed light from the dispersion device to provide
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`focused [sic] light,” and “making said focused [sic] light incident upon a reflective SLM”
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`(emphasis added). In other words, both claims expressly require the claimed focusing
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`device to be optically between the dispersion device and the SLM.
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`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
`This feature is consistent with the description of Figure 28 above, where lens 621
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`focuses the dispersed light (represented for example by beams 605, 606, and 607) onto the
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`SLM. Because the light (e.g., beam 601) is incident on dispersion device 620 before the
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`light reaches lens 621, the light is dispersed by the action of dispersion device 620 when it
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`reaches lens 621.
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`E. The prosecution histories of the ‘033 patent and the related ’395 patent
`indicate that Parker does not disclose an optical processor in which light
`from a common point on a dispersion device is spatially distributed over
`multiple holograms displayed on an SLM
`
`
`In the course of determining that the challenged claims of the ‘033 patent were
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`allowable, the Examiner considered the reference “WDM CHANNEL MANAGEMENT
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`USING PROGRAMMABLE HOLOGRAPHIC ELEMENTS” by R.J. Mears, A.D. Cohen, and
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`M.C. Parker (TS 2001) (“Mears”), which had been identified in an Information Disclosure
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`Form submitted on February 23, 2010. (Ex. 1002, pp. 150, 373.) As shown below, Figure 7
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`of Mears is identical to Figure 6.1 of Parker relied upon in the Petition. (Pet., pp. 18 and 21;
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`TS 2001, p. 5.) Both figures show the same “3x3 space-wavelength switch.” Indeed,
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`Parker is one of the co-authors of Mears. Evidently the Examiner concluded that the
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`limitations of the challenged claims of the ‘033 patent distinguished the “3x3 space-
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`wavelength switch” described in Mears, and by extension, the same “3x3 space-wavelength
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`switch” in Figure 6.1 of Parker.
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`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
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`
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`Moreover, the reasons why the claims in the ‘033 patent distinguish the “3x3 space-
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`wavelength switch” in Mears/Parker were expressly set forth during prosecution of the
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`related application that issued as U.S. Patent No. 7,664,395 (“the ‘395 patent”). Specifically,
`
`the application that led to the ‘033 patent was filed as a continuation of U.S. Pat. App. No.
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`11/978,258, which in turn was a continuation of U.S. Pat. App. No. 11/515,389, which was a
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`divisional application of U.S. Pat. App. No. 10/487,810, now U.S. Patent No. 7,145,710. (Ex.
`
`1001, cover.) The application that issued as the ‘395 patent was also a divisional U.S. Pat.
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`App. No. 10/487,810. (TS 2003, cover page.)
`
`In the non-final Office Action issued on May 13, 2008, in the application that led to
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`the ‘395 patent, the Examiner rejected certain claims of the application as anticipated by the
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`“3x3 space-wavelength switch” in Figure 7 of Mears. (TS 2004, pp. 207-209.) The
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`Examiner said:
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`[Mears] discloses an optical routing module having at least one input (input
`fiber array of Fig. 7) and at least two outputs (output fiber array of Fig. 7) and
`operable to select between the outputs, the module comprising a two
`
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`Case No.: IPR2014-00465
`Attorney Docket: 28733-0005IP1
`dimensional SLM (the pixellated SLM of Fig. 6) having an array of pixels, with
`circuitry constructed and arranged to display holograms on the pixels to route
`beams of different frequency to respective outputs.
`(Id., pp. 207-08.)
`
`In a response filed on September 18, 2008, the Applicant explained critical
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`differences between the claims in the ‘395 patent application and the Mears/Parker “3x3
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`space-wavelength switch”:
`
`In the present invention as now claimed, the wavelengths of the input
`beam are dispersed by the dispersion device such that beams of light of
`different frequencies are incident upon respective different groups of the
`pixels of the two-d