Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 8
`Entered: January 30, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01166
`Patent RE42,368
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 8
`Entered: January 30, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01166
`Patent RE42,368
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2014-01166
`Patent RE42,368
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Cisco Systems, Inc., filed a Petition 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 (“Pet.”). Patent Owner, Capella Photonics,
`
`Inc., filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). We have
`
`jurisdiction under 35 U.S.C. § 314(a), which provides that an inter partes
`
`review may not be instituted “unless . . . the information presented in the
`
`petition . . . shows that there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.”
`
`Upon consideration of the Petition and the Preliminary Response, we
`
`conclude the information presented shows there is a reasonable likelihood
`
`that Petitioner would prevail in showing the unpatentability of the
`
`challenged claims. Accordingly, we authorize an inter partes review to be
`
`instituted as to claims 1–6, 9–13, and 15–22 of the ’368 patent. Our factual
`
`findings and conclusions at this stage of the proceeding are based on the
`
`evidentiary record developed thus far (prior to Patent Owner’s Response).
`
`This is not a final decision as to patentability of claims for which inter
`
`partes review is instituted. Our final decision will be based on the record, as
`
`fully developed during trial.
`
`
`
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`2
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`Patent RE42,368
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`II.
`
`BACKGROUND
`
`A.
`
`The ’368 patent (Ex. 1001)
`
`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
`
`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.
`
`3
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`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
`
`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.
`
`4
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`IPR2014-01166
`Patent RE42,368
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`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. 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.
`
`
`
`
`
`
`
`
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`5
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`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.
`
`The WSR may also 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
`
`6
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`IPR2014-01166
`Patent RE42,368
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`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
`
`comprised 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 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.
`
`7
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`IPR2014-01166
`Patent RE42,368
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`B.
`
`Illustrative Claims
`
`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
`in
`two
`individually and continuously controllable
`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 (emphases in original).
`
`
`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
`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 (emphases in original).
`
`8
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`C.
`
`Related Proceedings
`
`Petitioner states that the ’368 patent is a subject of the following civil
`
`action: Capella Photonics, Inc. v. Cisco Systems, Inc., Civil Action No. 1-
`
`14-cv-20529, filed in the Southern District of Florida on February 14, 2014.
`
`Pet. 2.
`
`D.
`
`Asserted Grounds of Unpatentability
`
`Petitioner contends that claims 1–6, 9–13, and 15–22 of the ’368
`
`patent are unpatentable based on the following grounds:
`
`Reference[s]
`Bouevitch1 and Smith2
`Bouevitch, Smith, and Lin3
`Bouevitch, Smith, and Dueck4
`Bouevitch, Smith, Lin, and Dueck
`
`
`
`Basis
`
`Challenged Claims
`
`§ 103(a) 1–6, 9–13, and 15–22
`
`§ 103(a) 1–6, 9–13, and 15–22
`
`§ 103(a) 12
`
`§ 103(a) 12
`
`III. ANALYSIS
`
`A.
`
`Claim Construction
`
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.100(b); see Office Patent Trial Practice Guide,
`
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`
`1 U.S. Patent No. 6,498,872 B2, issued December 24, 2002 (Ex. 1003,
`“Bouevitch”)
`2 U.S. Patent No. 6,798, 941 B2, issued September 28, 2004 (Ex. 1004,
`“Smith”). Petitioner contends Smith is 102(e) prior art as of the
`September 22, 2000, filing date of its corresponding provisional application
`No. 60/234,683 (the “Smith ’683 Provisional,” Ex. 1005). Pet. 60.
`3 U.S. Patent No. 5,661,591, issued August 26, 1997 (Ex. 1010, “Lin”)
`4 U.S. Patent No. 6,011,884, issued January 4, 2000 (Ex. 1021, “Dueck”)
`9
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`IPR2014-01166
`Patent RE42,368
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`
`1.
`
`“to reflect” and “to control”
`
`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.
`
`Ex. 1001, 14:14– 20, 15:14–20, 15:31–37 (emphases added). Independent
`
`claim 17 contains a similar limitation.5 Petitioner contends that the “to
`
`reflect” and “to control” clauses are non-functional use 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 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).
`
`Patent Owner argues that the claim limitations above should be read
`
`to require that the element be controllable in two dimensions “to reflect”
`
`and, separately, be controllable in two dimensions “to control.” Prelim.
`
`Resp. 18–19. On the present record, Patent Owner’s argument is not
`
`
`5 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.
`10
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`IPR2014-01166
`Patent RE42,368
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`commensurate with the scope of the claim or its broadest reasonable
`
`interpretation. The claim only requires elements that are “individually and
`
`continuously controllable in two dimensions,” and further describes the
`
`function of those elements as including both “to reflect” and “to control.”
`
`How those functions are to be accomplished has no bearing on what
`
`structure is required by the claim. No express construction of the “to
`
`reflect” and “to control” limitations is necessary for purposes of this
`
`decision.
`
` 2.
`
`“continuously controllable”
`
` Petitioner asserts that “continuously controllable” should be
`
`construed to mean “under analog control.” Pet. 12. Patent Owner offers no
`
`construction of the term, and we determine that no express construction is
`
`necessary for purposes of this decision.
`
`3.
`
`“servo-control assembly”
`
`Petitioner asserts that “servo-control assembly” should be construed to
`
`mean “feedback-based control assembly.” Pet. 13–15. Patent Owner offers
`
`no construction of the term.
`
`The ’368 patent states that a “skilled artisan will know how to
`
`implement a suitable spectral monitor along with an appropriate processing
`
`unit to provide a servo-control assembly in a WSP-S apparatus according to
`
`the present invention, for a given application.” Ex. 1001, 12:11–15. For
`
`purposes of this decision, no express construction of “servo-control
`
`assembly” is necessary.
`
`11
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`4.
`
`“spectral monitor”
`
`Petitioner asserts that “spectral monitor” should be construed to mean
`
`“a device for measuring power.” Pet. 15. Claim 3 recites “a spectral
`
`monitor for monitoring power levels.” As the claim itself identifies the
`
`function of the “spectral monitor,” no express construction of “spectral
`
`monitor” is necessary for purposes of this decision.
`
`5.
`
`Additional Claim Terms
`
`Petitioner addresses several additional claim terms, including “in two
`
`dimensions” and “beam-focuser.” Pet. 9–16. For purposes of this decision,
`
`no express construction of any additional claim term is necessary.
`
`B.
`
`References Asserted as Prior Art
`
`Petitioner relies on Bouevitch, Smith, Lin, and Dueck with respect to
`
`its assertion that the challenged claims would have been obvious.
`
`1.
`
`Bouevitch
`
`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.
`
`12
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`IPR2014-01166
`Patent RE42,368
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`2.
`
`Smith
`
`In support of Petitioner’s contention that Smith is 102(e) prior art as
`
`of the September 22, 2000, filing date of the Smith ’683 Provisional,
`
`Petitioner’s declarant, Dan 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, Mr. Marom also
`
`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. at ¶ 132. For example, Mr. 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.
`
`Patent Owner argues that Petitioner failed to make a threshold
`
`showing that Smith is entitled to the filing date of the Smith ’683
`
`Provisional. Prelim. Resp. 22–26. In particular, Patent Owner argues that
`
`there is no written description support for the two-axis mirror embodiment
`
`disclosed in Figures 14 and 15 of Smith, which, Patent Owner contends, are
`
`traceable to a second provisional application. Id. Whether portions of the
`
`information in the specification of the ’368 patent appear in another
`
`provisional application has no bearing on whether the Smith ’683
`
`Provisional provides written description support for the relevant claim
`
`elements of the ’368 patent. Similarly, to the extent Patent Owner argues 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
`
`13
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`IPR2014-01166
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`the ’368 patent, which do not require a particular gimbal structure. See
`
`Prelim. Resp. 3. Petitioner has supported its contention that Smith is prior
`
`art with the testimony of Mr. Marom. Based on the present record,
`
`Petitioner has made a threshold showing that Smith is 102(e) prior art as of
`
`the filing date of the Smith ’683 Provisional.
`
`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).
`
`3.
`
`Lin
`
`
`
`Lin describes a “spatial light modulator… operable in the analog
`
`mode for light beam steering or scanning applications.” Ex. 1010, Abstract.
`
`Lin explains that the angular deflection of a mirror about the torsional axis is
`
`a function of the voltage potential applied to an address electrode. Id. at
`
`6:29–32. Petitioner contends that Figure 3B of Lin depicts a continuous and
`
`linear relationship between the deflection angle of the MEMS mirrors and
`
`the applied voltage. Pet. 29.
`
`
`
`
`
`4.
`
`Dueck
`
`Dueck describes a wavelength division multiplexer that integrates an
`
`axial gradient refractive index element with a diffraction grating to provide
`
`efficient coupling from a plurality of input sources. Ex. 1021, Abstract.
`
`Petitioner contends that Dueck describes various diffraction gratings for use
`
`in WDM devices. Pet. 18.
`
`14
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`C.
`
`Asserted Obviousness Over Bouevitch, Smith, and Lin
`
`Petitioner asserts that claims 1–6, 9–11, 13, and 15–22 would have
`
`been obvious over Bouevitch, Smith, and Lin. Pet. 23–60.
`
`1.
`
`Claim 1
`
`Petitioner first argues that during reissue Patent Owner admitted that
`
`all elements of claim 1, except for two-axis mirrors, were disclosed by
`
`Bouevitch. Pet.7– 9. Rather than identify any such admission, Petitioner
`
`directs us to a Replacement Reissue Application Declaration by Assignee
`
`which states:
`
`At least one error upon which reissue is based is
`described as follows: Claim 1 is deemed to be too broad and
`invalid in view of U.S. Patent No. 6,498,872 to Bouevitch and
`further in view of one or more of U.S. Patent No. 6,567,574 to
`Ma, U.S. Patent No. 6,256,430 to Jin, or U.S. Patent No.
`6,631,222
`to Wagener by failing
`to
`include
`limitations
`regarding the spatial array of beam deflecting elements being
`individually and continuously controllable in two dimensions to
`control the power of the spectral channels reflected to selected
`output ports, as indicated by the amendments to Claim 1 in the
`Preliminary Amendment referred to above.
`
`Pet. 7–8, quoting Ex. 1002, 81–82 (emphases omitted). Rather than admit
`
`that all original elements of claim 1 are disclosed by Bouevitch, the
`
`statement makes clear that three additional references not relied upon by
`
`Petitioner in this proceeding were considered in combination with
`
`Bouevitch. Moreover, Petitioner identifies no persuasive authority for the
`
`proposition that such a statement should be treated as an admission in this
`
`proceeding. As a result, we are not persuaded that Patent Owner has
`
`15
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`IPR2014-01166
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`admitted all elements of claim 1, except for two-axis mirrors, were disclosed
`
`by Bouevitch.
`
`
`
`Petitioner further asserts, with respect to the elements of claim 1, that
`
`Bouevitch discloses an optical add-drop apparatus, including an input port
`
`(labeled “IN”), one or more other ports (labeled 80b “IN ADD” and “OUT
`
`DROP”), and an output port (labeled “OUT EXPRESS”). Pet. 24, citing Ex.
`
`1003, Fig. 11. Petitioner’s contentions are supported by Mr. Marom. Ex.
`
`1028 ¶¶ 49–52. Patent Owner argues that the ports relied upon by Petitioner
`
`in Bouevitch are optical circulators, and that the’368 patent teaches away
`
`from the use of optical circulators. Prelim. Resp. 38. In particular Patent
`
`Owner argues:
`
`In contrast to Aksyuk [U.S. Patent No. 6,204,946], the
`’368 patent presents an optical add/drop multiplexer that “is
`able to perform both the add and drop functions without
`involving additional optical components (such as optical
`circulators used in the system of Aksyuk et al.).” ([Ex. 1001] at
`3:6-9 (emphasis added).)
`
`Prelim. Resp. 39. Patent Owner’s argument misrepresents what is set forth
`
`in the ’368 patent, which makes clear that it is contrasting Aksyuk to
`
`Tomlinson (U.S. Patent No. 5,906,133), not to the ’368 patent, and the ’368
`
`patent further proceeds to identify drawbacks of the Tomlinson OADM. See
`
`Ex. 1001, 2:65–3:19. Patent Owner’s attorney argument is not persuasive on
`
`the present record.
`
`Next, Petitioner identifies Bouevitch’s diffraction grating 20 as a
`
`wavelength-selective device for spatially separating spectral channels, as
`
`recited in claim 1. Pet. 26. Petitioner also identifies Bouevitch’s MEMS
`
`mirror array 50 as a spatial array of beam-deflecting elements positioned
`
`16
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`such that each element receives a corresponding one of said spectral
`
`channels, as recited by claim 1. Pet. 26–27.
`
`In addition to arguing that Bouevitch discloses the “continuously
`
`controllable” limitation of claim 1, Petitioner also identifies descriptions in
`
`Smith and Lin as corresponding to this limitation. Pet. 29. Patent Owner’s
`
`unsupported argument that Smith does not disclose the “continuously
`
`controllable” limitation is not persuasive on the present record. See Prelim.
`
`Resp. 44–45. Moreover, Patent Owner has not disputed that Lin describes
`
`“continuously controllable,” as recited by claim 1. See id. at 44, n.4.
`
`With respect to the requirement of claim 1 that such beam-deflecting
`
`elements be continuously controllable “in two dimensions,” Petitioner relies
`
`on the description in Smith of a “multi-wavelength…optical switch
`
`including an array of mirrors tiltable about two axes, both to control the
`
`switching and to provide variable power transmission.” Pet. 31, quoting Ex.
`
`1004, Abstract. In light of Petitioner’s analysis, we are not persuaded by
`
`Patent Owner’s argument that the Petition should be denied for failure “to
`
`determine the scope of the prior art and independently ascertain differences.”
`
`See Prelim. Resp. 2.
`
`With respect to a rationale for combining Bouevitch and Smith,
`
`Petitioner contends the use of the two-axis mirror of Smith in Bouevitch:
`
`(1) is a simple substitution of one known element for another yielding
`
`predictable results, (2) is the use of a known technique to improve similar
`
`devices, (3) would be obvious to try as there are only two options for tilting
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`17
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`MEMS mirrors: one-axis and two-axis mirrors, and (4) would be motivated
`
`to reduce crosstalk in attenuation and to increase port density. Pet. 20–21.6
`
`Petitioner also contends that several reasons support the addition of
`
`Lin’s continuous, analog control to the asserted combination, including
`
`interchangeability with discrete-step mirrors and more precision in matching
`
`the optimal coupling value. Pet. 30.
`
`Patent Owner argues that Petitioner has not explained how Bouevitch
`
`and Smith could be combined without changing the principles of operation
`
`of one or both references. Prelim. Resp. 30. In particular, Patent Owner
`
`argues that because Bouevitch uses a single axis MEMS array, it does not
`
`rely on angular misalignment to attenuate power and, therefore, does not
`
`suffer from crosstalk. Id. at 31. Moreover, Patent Owner asserts that
`
`replacing a single axis mirror with a two-axis mirror would not be a simple
`
`substitution, and argues that Bouevitch teaches away from such a
`
`substitution because it treats angular displacement as disadvantageous. Id. at
`
`31–33 (contending “Petitioner’s allegation is technically flawed”).
`
`At this stage of the proceedings, absent additional supporting
`
`evidence, we are not persuaded by Patent Owner’s attorney arguments and
`
`credit the testimony of Petitioner’s declarant, Mr. Marom. Accordingly,
`
`based on the information presented, Petitioner has demonstrated a
`
`reasonable likelihood that it would prevail in showing claim 1 unpatentable
`
`as obvious over Bouevitch, Smith, and Lin.
`
`
`6 Petitioner also argues, without citing authority, that Patent Owner admitted
`the “combinability” of references during prosecution, and that such
`admission applies to the references identified by Petitioner in “the identical
`technology area.” Pet. 22–23. We find no such admission.
`18
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`IPR2014-01166
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`2. Claims 2–6, 9–11, 13, and 15–22.
`
`
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`In addition to addressing the elements of claim 1, Petitioner also
`
`identifies how claims 2–6, 9–11, 13, and 15–22 would have been obvious
`
`over Bouevitch, Smith, and Lin, as supported by the declaration of Mr.
`
`Marom. Pet. 35–60. Patent Owner has not raised additional arguments with
`
`regard to the additional challenged claims beyond those addressed above
`
`with respect to claim 1. Based on the information presented, Petitioner has
`
`demonstrated a reasonable likelihood that it would prevail in showing claims
`
`2–6, 9–11, 13, and 15–22 unpatentable as obvious over Bouevitch, Smith,
`
`and Lin.
`
`D.
`
`Asserted Obviousness Over Bouevitch, Smith, Lin, and Dueck
`
`Petitioner contends claim 12 would have been obvious over
`
`Bouevitch, Smith, Lin, and Dueck. Claim 12 recites the device of claim 1,
`
`wherein the wavelength-selective device comprises a device selected from
`
`the group consisting of ruled diffraction gratings, holographic diffraction
`
`gratings, echelle gratings, curved diffraction gratings, and dispersing prisms.
`
`Ex. 1001, 14:63–67. Petitioner contends that Dueck discloses ruled
`
`diffraction gratings, as claimed. Pet. 48. Petitioner further asserts that it
`
`would have been obvious to try Dueck’s ruled diffraction gratings in the
`
`devices of Bouevitch and Smith because it represents the “best mode” of
`
`separating wavelengths in WDM devices. Id. at 48–49. Based on the
`
`information presented, Petitioner has demonstrated a reasonable likelihood
`
`that it would prevail in showing claim 12 unpatentable as obvious over
`
`Bouevitch, Smith, Lin, and Dueck.
`
`19
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`E.
`
`Additional Grounds of Unpatentability
`
`The patent rules promulgated for AIA post-grant proceedings,
`
`including those pertaining to institution, are “construed to secure the just,
`
`speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
`
`§ 42.1(b); see also 35 U.S.C. § 316(b) (regulations for AIA post-grant
`
`proceedings take into account “the efficient administration of the Office”
`
`and “the ability of the Office to timely complete [instituted] proceedings”).
`
`Therefore, we exercise our discretion and, for reasons of administrative
`
`necessity to ensure timely completion of the instituted proceeding, do not
`
`institute a review limited to the grounds asserting unpatentability of claims
`
`1–6, 9–13, and 15–22 as obvious over Bouevitch and Smith; claim 12 as
`
`obvious over Bouevitch, Smith, and Lin; and claim 12 as obvious over
`
`Bouevitch, Smith, and Dueck. See 37 C.F.R. § 42.108(a).
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that inter partes review of U.S. Patent No. RE42,368 is
`
`instituted in IPR2014-01166 with respect to the following grounds of
`
`unpatentability:
`
`(1) claims 1–6, 9–11, 13, and 15–22 as obvious over Bouevitch,
`
`Smith, and Lin under 35 U.S.C. § 103(a); and
`
`(2) claims 12 as obvious over Bouevitch, Smith, Lin, and Dueck under
`
`35 U.S.C. § 103(a);
`
`FURTHER ORDERED that no ground other than those specifically
`
`instituted above is authorized for the inter partes review; and
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`20
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`IPR2014-01166
`Patent RE42,368
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
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`partes review of U.S. Patent No. RE42,368 is hereby instituted in IPR2014-
`
`01166, commencing on the entry date of this Order, and pursuant to 35
`
`U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the
`
`institution of a trial.
`
`
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`21
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`IPR2014-01166
`Patent RE42,368
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`For PETITIONER:
`
`Wayne O. Stacy
`Matthew J. Leary
`COOLEY LLP
`wstacy@cooley.com
`CapellaCisco@cooley.com
`
`For PATENT OWNER:
`
`Robert Greene Sterne
`Jon E. Wright
`Jason D. Eisenberg
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rsterne-PTAB@skgf.com
`jwright-PTAB@skgf.com
`jasone-PTAB@skgf.com
`
`22
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`
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