Trials@uspto.gov
`571-272-7822
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`Paper: 9
`Entered: August 21, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`FINISAR CORP.,
`Petitioner,
`
`v.
`
`THOMAS SWAN & CO. LTD.,
`Patent Owner.
`____________
`
`Case IPR2014-00465
`Patent 8,335,033 B2
`
`____________
`
`
`Before SALLY C. MEDLEY, MICHELLE R. OSINSKI, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`Paper: 9
`Entered: August 21, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`FINISAR CORP.,
`Petitioner,
`
`v.
`
`THOMAS SWAN & CO. LTD.,
`Patent Owner.
`____________
`
`Case IPR2014-00465
`Patent 8,335,033 B2
`
`____________
`
`
`Before SALLY C. MEDLEY, MICHELLE R. OSINSKI, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2014-00465
`Patent 8,335,033 B2
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`
`
`
`INTRODUCTION
`
`I.
`
`
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`Finisar Corp. (“Petitioner”) filed a corrected Petition (Paper 5, “Pet.”)
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`requesting an inter partes review of claims 1, 2, 4, 5, 17–19, 22–31, 56, 58,
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`60–68, 70–76, 78, and 89–91 of U.S. Patent No. 8,335,033 B2 (Ex. 1001,
`
`“the ’033 patent”). Thomas Swan & Co. Ltd. (“Patent Owner”) filed a
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`Preliminary Response (Paper 8, “Prelim. Resp.”). We have jurisdiction
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`under 35 U.S.C. § 314, which provides that an inter partes review may not
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`be instituted “unless . . . there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the
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`petition.” 35 U.S.C. § 314(a).
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`Upon consideration of the Petition and Preliminary Response, we
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`determine that Petitioner has established a reasonable likelihood that it
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`would prevail in showing the unpatentability of claims 1, 29, 60, 66, 71–73,
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`76, and 91 of the ’033 patent. Accordingly, pursuant to 35 U.S.C. § 314, we
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`institute an inter partes review as to claims 1, 29, 60, 66, 71–73, 76, and 91
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`of the ’033 patent. We, however, do not institute an inter partes review of
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`claims 2, 4, 5, 17–19, 22–28, 30, 31, 56, 58, 61–65, 67, 68, 70, 74, 75, 78,
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`89, and 90 of the ’033 patent.
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`A.
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`Related Matters
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`The parties represent that the ’033 patent is the subject of a district
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`court proceeding in Thomas Swan & Co. v. Finisar Corp., No. 2:13-cv-178
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`(E.D. Tex.). Pet. 4; Patent Owner’s Mandatory Notices under 37
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`C.F.R. § 42.8, Paper 7, 2.
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`Petitioner filed additional Petitions for inter partes review of three
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`other patents related to the ’033 patent, namely U.S. Patent Nos. 7,145,710;
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`2
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`IPR2014-00465
`Patent 8,335,033 B2
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`7,664,395; and 8,089,683. Pet. 4; Prelim. Resp. 4; see IPR2014-00460
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`
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`(Paper 2, Paper 5); IPR2014-00461 (Paper 1, Paper 5); IPR2014-00462
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`(Paper 1, Paper 5).
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`B.
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`The ’033 Patent
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`The ’033 patent is directed to a method of operating an optical device
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`comprising a spatial light modulator (SLM). Ex. 1001, 2:53–56. Figure 28
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`of the ’033 patent is reproduced below.
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`Figure 28 of the ’033 patent illustrates
`wavelength routing and selection device 600.
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`As shown in Figure 28, wavelength routing and selection device 600
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`
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`receives input beam 601 through input port 611. Ex. 1001, 42:9–11.
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`Grating 620 separates input beam 601 into single wavelength emergent
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`beams 605, 606, and 607, each angularly offset by a different amount, and
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`incident on lens 621. Id. at 42:20–23. Lens 621 refracts single wavelength
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`emergent beams 605, 606, and 607 so that they emerge as mutually parallel
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`beams 615, 616, and 617. Id. at 42:23–24. Each of beams 615, 616, and
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`617 is incident upon respective group 623, 624, and 625 of pixels on SLM
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`622. Id. at 42:24–26.
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`Each of respective group 623, 624, and 625 of pixels on SLM 622
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`displays a respective hologram, which provides a different deviation from
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`the specular direction, resulting in reflected beams 635, 636 and 637. Id. at
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`42:26–29. Reflected beams 635, 636, and 637 are incident upon lens 621
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`and routed back to grating 620. Id. at 42:29–30.
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`C.
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`Illustrative Claim
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`
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`Claims 1, 60, 63, 66, 71–73, 76, and 91 are the independent claims
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`challenged by Petitioner. Claim 1 is illustrative and is reproduced below:
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`An optical processor having a reflective SLM, a
`1.
`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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`Ex. 1001, 60:5-14 (emphasis added).
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`4
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`D.
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`Prior Art Relied Upon
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`
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`
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`Stephen T. Warr, Free-Space Switching for Optical Fibre Networks
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`(July 1996) (Ph.D. dissertation, University of Cambridge) (on file with
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`Cambridge University Library) (“Warr Thesis,” Ex. 1005).
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`Kim L. Tan, Dynamic Holography Using Ferroelectric Liquid Crystal
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`on Silicon Spatial Light Modulators (Feb. 1999) (Ph.D. dissertation,
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`University of Cambridge) (on file with Cambridge University Library) (“Tan
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`Thesis,” Ex. 1006).
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`Michael C. Parker, Dynamic Holograms for Wavelength Division
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`Multiplexing (Nov. 1996) (Ph.D. dissertation, University of Cambridge) (on
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`file with Cambridge University Library) (“Parker Thesis,” Ex. 1007).
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`Crossland et al., US 2001/0050787 A1 (published Dec. 13, 2001)
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`(“Crossland,” Ex. 1008).
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`E.
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`Alleged Grounds of Unpatentability
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`The information presented in the Petition sets forth Petitioner’s
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`contentions of unpatentability of claims 1, 2, 4, 5, 17–19, 22–31, 56, 58, 60–
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`62, 63–68, 70–75, 76, 78, and 89–91 of the ’033 patent based on the
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`following specific grounds.
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`Claims
`Challenged
`1, 2, 4, 5, 17–19,
`22–30, 56, 58, 60, 61,
`63–68, 70–74, 76, 78,
`89, 90
`31, 62, 75, 91
`
`Basis
`
`References
`
`§ 103 Parker Thesis, Warr Thesis,
`and Tan Thesis
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`§ 103 Parker Thesis, Warr Thesis,
`Tan Thesis, and Crossland
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`II.
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`ANALYSIS
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`
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`A.
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`Claim Construction
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`We determine the meaning of certain claim terms for purposes of this
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`Decision. In an inter partes review, claim terms in an unexpired patent are
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`given their broadest reasonable construction in light of the patent
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`specification. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under the broadest
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`reasonable construction standard, claim terms are given their ordinary and
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`customary meaning, as would be understood by one of ordinary skill in the
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`art in the context of the entire disclosure. In re Translogic Tech., Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim
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`term must be set forth in the specification with reasonable clarity,
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`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
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`1994). In determining the proper construction of a claim term, we must be
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`careful not to read a particular embodiment appearing in the written
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`description into the claim if the claim language is broader than the
`
`embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
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`Dictionaries may be relied on so long as the dictionary definition does not
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`contradict a definition found in or ascertained by reading the patent
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`documents. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n.6
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`(Fed. Cir. 1996). We construe the terms below in accordance with these
`
`principles.
`
`1.
`
`“SLM” or “spatial light modulator”
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`The term “SLM” is recited in independent claims 1, 60, 63, 66, 71, 72,
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`73, 76, and 91. Petitioner asserts that “SLM” refers to “spatial light
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`6
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`modulator” and means “a polarisation-independent device that acts on light
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`
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`beam or beams incident on the device to provide emerging light beams,
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`which are controlled independently of one another.” Pet. 8–9. Patent Owner
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`agrees that “SLM” refers to “spatial light modulator,” but disagrees with
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`Petitioner’s construction. Prelim. Resp. 16. Patent Owner asserts that
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`“SLM” or “spatial light modulator” means “a device that modifies a property
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`of light as a function of time and position across it.” Id. at 17.
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`The specification of the ’033 patent refers to SLMs as spatial light
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`modulators. Ex. 1001, 11:49–50. In the context of the specification of the
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`’033 patent, therefore, “SLM” refers to “spatial light modulator.”
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`Petitioner asserts that the ’033 patent expressly disclaims any devices
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`that are not polarization insensitive/independent by stating, “[t]he invention
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`may be applied to other devices, provided they are capable of multiphase
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`operation and are at least somewhat polarisation independent at the
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`wavelengths of concern.” Pet. 9 (citing Ex. 1001, 12:45–47). Patent Owner
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`asserts that the specification of the ’033 patent does not limit SLM to a
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`particular structure. Prelim. Resp. 17 (citing Ex. 1001, 12:43–45) (“It is not
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`intended that any particular SLM structure is essential to the invention, the
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`above being only exemplary and illustrative.”) The citation on which
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`Petitioner relies provides an example of an SLM that is “somewhat”
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`polarization insensitive/independent (Ex. 1001, 12:47). The specification of
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`the ’033 patent does not limit the claimed invention to this example. We,
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`therefore, agree with Patent Owner that SLM is not limited to structures that
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`are polarization insensitive or independent.
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`To show how one of ordinary skill in the art would use the term
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`
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`“SLM,” Patent Owner cites to a few pages in a multi-volume book (Prelim.
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`Resp. 17), which describe uses of liquid crystals, such as liquid crystal
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`devices that are useful in parallel optical processing applications, and
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`presents exemplary prototypes, such as liquid crystal television devices. Ex.
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`2005, 4 (3 Liquid Crystals Applications and Uses 211 (Birendra Bahadur
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`ed., 1992) (“Liquid Crystals Applications and Uses”)). Liquid Crystals
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`Applications and Uses states “Spatial Light Modulators (SLMs),
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`dynamically changeable devices which modify the amplitude, phase, and/or
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`polarization of an optical wave front as a function of time and position
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`across it.” Id.
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`We turn to the specification of the ’033 patent, which describes that
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`integrated SLM 200 is “for modulating light 201 of a selected wavelength.”
`
`Ex. 1001, 11:58–59. The ’033 patent specification does not provide an
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`express definition of “modulating.” Modulation is defined in a technical
`
`dictionary as “the process of varying some characteristic of one signal (the
`
`carrier) in accordance with another signal (the message signal).” Hargrave’s
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`Communications Dictionary (2001), available at
`
`http://search.credoreference.com/content/entry/hargravecomms/modulation/
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`0 (June 19, 2014) (“Hargrave’s Dictionary”) (Ex. 3001). The ’033 patent
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`specification describes an example of modulation that is consistent with the
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`Hargrave’s Dictionary definition by stating, “[a]dvantageously, each phase
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`modulating element is responsive to a respective applied voltage to provide a
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`corresponding phase shift to emergent light.” Ex. 1001, 3:27–29. In the
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`context of the ’033 patent specification, each modulating element shifts or
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`modifies the light. Although the example in the ’033 patent specification
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`
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`describes phase modulation, no particular SLM structure is essential to the
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`invention (id. at 12:43–45).
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`Regarding Patent Owner’s contention that spatial light modulator
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`modifies light “as a function of time and position across it,” Patent Owner
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`does not explain sufficiently why Patent Owner’s construction is part, but
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`not all of the definition provided by Patent Owner’s cited extrinsic reference.
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`Patent Owner also does not explain sufficiently how the definition is
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`consistent with the ’033 patent specification.
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`We agree with Petitioner and Patent Owner that “SLM” refers to
`
`“spatial light modulator.” We agree with Patent Owner that Petitioner’s
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`construction is too narrow. We, however, decline to adopt in its entirety
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`Patent Owner’s construction, and construe “SLM” and “spatial light
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`modulator” in the context of the ’033 patent, as a device that modifies a
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`spatial property of light.
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`2.
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`“dispersion device”
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`The term “dispersion device” is recited in independent claims 1, 60,
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`63, 66, 71, 72, 73, 76, and 91. Petitioner asserts that “dispersion device”
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`means “a device that separates a light beam having different wavelengths
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`into its constituent spectral components based on wavelength.” Pet. 10.
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`Patent Owner disagrees and asserts that “dispersion device” means “a device
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`that spreads out a light beam into spectral components.” Prelim. Resp. 19.
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`Petitioner cites to the specification stating that grating 300 splits beam
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`301 “into separate beams 301a, 301b, 301c.” Pet. 10 (citing Ex. 1001,
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`38:33–36). Patent Owner contends that Petitioner’s assertion “reads out”
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`9
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`dispersion because dispersion is only one of several mechanisms for
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`
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`separating light into components. Prelim. Resp. 18. Patent Owner relies on
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`a dictionary and text book in support of its construction. Id. at 18–19 (citing
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`Ex. 2006, 6; Ex. 2007, 3).
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`The specification states, “[a]nalysis of the beams at the diffraction
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`grating in this architecture shows that the spot size required for a given
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`wavelength channel separation and beam clipping factor C at the hologram
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`depends on the grating dispersion.” Ex. 1001, 40:28–31 (emphasis added).1
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`The specification of the ’033 patent does not limit “dispersion device” to
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`devices that spread out a light beam.
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`For the reasons given above, we determine the broadest reasonable
`
`interpretation of “dispersion device,” in the context of the specification of
`
`the ’033 patent, is a device that separates a light beam into spectral
`
`components.
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`3.
`
`“focusing device”
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`The term “focusing device” is recited in independent claims 1, 60, 63,
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`66, 71, 72, 73, 76, and 91. Petitioner asserts that “focusing device” means
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`“an optical device used to focus beams of light, such as a lens, a mirror, or a
`
`combination of the two.” Pet. 10. Patent Owner disagrees and asserts that
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`“focusing device” means “a device that focuses light.” Prelim. Resp. 19.
`
`
`1 Patent Owner submitted a handbook that is consistent with the
`specification of the ’033 patent stating, “[d]ispersion is a measure of the
`separation (either angular or spatial) between diffracted light of different
`wavelengths.” Ex. 2007, 3 (Christopher Palmer, Diffraction Grating
`Handbook, 19 (2000)) (emphasis added).
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`We decline to read in the examples cited by Petitioner, namely a lens, a
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`mirror, or a combination of the two. Patent Owner’s construction is
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`consistent with the ’033 patent specification, which describes “an
`
`accommodation element,” such as a lens for “altering the focus of the light
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`beam.” Ex. 1001, 8:1-6.
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`We determine that the broadest reasonable interpretation of “focusing
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`device” is a device that focuses light.
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`4.
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`“focus”
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`Neither party provides a specific construction of “focus.” Patent
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`Owner, however, contends that claims 29 and 63 are not taught by prior art
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`systems teaching use of a lens for collimating light. Prelim. Resp. 43.
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`Because this argument turns on the meaning of the claim term “focus,” we
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`construe “focus” to evaluate Patent Owner’s contention.
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`The ’033 patent specification does not provide an express definition
`
`for the term “focus.” A definition for “focus” in the field of optics is
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`bringing an optical image to the state of “distinct and clearly defined.”
`
`Collins English Dictionary (2000), available at
`
`http://search.credoreference.com/content/entry/hcengdict/focus/0 (July 1,
`
`2014) (Ex. 3002).
`
`The specification of the ’033 patent states that focusing is a type of
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`control. Ex. 1001, 11:45–47. The ’033 patent specification further states,
`
`for example, (1) “[a] single variable focus action at a fixed position changes
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`both the position and the width of the beam waist” (id. at 16:26–28),
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`(2) “focus correction” (id. at 16:43), (3) “where misalignment or focus errors
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`are present” (id. at 19:24–25). Figure 28 of the ’033 patent illustrates lens
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`621 refracting single wavelength emergent beams 605, 606, and 607 so that
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`they emerge as mutually parallel beams 615, 616, and 617. Id. at 42:23–24.
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`The ’033 patent specification is consistent with the dictionary definition.
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`We determine that the broadest reasonable interpretation of “focus” is
`
`to define an optical image.
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`5.
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`“array”
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`The term “array” is recited in independent claims 1, 60, 63, 66, 71, 72,
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`73, 76, and 91. Petitioner asserts that “array” means “an assembly of two or
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`more individual elements, appropriately spaced and energized to achieve
`
`desired directional properties.” Pet. 11. Patent Owner disagrees and asserts
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`that “array” means “an arrangement of two or more elements.” Prelim.
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`Resp. 19.
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`Patent Owner contends that Petitioner incorrectly relies on a definition
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`relating to antenna. Prelim. Resp. 19 (citing Ex. 1017, 51). The dictionary
`
`definition cited by Petitioner refers to “radiating elements” and “beam
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`antenna.” Ex. 1017, 51. The ’033 patent specification describes an optical
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`device having “a two-dimensional array of controllable phase-modulating
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`elements.” Ex. 1001, 2:54–56.
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`We, therefore, decline to adopt Petitioner’s construction and agree
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`with Patent Owner that the broadest reasonable interpretation of “array,” in
`
`the context of the ’033 patent, is an arrangement of two or more elements.
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`6.
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`“controllable elements”
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`The term “controllable elements” is recited in independent claims 1,
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`60, 63, 66, 71, 72, 73, 76, and 91. Petitioner asserts that “controllable
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`elements” means “components, such as pixels, which can change the phase
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`of incident light under certain conditions, such as application of voltage.”
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`Pet. 11. Patent Owner asserts that “controllable elements” means “elements
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`that are controllable.” Prelim. Resp. 20. We are not persuaded that
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`“controllable elements” should be limited to the examples provided by
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`Petitioner, specifically pixels, which can change the phase of incident light
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`under certain conditions, such as application of voltage. Patent Owner’s
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`construction restates the claim language. On this record, express
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`construction is not necessary.
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`7.
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`“hologram”
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`The term “holograms” is recited in independent claims 1, 60, 63, 66,
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`71, 72, 73, 76, and 91. Petitioner asserts that “hologram” means “a set of
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`modulation values for achieving the desired change in incident light.” Pet.
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`12–13 (citing Ex. 1001, 13:50–57, 20:50–65, 14:21–24, 14:51–55). Patent
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`Owner disagrees and asserts that “hologram” means “a modulation pattern.”
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`Prelim. Resp. 20 (citing Ex. 1001, 42:63–66, 12:61–63, 7:11–18).
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`Patent Owner argues that Petitioner’s construction fails because it
`
`does not capture the “pattern” or spatial arrangement aspect of a hologram.
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`Prelim. Resp. 21. The specification of the ’033 patent states, “[t]he
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`hologram pattern associated with any general non-linear phase modulation
`
`exp jφ(u)=exp j(φ0(u)+φ1(u)+φ3(u) . . . ) where j is the complex operator, can
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`be considered as a product.” Ex. 1001, 14:21–24. The ’033 patent also
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`states, “[i]n one embodiment, in the training stage, a set of initial starting
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`values is read in for application to the SLM 30 as hologram data, then light
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`is applied at a fibre and the result of varying the hologram is noted.” Id. at
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`19:48–51. The specification of the ’033 patent, therefore, indicates that a
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`hologram pattern can be represented as a set of values.
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`The ’033 patent specification describes a hologram as something that
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`is displayed by stating, for example, “providing control data indicative of
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`two holograms to be displayed” (Ex. 1001, 4:13–14), “with circuitry
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`constructed and arranged to display holograms on the pixels” (id. at 6:13–
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`14), “[t]he groups may display holograms” (id. at 11:33–34). The ’033
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`patent specification, however, also indicates that a hologram is data stating,
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`“[s]ince the information represents phase change data, it may be regarded as
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`a hologram.” Id. at 7:16–18. The ’033 patent specification indicates that in
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`accordance with the invention, data are communicated by routing light by
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`stating, “the present field—for example in communication and like devices”
`
`(id. at 2:40–41), “routing light beams using holograms” (id. at 11:50), and
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`“an integrated SLM 10 has processing circuitry 11 having a first control
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`input 12 for routing first and second beams 1,2 from input fibres 3,4 to
`
`output fibres 5,6 in routing device 15” (id. at 12:57–60). In light of the ’033
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`patent specification, therefore, a hologram is both data and, at least in certain
`
`circumstances, displayed.
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`For the reasons given above, we determine the broadest reasonable
`
`interpretation of “hologram,” in the context of the specification of the ’033
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`patent, is modulation data for changing incident light.
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`B.
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`Asserted Obviousness of Claims 1, 29, 60, 63, 66, 71–73, and
`76 by Parker Thesis, Warr Thesis, and Tan Thesis
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`Petitioner contends that claims 1, 29, 60, 63, 66, 71–73, and 76 are
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`obvious over the combination of Parker Thesis, Warr Thesis, and Tan
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`14
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`IPR2014-00465
`Patent 8,335,033 B2
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`Thesis. Pet. 17–54. In support of its asserted grounds of unpatentability,
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`Petitioner sets forth the following teachings of Parker Thesis, Warr Thesis,
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`and Tan Thesis, provides a detailed claim chart and cites to the declaration
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`of Dr. Katherine Hall, Ph.D. (“Hall Declaration,” Ex. 1003), explaining how
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`each limitation is taught in Parker Thesis, Warr Thesis, and Tan Thesis,
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`taken together. Pet. 17–54; Ex. 1003 ¶¶ 46–50, 52–58, 61–84, 101–117,
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`129–135, 137–139. Petitioner has demonstrated that there is a reasonable
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`likelihood that it would prevail in establishing that each of claims 1, 29, 60,
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`66, 71–73, and 76 is obvious over the combination of Parker Thesis, Warr
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`Thesis, and Tan Thesis. Petitioner has not demonstrated that there is a
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`reasonable likelihood that it would prevail in establishing that claim 63 is
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`obvious over the combination of Parker Thesis, Warr Thesis, and Tan
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`Thesis.
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`1.
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`Parker Thesis
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`Parker Thesis describes using dynamic holograms for wavelength
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`division multiplexing. Ex. 1007, 1. Parker Thesis describes an addressable
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`ferroelectric liquid crystal (FLC) SLM (id. at 12) and controlling the
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`addressable SLM using a personal computer (id. at 14). Parker Thesis
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`further describes holographic wavelength filtering and explains that the
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`principle of operation of a tunable holographic wavelength filter is based on
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`using a grating to disperse polychromatic light. Id. at 47.
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`Parker Thesis also describes a concept for a polarization-insensitive
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`space-wavelength switch using concepts developed in the thesis. Ex. 1007,
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`97. Figure 6.1 of Parker Thesis is reproduced below.
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`Figure 6.1 illustrates 3 x 3 space-wavelength switch.
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`As illustrated in Figure 6.1, the space-wavelength switch described in
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`Parker Thesis has an integrated SLM unit, which comprises a blazed grating,
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`a pixelated FLC SLM, a quarter-wavelength plate, and a mirror. Ex. 1007,
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`96–97. The switch acts as a 3 x 3 fiber cross-connect, but also can shuffle
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`wavelengths between various fibers. Id. at 97.
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`2. Warr Thesis
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`Warr Thesis describes FLC SLMs consisting of an array of
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`individually controllable pixels. Ex. 1005, 7. According to Warr Thesis, a
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`design of miniature devices is to construct SLMs directly on top of silicon
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`chips. Id. at 17. Each pixel is addressed by a signal applied to an aluminum
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`pad, which doubles as a pixel mirror. Id.
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`Warr Thesis further describes free-space switching for optical fiber
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`networks. Ex. 1005, 1. Figure 5.4 of Warr Thesis is reproduced below.
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`Patent 8,335,033 B2
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`Figure 5.4 illustrates a double-pass holographic crossbar.
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`As illustrated in Figure 5.4, multiple parallel light beams enter the
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`system and are interconnected holographically by way of a crossbar.
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`Ex. 1005, 89. The crossbar is a matrix of binary switches. Id. at 82.
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`Multiple light beams enter the crossbar in parallel through an SLM area that
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`is divided so that each beam is deflected by a different computer generated
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`hologram (CGH). Id. at 89. The beams are reflected back towards the SLM
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`by a mirror before they output the system. Id.
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`3.
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`Tan Thesis
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`Tan Thesis describes SLMs for optical routing. Ex. 1006, 6. In
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`particular, Tan Thesis describes a design for use of SLMs in free-space
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`optical switches, including a design having a holographic fan-out stage with
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`a lens that collimates input channels to a sub-hologram array. Id. at 11.
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`Each sub-hologram steers its respective beam to a desired output fiber port.
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`Id.
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`IPR2014-00465
`Patent 8,335,033 B2
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`4.
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`Determination as to Whether Parker Thesis, Warr Thesis, and
`Tan Thesis Constitute Prior Art
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`Petitioner relies on Parker Thesis, Warr Thesis, and Tan Thesis as
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`printed publications within the meaning of 35 U.S.C. § 102, and argues that
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`each of the theses was indexed and shelved in the Cambridge University
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`Library at least one year prior to the effective filing date of the ’033 patent.
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`Pet. 16. In support of the contention that each thesis was indexed and
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`shelved in the Cambridge University Library, Petitioner relies on a letter
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`from Ms. Louise Clarke (Ex. 1009; “the Clarke letter”) and the testimony of
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`Dr. Hall (Ex. 1003 ¶ 50), who essentially opines as to the content of the
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`Clarke letter.
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`Patent Owner argues that Petitioner has not established properly that
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`any one of the Parker, Warr, and Tan Theses “was sufficiently publicly
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`accessible so that interested persons in the art could locate it before at least
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`the effective filing date of the ’033 patent.” Prelim. Resp. 56. Patent Owner
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`argues that the evidence submitted to prove that each of Parker Thesis, Warr
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`Thesis, and Tan Thesis was available for public access is inadmissible under
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`the Federal Rules of Evidence. Id. at 57–58. Patent Owner additionally
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`argues that the substance of the evidence, if admitted, does not establish that
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`each of Parker Thesis, Warr Thesis, and Tan Thesis was publicly available.
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`Id. We first address the admissibility arguments.
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`With few exceptions, the Federal Rules of Evidence apply to inter
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`partes proceedings. 37 C.F.R. § 42.62. The rules governing inter partes
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`review also set forth the proper procedure for objecting to, and moving to
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`exclude, evidence when appropriate. When a party objects to evidence that
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`was submitted during a preliminary proceeding, such an objection must be
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`served within ten business days of the institution of trial. The objection to
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`the evidence must identify the grounds for the objection with sufficient
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`particularity to allow correction in the form of supplemental evidence. This
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`process allows the party relying on the evidence to which an objection is
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`served, the opportunity to correct, by serving supplemental evidence within
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`ten days of the service of the objection. See 37 C.F.R. § 42.64(b)(1), (b)(2).
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`If, upon receiving the supplemental evidence, the opposing party is still of
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`the opinion that the evidence is inadmissible, the opposing party may file a
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`motion to exclude such evidence. The time for filing a motion to exclude
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`typically is several months into a trial. See, e.g., 77 Fed. Reg. at 48,768,
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`App. A.
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`In essence, Patent Owner moves for us to not consider, or exclude,
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`(1) the Clarke letter (Ex. 1009), because the evidence allegedly is
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`inadmissible hearsay and lacks foundation and (2) Dr. Hall’s testimony
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`regarding the letter (Ex. 1003 ¶ 50), because Dr. Hall does not have the
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`necessary expertise in library science to opine as an expert on the public
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`availability of each thesis. Prelim. Resp. 56–57. These requests for us not
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`to consider, or exclude, are made typically by way of a motion to exclude.
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`See 37 C.F.R. § 42.64(c). As stated above, motions to exclude are not
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`authorized until much later during a trial. Patent Owner’s “motion to
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`exclude” is premature and also prevents Petitioner from correcting, as
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`permitted by the rules. Patent Owner will have full opportunity to object,
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`serve, reconsider any supplemental evidence, and finally, file a motion to
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`exclude evidence. To the extent that Patent Owner urges the Board to
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`consider the evidentiary issues as part of our determination to institute a
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`trial, Patent Owner has failed to explain why we should deviate from the
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`rules governing inter partes review. Thus, we need not decide, at this
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`juncture, whether to exclude Exhibit 1009 or paragraph 50 of Exhibit 1003
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`from consideration.
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`Patent Owner additionally argues that the substance of the evidence, if
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`admitted, does not establish that each of Parker Thesis, Warr Thesis, and
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`Tan Thesis was sufficiently publicly accessible so that interested persons
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`could locate it before the effective filing date of the ’033 patent. Prelim.
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`Resp. 56. A single printed document, sufficiently catalogued and available
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`at a public library, generally is a printed publication within the meaning of
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`35 U.S.C. § 102. In re Hall, 781 F.2d 897 (Fed. Cir. 1986). The Clarke
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`letter indicates that each of Parker Thesis, Warr Thesis, and Tan Thesis was
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`approved by the Board of Graduate Studies on “23 April 1997,” “15 January
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`1997,” and “30 June 1999,” respectively. Ex. 1009, 1. According to the
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`letter, the library catalogue was updated from an in-house database to a
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`newer library management system in 2002, and that those catalogue items
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`which pre-date 2002 do not have a record for when they were added to the
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`library catalogue. The letter explains, however, that it was common practice
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`for a thesis to be added to the catalogue approximately one month after the
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`date on which the thesis was approved by the Board of Graduate Studies. Id.
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`at 1–2.
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`Patent Owner argues that the evidence does not establish that each of
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`Parker Thesis, Warr Thesis, and Tan Thesis was catalogued, citing In re
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`Cronyn, 890 F.2d 1158 (Fed. Cir. 1989), because Ms. Clarke states that she
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`cannot ascertain from the library’s records the exact date on which the theses
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`were added to the library catalogue, but that the theses probably would have
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`been added to the catalogue approximately one month after the date on
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`which the theses were approved. Prelim. Resp. 57–58.
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`We are aware of the Cronyn facts and decision. We, however, are
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`persuaded that the facts in this case are more aligned with those in Hall. In
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`Hall, the evidence was circumstantial, as it is here, as to when a particular
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`paper was catalogued. The court in Hall accepted the evidence regarding the
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`general library procedure for cataloging as probative value of routine
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`business practice to show the performance of the specific act of cataloging a
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`document. Based on the record before us, at this preliminary juncture of the
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`proceeding, we find the evidence sufficient to establish that Parker Thesis,
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`Warr Thesis, and Tan Thesis were available to the public more than one year
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`prior to the effective filing date of the ’033 patent, which is September 3,
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`2001.2
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`5.
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`Claims 1, 60, 66, 71–73, and 76
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`We are persuaded by Petitioner’s argument and evidence that
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`Petitioner has shown sufficiently that there is a reasonable likelihood that it
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`would prevail in establishing that each of claims 1, 60, 66, 71–73, and 76
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`would have been obvious and we now ad
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