Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 44
`Entered: January 28, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`CISCO SYSTEMS, INC., CIENA CORPORATION,
`CORIANT OPERATIONS, INC., CORIANT (USA) INC., and
`FUJITSU NETWORK COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-011661
`Patent RE42,368
`____________
`
`
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`1 IPR2015-00816 was joined with IPR2014-01166 on September 4, 2015, by
`Order in IPR2015-00816, Paper 12 (IPR2014-01166, Paper 26).
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`IPR2014-01166
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`
`INTRODUCTION
`I.
`Petitioner, Cisco Systems, Inc., Ciena Corporation, Coriant
`Operations, Inc., Coriant (USA) Inc., and Fujitsu Network Communications,
`Inc., filed petitions requesting an inter partes review of claims 1–6, 9–13,
`and 15–22 of U.S. Patent No. RE42,368 (“the ’368 patent”). Paper 2
`(“Petition” or “Pet.”); see also IPR2015-00816, Paper 1. Based on the
`information provided in the Petition, and in consideration of the Preliminary
`Response (Paper 7; see also IPR2015-00816, Paper 10) of Patent Owner,
`Capella Photonics, Inc., we instituted a trial pursuant to 35 U.S.C. § 314(a)
`of: (1) claims 1–6, 9–11, 13, and 15–22 as obvious over Bouevitch,2 Smith3,
`and Lin4 under 35 U.S.C. § 103(a); and, (2) claim 12 as obvious over
`Bouevitch, Smith, Lin, and Dueck5 under 35 U.S.C. § 103(a). Paper 8
`(“Institution Decision”); see also IPR2015-00816, Paper 11.
`After institution of trial, Patent Owner filed a Response (Paper 19,
`“Response” or “PO Resp.”) and Petitioner filed a Reply (Paper 25, “Pet.
`Reply”). The Petition is supported by the Declaration of Dr. Dan Marom
`(Ex. 1028). The Response is supported by the Declaration of Dr. Alexander
`V. Sergienko (Ex. 2004).
`
`
`
`
`2 U.S. Patent No. 6,498,872 B2, issued December 24, 2002 (Ex. 1003,
`“Bouevitch”)
`3 U.S. Patent No. 6,798,941 B2, issued September 28, 2004 (Ex. 1004,
`“Smith”).
`4 U.S. Patent No. 5,661,591, issued August 26, 1997 (Ex. 1010, “Lin”)
`5 U.S. Patent No. 6,011,884, issued January 4, 2000 (Ex. 1021, “Dueck”)
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`
`A transcript of the Oral Hearing conducted on November 5, 2015, is
`entered as Paper 43 (“Tr.”).6
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons that follow, Petitioner has shown by
`a preponderance of the evidence that claims 1–6, 9–13, and 15–22 of the
`’368 patent are unpatentable.
`BACKGROUND
`II.
`The ’368 patent (Ex. 1001)
`A.
`The ’368 patent, titled “Reconfigurable Optical Add-Drop
`Multiplexers with Servo Control and Dynamic Spectral Power Management
`Capabilities,” reissued May 17, 2011, from U.S. Patent No. 6,879,750
`(“the ’750 patent”). Ex. 1001. The ’750 patent issued April 12, 2005, from
`application number 10/745,364, filed December 22, 2003.
`According to the ’368 patent, “fiber-optic communications networks
`commonly employ wavelength division multiplexing (WDM), for it allows
`multiple information (or data) channels to be simultaneously transmitted on
`a single optical fiber by using different wavelengths and thereby
`significantly enhances the information bandwidth of the fiber.” Id. at 1:37–
`42. An optical add-drop multiplexer (OADM) is used both to remove
`wavelengths selectively from a multiplicity of wavelengths on an optical
`fiber (taking away one or more data channels from the traffic stream on the
`
`
`6 Patent Owner’s objections to Petitioner’s demonstrative slides for the oral
`hearing are denied because we are not persuaded that Petitioner’s
`demonstratives add new argument. See Paper 41. Moreover, demonstrative
`slides are not evidence and have not been relied upon for this final decision.
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`fiber), and to add wavelengths back onto the fiber (inserting new data
`channels in the same stream of traffic). Id. at 1:45–51.
`The ’368 patent describes a “wavelength-separating-routing (WSR)
`apparatus that uses a diffraction grating to separate a multi-wavelength
`optical signal by wavelength into multiple spectral channels, which are then
`focused onto an array of corresponding channel micromirrors.” Id. at
`Abstract. “The channel micromirrors are individually controllable and
`continuously pivotable to reflect the spectral channels into selected output
`ports.” Id. According to Petitioner, the small, tilting mirrors are sometimes
`called Micro ElectroMechanical Systems or “MEMS.” Pet. 7.
`The WSR described in the ’368 patent may be used to construct
`dynamically reconfigurable OADMs for WDM optical networking
`applications. Id. Figure 1A of the ’368 patent is reproduced below.
`
`
`Figure 1A depicts wavelength-separating-routing (WSR) apparatus 100, in
`accordance with the ’368 patent. WSR apparatus 100 is comprised of an
`array of fiber collimators 110 (multiple input/output ports, including input
`port 110-1 and output ports 110-2 through 110-N), diffraction grating 101 (a
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`wavelength separator), quarter wave plate 104, focusing lens 102 (a beam-
`focuser), and array of channel micromirrors 103. Ex. 1001, 6:57–63,
`7:55–56.
`
`A multi-wavelength optical signal emerges from input port 110-1 and
`is separated into multiple spectral channels by diffraction grating 101, which
`are then focused by focusing lens 102 into a spatial array of distinct spectral
`spots (not shown). Id. at 6:64–7:2. Channel micromirrors 103 are
`positioned such that each channel micromirror receives one of the spectral
`channels.
`Figure 1B of the ’368 patent is reproduced below.
`
`
`Figure 1B depicts a close-up view of the array of channel
`micromirrors 103 shown above in Figure 1A. Id. at 8:6–7. The channel
`micromirrors “are individually controllable and movable, e.g. pivotable (or
`rotatable) under analog (or continuous) control, such that, upon reflection,
`the spectral channels are directed” into selected output ports by way of
`focusing lens 102 and diffraction grating 101. Id. at 7:6–11.
`
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`
`According to the ’368 patent:
`each micromirror may be pivoted about one or two axes. What is
`important is that the pivoting (or rotational) motion of each
`channel micromirror be individually controllable in an analog
`manner, whereby the pivoting angle can be continuously
`adjusted so as to enable the channel micromirror to scan a
`spectral channel across all possible output ports.
`Id. at 9:8–14.
`
`Figure 3 of the ’368 patent is reproduced below.
`
`
`
`
`Similar to Figure 1A, above, Figure 3 also shows a WSR apparatus as
`described by the ’368 patent. Ex. 1001, 10:25–26. In this embodiment, two-
`dimensional array of fiber collimators 350 provides an input port and
`plurality of output ports. Id. at 10:31–32. First and second two-dimensional
`arrays of imaging lenses 360, 370 are placed in a telecentric arrangement
`between two-dimensional collimator-alignment mirror array 320 and two-
`dimensional fiber collimator array 350. Id. at 10:37–43. “The channel
`micromirrors 103 must be pivotable biaxially in this case (in order to direct
`its corresponding spectral channel to anyone of the output ports).” Id. at
`10:43–46.
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`
`The WSR also may incorporate a servo-control assembly (together
`termed a “WSR-S apparatus”). Id. at 4:65–67. According to the ’368
`patent:
`The servo-control assembly serves to monitor the power levels
`of the spectral channels coupled into the output ports and further
`provide control of the channel micromirrors on an individual
`basis, so as to maintain a predetermined coupling efficiency of
`each spectral channel in one of the output ports. As such, the
`servo-control assembly provides dynamic control of the coupling
`of the spectral channels into the respective output ports and
`actively manages the power levels of the spectral channels
`coupled into the output ports.
`Id. at 4:47–56.
`Figure 5 of the ’368 patent is reproduced below.
`
`
`
`
`Figure 5 depicts OADM 500 in accordance with the ’368 patent composed
`of WSR-S (or WSR) apparatus 510 and optical combiner 550. Id. at 12:40–
`44. Input port 520 transmits a multi-wavelength optical signal, which is
`separated and routed into a plurality of output ports, including pass-through
`port 530 and one or more drop ports 540-1 through 540-N. Id. at 12:44–48.
`Pass-through port 530 is optically coupled to optical combiner 550, which
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`combines the pass-through spectral channels with one or more add spectral
`channels provided by one or more add ports 560-1 through 560-M. Id. at
`12:52–56. The combined optical signal is then routed into an existing port
`570, providing an output multi-wavelength optical signal. Id. at 12:56–58.
`B.
`Illustrative Claims
`Challenged claims 1, 15, 16, and 17 of the ’368 patent are
`independent. Claims 2–6 and 9–13 ultimately depend from claim 1 and
`claims 18–22 ultimately depend from claim 17. Claims 1 and 17 of the
`’368 patent are illustrative of the claims at issue:
`1. An optical add-drop apparatus comprising
`an input port for an input multi-wavelength optical signal
`having first spectral channels;
`one or more other ports for second spectral channels; an
`output port for an output multi-wavelength optical signal;
`a wavelength-selective device for spatially separating said
`spectral channels; [and]
`a spatial array of beam-deflecting elements positioned such
`that each element receives a corresponding one of said
`spectral channels, each of said elements being individually
`and continuously controllable in two dimensions to reflect
`its corresponding spectral channel to a selected one of said
`ports and to control the power of the spectral channel
`reflected to said selected port.
`Ex. 1001, 14:6–20.
`17. A method of performing dynamic add and drop in a
`WDM optical network, comprising
`separating an input multi-wavelength optical signal into
`spectral channels;
`imaging each of said spectral channels onto a corresponding
`beam-deflecting element; and
`controlling dynamically and continuously said beam-
`deflecting elements in two dimensions so as to combine
`selected ones of said spectral channels into an output
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`multi-wavelength optical signal and to control the power
`of the spectral channels combined into said output multi-
`wavelength optical signal.
`Ex. 1001, 16:3–14.
`
`III. ANALYSIS
`Real Party-In-Interest
`A.
`Patent Owner contends that trial should be terminated because
`Petitioner did not identify “Cisco’s indemnified for the accused products” as
`a real party-in-interest “pursuant to California Commercial Code § 2312(3).”
`PO Resp. 59. Patent Owner provides virtually no explanation of its
`contention, fails to analyze any facts relative to its contention, and directs us
`to no legal authority in support of its contention. Accordingly, we are not
`persuaded that trial should be terminated under the circumstances presented.
`Claim Construction
`B.
`Only terms which are in controversy need to be construed, and then
`only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`“to reflect” and “to control”
`1.
`Independent claims 1, 15, and 16 each recite outside of the preamble:
`a spatial array of beam-deflecting elements positioned such that
`each element receives a corresponding one of said spectral
`channels, each of said elements being
`individually and
`continuously controllable in two dimensions to reflect its
`corresponding spectral channel to a selected one of said ports and
`to control the power of the spectral channel reflected to said
`selected port.
`
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`Ex. 1001, 14:14– 20, 15:14–20, 15:31–37 (emphases added). Independent
`claim 17 contains a similar limitation.7 Petitioner contends that the “to
`reflect” and “to control” clauses are non-functional clauses that say nothing
`about the claimed structure, and, therefore, are non-limiting. Pet. 10–11.
`We disagree. Although “apparatus claims cover what a device is, not what a
`device does,” the language at issue here describes the function that the
`apparatus must be capable of performing. Hewlett-Packard Co. v. Bausch &
`Lomb, Inc., 909 F.2d 1464, 1468 (Fed.Cir.1990); see also K-2 Corp. v.
`Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999) (explaining that
`functional language is an additional limitation in the claim). In that regard,
`the pertinent clauses are, thus, functional rather than non-functional.
`Accordingly, the claimed “spatial array of beam-deflecting elements” is
`further limited to a spatial array that satisfies the “to reflect” and “to control”
`functional limitations.
`“continuously controllable”
` 2.
` Claim 1 requires “a spatial array of beam-deflecting elements . . .
`each of said elements being individually and continuously controllable.”
`Similarly, claim 17 requires “controlling dynamically and continuously said
`beam-deflecting elements.” Petitioner asserts that “continuously
`controllable” should be construed to mean “under analog control.” Pet. 12.
`
`
`7 Claim 17 recites: “controlling dynamically and continuously said beam-
`deflecting elements in two dimensions so as to combine selected ones of said
`spectral channels into an output multi-wavelength optical signal and to
`control the power of the spectral channels combined into said output multi-
`wavelength optical signal.” Ex. 1001, 16:9–14.
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`Petitioner identifies the following disclosures of the ’368 patent as
`supporting its proposed construction:
`The patent explains that “[a] distinct feature of the channel
`micromirrors in the present invention, in contrast to those used
`in the prior art, is that the motion…of each channel micromirror
`is under analog control such that its pivoting angle can be
`continuously adjusted.” ([Ex. 1001], 4:7–11; emphasis added).
`Another passage in the specification states that “[w]hat is
`important is that the pivoting (or rotational) motion of each
`channel micromirror be individually controllable in an analog
`manner, whereby the pivoting angle can be continuously
`adjusted so as to enable the channel micromirror to scan a
`spectral channel across all possible output ports.” (Id., 9:9–14;
`emphasis added). Yet another passage states that “channel
`micromirrors 103 are individually controllable and movable,
`e.g., pivotable (or rotatable) under analog (or continuous)
`control.” (Id., 7:6–8).
`Pet. 12–13.
`Dr. Marom also explains that “MEMS can be operated using analog
`voltage for continuous control,” and states that a person of ordinary skill in
`the art would understand continuous control “is achieved via analog voltage
`control.” Ex. 1028 ¶¶ 36, 58.
`Patent Owner suggests in its Response that analog control does not
`necessarily provide the claimed “continuously controllable” beam deflecting
`elements (PO Resp. 42 n.4),but during the oral hearing counsel for Patent
`Owner indicated that “continuously controllable” was defined as “analog
`control,” and then clarified that Patent Owner “did not offer a specific
`definition of continuously control.” Paper 43, 57:1–58:2. Additionally,
`according to Dr. Sergienko, “continuous control cannot be shown by the
`input signal (i.e., analog vs. digital) alone.” Ex. 2004 ¶ 181.
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`
`Based on all of the evidence presented, we are not persuaded that
`“continuously controllable” is limited to “analog control,” or that “analog
`control” necessarily corresponds to “continuous” control under all
`circumstances. Indeed, counsel for Petitioner suggested that although the art
`at issue disclosed analog control that provided continuous control, counsel
`further recognized that it may operate differently outside of that art. See
`Paper 43, 30:24–31–6. We determine that “continuously controllable,” in
`light of the specification of the ’368 patent, encompasses “under analog
`control such that it can be continuously adjusted.”
`“port”
`3.
`Claim 1 requires “an input port . . . one or more other ports. . . [and]
`an output port.” Patent Owner contends that in the ’368 patent “the structure
`or elements making up the ports are collimators.” PO Resp. 33. Patent
`Owner offers no definition of “port,” and does not suggest that the ’368
`patent provides an express definition of the term, but instead argues that a
`“port,” as claimed, is not a “circulator port” because the ’368 patent
`“disavows circulator-based optical systems.” Id. at 34. We disagree.
`There is no dispute that the ordinary and customary meaning of “port”
`encompasses circulator ports, and, indeed, any “point of entry or exit of
`light.” See Dr. Sergienko Deposition Transcript (Ex. 1039), 43:16–23,
`45:12–13 (“The circulator ports are ports with constraints.”). Nor does the
`’368 patent equate the term “port” to “collimator,” as both “port” and
`“collimator” appear separately in the claims of the ’368 patent. Ex. 1001,
`14:7, 14:48–51. We have considered the testimony of Dr. Sergienko as well
`(Ex. 2004 ¶¶ 146–167), and find that even if certain fiber collimators serve
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`as ports in the ’368 patent, that does not redefine the term “port” to mean
`“collimator.” See id. at ¶ 154. Thus, the primary issue is whether the ’368
`patent disavows circulator ports from the scope of the term “port.”
`Although the broad scope of a claim term may be intentionally
`disavowed, “this intention must be clear,” see Teleflex, Inc. v. Ficosa N. Am.
`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) (“The patentee may
`demonstrate an intent to deviate from the ordinary and accustomed meaning
`of a claim term by including in the specification expressions of manifest
`exclusion or restriction, representing a clear disavowal of claim scope,”),
`and cannot draw limitations into the claim from a preferred embodiment.”
`Conoco, Inc. v. Energy & Envtl. Int’l., 460 F.3d 1349, 1357 (Fed. Cir. 2006).
`Patent Owner fails to show any “expressions of manifest exclusion or
`restriction, representing a clear disavowal of claim scope” with respect to the
`use of “port” in the ’368 patent. Patent Owner argues that the ’368 patent
`provides a scalable system without circulator ports, that a provisional
`application to the ’368 patent “describes existing add/drop architectures that
`had a number of problems” (PO Resp. 36), that Dr. Marom obtained a patent
`in which collimators serve as the ports, and that “[b]ecause the inventors of
`the ’368 [p]atent consistently emphasized the limitations of circulators and
`the ’368 [p]atent discloses an alternative configuration, a [person of ordinary
`skill in the art] would have understood that the inventors were disavowing
`the use of optical circulators.” PO Resp. 37; see also PO Resp. 33–35 and
`38–40 (citing Ex 2004 ¶ 161).
`We do not discern any “clear disavowal of claim scope” from the
`arguments advanced by Patent Owner. Dr. Sergienko merely states that a
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`person of ordinary skill in the art “would read the ’368 patent as teaching
`away from or at the least discouraging the use of circulators.” Ex. 2004,
`¶ 160. Even if the ’368 patent were viewed as Dr. Sergienko suggests,
`teaching away or discouragement is not disavowal. Moreover, Petitioner
`further demonstrates that a provisional application to the ’368 patent in fact
`uses circulator ports as “ports.” Pet. Reply 12–13 (citing Ex. 1008, 4, Fig.
`9). Such usage undermines Patent Owner’s disavowal contention. We have
`considered all of the arguments advanced by Patent Owner in its effort to
`redefine “port” as excluding “circulator ports” (PO Resp. 33–40), and find
`insufficient support for Patent Owner’s contention that the ’368 patent
`disavows circulator ports from the scope of the term “port.” We determine
`that “port,” in light of the specification of the ’368 patent, encompasses
`“circulator port.”
`“beam focuser”
`4.
`Claim 11 requires a “beam-focuser for focusing said separated
`spectral channels onto said beam deflecting elements.” The ’368 patent
`states that “[t]he beam-focuser may be a single lens, an assembly of lenses,
`or other beam focusing means known in the art.” Ex. 1001, 4:20–22.
`Petitioner contends that “beam focuser” is “a device that directs a
`beam of light to a spot.” Pet. 15–16. According to Petitioner:
`The Summary of the ’368 patent states that the “beam-focuser
`focuses the spectral channels into corresponding spectral spots.”
`([Ex. 1001], 3:63-64.) The specification also explains that the
`beams of light are “focused by the focusing lens 102 into a spatial
`array of distinct spectral spots (not shown in FIG. lA) in a one-
`to-one correspondence.” (Id., 6:65-7:5.) The MEMS mirrors are
`in turn “positioned in accordance with the spatial array formed
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`by the spectral spots, such that each channel micromirror
`receives one of the spectral channels.” Id.)
`Id. Patent Owner does not dispute expressly Petitioner’s proposed
`construction, and provides no alternative construction of “beam focuser.”
`Consistent with Petitioner’s proposed construction, Dr. Sergienko testified
`that “focusing means bringing of the energy in the original image limited to
`the focal spot.” Ex. 1039, 245:17–19. We agree that, based on the
`specification of the ’368 patent, “beam focuser” means “a device that directs
`a beam of light to a spot.”
`“dynamically”
`5.
`Claim 17 recites “[a] method of performing dynamic add and drop in
`a WDM optical network, comprising: . . . controlling dynamically and
`continuously said beam-deflecting elements in two dimensions.” Ex. 1001,
`16:3–10. Petitioner contends that “[t]he plain and ordinary meaning of
`‘dynamically’ in the context of the ’368 patent is ‘during operation.’” Pet.
`55 (citing Ex. 1003, 3:22–23 (contrasting routing that is fixed during
`operation: “the [prior art] wavelength routing is intrinsically static, rendering
`it difficult to dynamically reconfigure these OADMs.”); Ex. 1028 ¶ 121)). It
`is unclear how Petitioner equates “dynamically” to “during operation” from
`the citation provided. Patent Owner does not propose a definition of
`“dynamically.”
`The ’368 patent uses “dynamic” and “dynamically” throughout the
`specification, stating, for example, that “[t]he power levels of the spectral
`channels in the output ports may be dynamically managed according to
`demand.” Ex. 1001, 11:30–32. We determine from the specification that
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`the ’368 patent uses “dynamically” in contrast to “static,” in accordance with
`its ordinary and customary meaning.
`6.
`Additional Claim Terms
`Petitioner addresses several additional claim terms, including “servo-
`control assembly,” “spectral monitor,” and “in two dimensions.” Pet. 9–15.
`For purposes of this decision, no express construction of any additional
`claim term is necessary.
`References Asserted as Prior Art
`C.
`Petitioner relies on Bouevitch, Smith, Lin, and Dueck with respect to
`its assertion that the challenged claims would have been obvious.
`
`Bouevitch
`1.
`Bouevitch describes an optical device for rerouting and modifying an
`optical signal, including modifying means such as a MEMS array and a
`liquid crystal array which function as an attenuator when the device operates
`as a dynamic gain equalizer (DGE), and as a switching array when the
`device operates as a configurable optical add/drop multiplexer (COADM).
`Ex. 1003, Abstract. According to Petitioner, the COADM described in
`Bouevitch “uses MEMS mirrors with 1 axis of rotation.” Pet. 19. Petitioner
`also contends that the Bouevitch COADM controls the power of its output
`channels by tilting beam-deflecting mirrors at varying angles. Pet. 18.
`
`Smith
`2.
`Smith describes an optical switch including an array of mirrors tiltable
`about two axes, permitting a mirror tilt axis to be used for switching and a
`perpendicular axis to be used for power control. Ex. 1004, Abstract, 16:34–
`51; see also Ex. 1005, 6 (describing the same). Petitioner contends that “to
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`the extent Bouevitch does not disclose 2-axis mirrors and their intended use
`for power control, both the Smith Patent and the Smith [’683] Provisional
`each does so.” Pet. 19. Petitioner asserts that Smith is § 102(e) prior art as
`of the September 22, 2000, filing date of the Smith ’683 Provisional.
`Pet. 17–18, 60. Patent Owner argues that Smith is not prior art to the ’368
`patent because the portions of Smith Petitioner relies upon are not entitled to
`the filing date of the Smith ’683 Provisional. PO Resp. 56–59.
`During this proceeding, the Federal Circuit issued a decision in
`Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375 (Fed.
`Cir. 2015), addressing the necessary showing for a patent to claim priority
`from the filing date of its provisional application. The court found that the
`petitioner in the underlying inter partes review proceeding did not
`demonstrate that the prior art patent relied upon was entitled to the benefit of
`the filing date of its provisional application because the petitioner did not
`show written description support in the prior art provisional application for
`the claims of the prior art patent. Id. at 1378. Thus, demonstrating only
`that the provisional application of the prior art patent provided a written
`description of the subject matter in the prior art patent relied upon to
`establish the unpatentability of the challenged claims was insufficient to
`show that the prior art patent was entitled to the benefit of the filing date of
`its provisional application. Id.
`In this case, Petitioner recognized that it had not shown in the Petition
`that the Smith ’683 Provisional provided written description support for the
`claims of Smith and requested an opportunity to address the issue in light of
`Dynamic Drinkware. See Paper 28 (authorizing additional briefing). With
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`our prior authorization, Petitioner filed a brief addressing the holding in
`Dynamic Drinkware and whether the Smith ’683 Provisional provides
`written description support for the claims of Smith (Paper 34). Patent
`Owner filed a brief in response (Paper 37).
`The parties generally agree that Smith is § 102(e) prior art as of the
`filing date of the Smith ’683 Provisional if the Smith ’683 Provisional
`provides written description support for: (1) the subject matter Petitioner
`relies upon in Smith to show the unpatentability of the challenged claims of
`the ’368 patent, and (2) the invention of Smith.8 See Paper 34, 2; see also
`Paper 37, 1 (“When relying on a provisional’s filing date for a § 103
`rejection, a petitioner must show: (1) the subject matter was carried over
`from the provisional application and (2) the patent’s claims have § 112
`support in the provisional application.”)
`
`
`8 We agree with Petitioner that it need not show that every claim of Smith is
`supported by the Smith ’683 Provisional to demonstrate that subject matter
`disclosed in both Smith and the Smith ’683 Provisional is entitled to the
`benefit of the filing date of the Smith ’683 Provisional. See Paper 34, 3. We
`also need not reach, and take no position on Petitioner’s suggestion that
`Dynamic Drinkware is invalid to the extent it conflicts with In re Klesper,
`397 F.2d 882 (CCPA 1968) (stating “[i]t is also well settled that where a
`patent purports on its face to be a “continuation-in-part” of a prior
`application, the continuation-in-part application is entitled to the filing date
`of the parent application as to all subject matter carried over into it from the
`parent application, whether for purposes of obtaining a patent or
`subsequently utilizing the patent disclosure as evidence to defeat another’s
`right to a patent. 35 U.S.C. §§ 102(e), 120; Goodyear Tire & Rubber Co. v.
`Ladd, 121 U.S. App. D.C. 275, 349 F.2d 710, (1965), certiorari denied 382
`U.S. 973, 86 S. Ct. 536, 15 L.Ed.2d 465; Asseff v. Marzall, 88 U. S. App.
`D.C. 358, 189 F.2d 660, (1951), certiorari denied 342 U.S. 828, 72 S. Ct. 51,
`96 L. Ed. 626; In re Switzer, 166 F.2d 827, 35 CCPA 1013.”).
`18
`
`

`

`IPR2014-01166
`Patent RE42,368
`
`
`First, Petitioner has shown sufficiently that the Smith ’683 Provisional
`provides written description support for at least two claims of Smith.
`Petitioner provides a claim chart identifying each of the limitations of claim
`1 of Smith and the corresponding written description support as disclosed by
`the Smith ’683 Provisional. Paper 34, attached claim chart. Petitioner also
`identifies written description support in the Smith ’683 Provisional for Smith
`claim 28. Id. at 5.
`We have considered Patent Owner’s argument that the claim chart
`provided by Petitioner “is mere attorney argument and does not even attempt
`to demonstrate what a [person of ordinary skill in the art] would understand
`or whether the disclosure has §112 support in the Provisional,” and find it
`not persuasive. Paper 37, 5. Patent Owner identifies no authority for the
`proposition that an expert declaration is necessary to show written
`description support. Patent Owner’s further argument that Petitioner “is
`wrong” in its assertion that the “movable mirror” of Smith is supported by
`the disclosure of “elements that can be rotated in an analog fashion,” is not
`persuasive because it is conclusory and does not address the full disclosure
`identified by Petitioner.
`Second, Petitioner has shown sufficiently that the Smith ’683
`Provisional provides written description support for certain subject matter
`Petitioner relies upon in Smith to show the unpatentability of the challenged
`claims of the ’368 patent (i.e., that “the subject matter was carried over from
`the provisional application.”) According to Petitioner, the Smith ’683
`Provisional “describes ‘a mirror array with elements that can be rotated in an
`analog fashion about two orthogonal axes,’ with one axis for switching, and
`
`19
`
`

`

`IPR2014-01166
`Patent RE42,368
`
`one axis for power.” Pet. 19 (quoting Ex. 1004, 6). In support of
`Petitioner’s contention that Smith is § 102(e) prior art, Dr. Marom testifies
`that the Smith ’683 Provisional discloses all of the features of Smith relied
`upon to demonstrate unpatentability. Ex. 1028 ¶ 131. In his declaration,
`Dr. Marom provides a chart identifying the claimed subject matter of the
`’368 patent and the corresponding disclosures in both Smith and the Smith
`’683 Provisional. Id. ¶ 132. In particular, Dr. Marom identifies the
`“individually and continuously controllable in two dimensions” limitation of
`claims 1, 15, 16, and 17 of the ’368 patent as being described by the Smith
`’683 Provisional as a “mirror array with elements that can be rotated in an
`analog fashion about two orthogonal axes.” Id. (quoting Ex. 1005, 6)
`(emphasis omitted).
`Patent Owner argues that the Smith ’683 Provisional does not provide
`written description support for Smith’s disclosure of the “continuously
`controllable” limitation of the ’368 patent. PO Resp. 57–58. Although
`Dr. Marom expressed the opinion that the Smith ’683 Provisional discloses
`the “continuously controllable” limitation based on its disclosure of “analog”
`control, Petitioner does not rely only on Smith as disclosing the
`“continuously controllable” limitation. See Pet. 19. Accordingly, whether
`the Smith ’683 Provisional discloses the “continuously controllable”
`limitation has no bearing on whether Smith is available as prior art for any
`other disclosure upon which Petitioner relies. Similarly, to the extent Patent
`Owner argues that a gimbal structure described in Smith was not disclosed
`in the Smith ’683 Provisional, Patent Owner’s argument is beyond the scope
`of the claims of the ’368 patent, which do not