Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CISCO SYSTEMS, INC.
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`____________________
`
`Case IPR2014-01166
`Patent RE42,368
`____________________
`
`
`PATENT OWNER RESPONSE TO THE PETITION
`
`

`
`Case IPR2014-01166 of
`U.S. Patent No. RE42,368
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND ............................................................................................. 9
`
`I.
`
`II.
`
`A. Optical Circulators Limited the Scalability of Optical Switches .......... 9
`
`B.
`
`C.
`
`The ’368 Patent Discloses a Scalable ROADM with Multiple Ports .11
`
`Claims ..................................................................................................14
`
`III. CLAIMS 1-6, 9-11, 13, AND 15-22 ARE NOT OBVIOUS OVER THE
`COMBINATION OF BOUEVITCH, SMITH, AND LIN............................16
`
`A.
`
`Petitioner Improperly Conflates Two Disparate Embodiments of
`Bouevitch—Modifying Means 150 and MEMS Array 50—Without
`Providing KSR Rationale .....................................................................17
`
`B.
`
`A POSA Would Not Have Combined Bouevitch and Smith ..............22
`
`1.
`
`2.
`
`3.
`
`Bouevitch Modifying Means is Based on Polarization, such that
`Adding Smith’s Mirrors Would Disrupt Switching ..................25
`
`Using Smith’s Tiltable Mirrors in Bouevitch Would Disrupt
`Bouevitch’s Explicit Teaching of Parallel Alignment ..............26
`
`A POSA Would Not Have Used a More Complex Two-Axis
`Mirror to Achieve the Same Function as a Simpler One-Axis
`Mirror Absent Reliance on Hindsight .......................................30
`
`C.
`
`Bouevitch Does Not Teach or Suggest “Input Port,” “Output Port,”
`and “One or More [Other Ports]” as Recited in Independent Claims 1,
`15, and 16. ...........................................................................................31
`
`1.
`
`2.
`
`Proper Meaning of the Term “Port” as Recited in the ’368
`Patent .........................................................................................33
`
`The ’368 Patent Clearly Disavows Circulator Ports from
`Meeting the Claimed Ports ........................................................34
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`Case IPR2014-01166 of
`U.S. Patent No. RE42,368
`Dr. Marom Understood the Meaning of the Term “Port” as
`Recited in the Claims ................................................................39
`
`Bouevitch at Most has Two Ports .............................................40
`
`3.
`
`4.
`
`D.
`
`The Applied References Do Not Teach or Suggest Beam-Deflecting
`Elements that are Continuously Controllable in Two Dimensions as
`Recited in Independent Claims 1, 15, 16, and 17 ...............................41
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Petitioner Concedes that Bouevitch Does Not Teach or Suggest
`Beam-Deflecting Elements that are Continuously Controllable
`in Two Dimensions ...................................................................42
`
`Smith’s Linear Applied Force Does Not Meet the Claimed
`Continuously Controllable in Two Dimensions .......................43
`
`Lin’s One-Axis Mirror Does Not Meet the Claimed
`Continuously Controllable in Two Dimensions .......................46
`
`Petitioner Fails to Provide KSR Rationale for Combining Smith
`and Lin ......................................................................................50
`
`Bouveitch does not Teach “Imaging Each of Said Spectral
`Channels onto a Corresponding Beam Deflecting Element” as
`Recited in Claim 17. .................................................................51
`
`IV. PETITIONER HAS NOT MET ITS BURDEN OF SHOWING THE
`CLAIM ELEMENT “CONTROLLING . . . BEAM-DEFLECTING
`ELEMENTS . . . SO AS TO COMBINE SELECTED ONES OF SAID
`SPECTRAL CHANNELS INTO AN OUTPUT . . . SIGNAL” AS
`RECITED IN INDEPENDENT CLAIM 17 .................................................52
`
`V. A POSA WOULD NOT HAVE BEEN MOTIVATED TO USE DUECK’S
`DIFFRACTION GRATING IN BOUEVITCH ............................................52
`
`VI. DEPENDENT CLAIMS ................................................................................55
`
`A.
`
`Smith Fails to Teach the Servo Control and Spectral Monitory
`Features of Dependent Claims 3 and 22, and Even if Taught,
`Combining Smith’s Control with Bouevitch is Not Obvious .............55
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`Case IPR2014-01166 of
`U.S. Patent No. RE42,368
`Bouevitch fails to teach the “focusing” feature of claims 11 and 22. .55
`
`B.
`
`VII. SMITH IS NOT PRIOR ART TO THE ’368 PATENT BECAUSE THE
`PORTIONS OF SMITH PETITIONER RELIES ON ARE NOT ENTITLED
`TO SMITH’S EARLIEST § 102(E) DATE ..................................................56
`
`VIII. CISCO FAILS TO DISCLOSE ALL REAL PARTIES IN INTEREST ......59
`
`IX. CONCLUSION ..............................................................................................59
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`Case IPR2014-01166 of
`U.S. Patent No. RE42,368
`TABLE OF AUTHORITIES
`
`Cases
`
`Alloc, Inc. v. Int’l Trade Comm’n,
`342 F.3d 1361 (Fed. Cir. 2003) .............................................................. 34, 35
`
`Application of Lund, 376 F.2d 982 (CCPA 1967) ...................................................58
`
`Boston Scientific Scimed, Inc. v. Cordis Corp.,
`554 F.3d 982 (Fed. Cir. 2009) .......................................................................17
`
`In re Chaganti,
`554 F. App’x 917 (Fed. Cir. 2014) ................................................................17
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007).......................................................................................17
`
`Nat’l Envm’t Prodts. Ltd v. Dri-Steem Corp.,
`IPR2014-01503 (P.T.A.B. 2015) ...................................................................17
`
`SciMed Life Sys., Inc. v. Advances Cardiovascular Sys., Inc.,
`242 F.3d F.3d 1337 (Fed. Cir. 2001) .............................................................34
`
`Securus Techs, Inc. v. Global Tel*Link Corp. Case IPR2015-00153
`(PTAB May 1, 2015) .....................................................................................56
`
`Statutes
`
`§ 102(e) ....................................................................................................................56
`
`§ 119(e) ....................................................................................................................56
`
`35 U.S.C. § 120 ........................................................................................................56
`
`35 U.S.C. § 312 ........................................................................................................59
`
`Other Authorities
`
`M.P.E.P. § 211 .........................................................................................................56
`
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`Case IPR2014-01166 of
`U.S. Patent No. RE42,368
`
`Ex. No.
`2001
`2002
`
`
`
`
`2005
`
`EXHIBIT LIST
`
`Description
`Provisional Patent Application No. 60/267,285. (“’285 Provisional”)
`Transcript of Patent Trial and Appeal Board Teleconference in Case
`IPR2014-01166, Thursday, March 5, 2015.
`2003 Affidavit of Nicholas J. Nowak in Support of Pro Hac Vice Admission.
`2004 Declaration of Dr. Alexander V. Sergienko in Support of the Patent
`Owner Response. (“Sergienko Dec.”)
`Transcript of Deposition of Dan M. Marom, Ph.D. (“Marom Depo.
`Tr.”)
`2006 Capella Photonics Launches Dynamically Reconfigurable Wavelength
`Routing Subsystems, Offering Unprecedented Operating Cost Savings
`and Flexibility for Telecom Service Providers, BUSINESS WIRE (June 2,
`2003, 8:16 AM),
`http://www.businesswire.com/news/home/20030602005554/en/Capella
`-Photonics-Launches-Dynamically-Reconfigurable-Wavelength-
`Routing. (“Business Wire”)
`2007 Benjamin B. Dingel & Achyut Dutta, Photonic Add-Drop Multiplexing
`Perspective for Next Generation Optical Networks, 4532 SPIE 394
`(2001). (“Dingel”)
`Tze-Wei Yeow, K. L. Eddie Law, & Andrew Goldenberg, MEMS
`Optical Switches, 39 IEEE Comm’n Mag. no. 11, 158 (2001).
`(“Yeow”)
`2009 Clifford Holliday, Components for R-OADMs ’05 (B & C Consulting
`Services & IGI Consulting Inc. 2005). (“Holliday R-OADMs”)
`Patrick B. Chu et al., MEMS: the Path to Large Optical Crossconnects,
`40 IEEE COMM’N MAG. no. 3, 80 (2002). (“Chu”)
`2011 Clifford Holliday, Switching the Lightwave: OXC’s – The Centerpiece
`of All Optical Network (IGI Consulting Inc. & B & C Consulting
`Services 2001). (“Holliday OXC”)
`2012 An Vu Tran et al., Reconfigurable Multichannel Optical Add-Drop
`Multiplexers Incorporating Eight-Port Optical Circulators and Fiber
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`2008
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`2010
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`

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`Case IPR2014-01166 of
`U.S. Patent No. RE42,368
`
`Ex. No.
`
`2013
`
`Description
`Bragg Gratings, 13 Photonics Tech. Letters, IEEE, no. 10, 1100
`(2001). (“Tran”)
`Jungho Kim & Byoungho Lee, Bidirectional Wavelength Add-Drop
`Multiplexer Using Multiport Optical Circulators and Fiber Bragg
`Gratings, 12 IEEE Photonics Tech. Letters no. 5, 561 (2000). (“Kim”)
`2014 U.S. Patent No. 6,984,917 (filed Jun. 6, 2002). (“Marom ’917”)
`2015 U.S. Patent No. 6,657,770 (filed Aug. 31, 2001). (“Marom ’770”)
`2016 Max Born & Emil Wolf, Principles of Optics (Cambridge Univ. Press,
`7th ed. 1999). (“Born”)
`2017 U.S. Patent No. 6,543,286 (filed Jun. 19, 2001). (“Garverick”)
`2018 WavePath 4500 Product Brief, Capella,
`http://www.capellainc.com/downloads/WavePath%204500%20Product
`%20Brief%20030206B.pdf. (“WavePath”)
`2019 A. Fraine, D.S. Simon, O. Minaeva, R. Egorov, and A.V. Sergienko,
`Precise Evaluation of Polarization Mode Dispersion by Separation of
`Even- and Odd-Order Effects in Quantum Interferometry, Optics
`Express v. 19, no. 21, 22820 (2011).
`2020 Abdul Al-Azzawi, Fiber Optics: Principles and Practices (CRC Press
`2006). (“Al-Azzawi”)
`2021 Curriculum Vitae of Dr. Alexander V. Sergienko. (“Sergienko CV”)
`2022 U.S. Patent No. 5,629,790 (filed Oct. 18, 1993). (“Neukermans”)
`2023 Dan M. Marom et al., Wavelength-Selective 1 x K Switches Using
`Free-Space Optics and MEMS Micromirrors: Theory, Design, and
`Implementation, 23 J. Lightwave Tech. 4, 1620 (2005). (“Marom”)
`2024 Metallic Coatings, Exsma Optics, available at
`http://eksmaoptics.com/optical-components/coatings/metallic-coatings/.
`(“Exsma”)
`2025 Defendant’s Motion to Transfer Venue, Capella Photonics, Inc. v.
`Cisco Systems, Inc., Case Number: 1:14-cv-20529-PAS, Docket No.
`19, April 4, 2014.
`
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`Case IPR2014-01166 of
`U.S. Patent No. RE42,368
`
`I.
`
`Introduction
`
`Capella’s U.S. Patent No. RE42,368 ( “’368 Patent”) claims at least two
`
`unique features: (1) an optical switch that has an input port, an output port, and
`
`one or more other ports and (2) beam-deflecting elements (e.g., micromirrors) that
`
`are individually and continuously controllable in two dimensions. These features
`
`allow the system to route individual channels from the input port to a selected
`
`output port among the multiple ports. Because the optical system in the ’368 Patent
`
`has multiple ports, the system can route a greater number of individual channels
`
`than systems in the prior art.
`
`Figures 1A and 1B of the ’368 Patent
`
`Input Port, Output Port, and
`One or More [Other] Ports 110
`
`Micromirror Array 103
`
`
`
`
`
`
`Optical switches at the time of the invention did not have multiple ports, as
`
`recited in the ’368 Patent. Existing systems had a single input port and a single
`
`output port. Rather than using multiple ports, conventional systems used peripheral
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`Case IPR2014-01166 of
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`components, such as circulators, to both add optical signals to the input port and to
`
`drop optical signals from the output port. (Ex. 2006, Business Wire.)
`
`A circulator is a device that is used to separate optical signals traveling in
`
`opposite directions. Referencing the schematic reproduced herein, light can both
`
`enter and exit circulator ports 1, 2, and 3. Light entering circulator port 1 is emitted
`
`from circulator port 2, light entering circulator port 2 is emitted
`
`from circulator port 3, and light entering circulator port 3 is
`
`emitted from circulator port 1. Circulators were effective to
`
`separate incoming and outgoing optical signals. But optical systems using
`
`circulators were not scalable to a large number of channels because every added
`
`circulator contributed cost, bulk, and insertion loss (i.e., crosstalk between
`
`channels) to the optical system.
`
`To overcome these limitations, the inventors of the ’368 Patent designed an
`
`add/drop optical switch with multiple ports. This multiple port configuration
`
`differentiated Capella from competitors because Capella’s system was
`
`reconfigurable and scalable to a large number of channels. (See Ex. 1001, ’368
`
`Patent, 5:56-58; FIG. 1A (capable of seamlessly adding a port 110-N to the array
`
`of ports 110). See also Ex. 2006, Business Wire, p. 2 (“The introduction of
`
`dynamic reconfigurability will enable service providers to drastically reduce
`
`operating expenses associated with planning . . . by offering remote and dynamic
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`Case IPR2014-01166 of
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`reconfigurability.”); Ex. 2009, Holliday R-OADMs, p. 61 (“Capella is the only
`
`company to offer a 10-fiber port solution, i.e., one input, one express output, and 8
`
`service ports.”); Ex. 2018, WavePath, pp. 1, 4; Ex. 2004, Sergienko Dec., ¶ 53.)
`
`Petitioner attempts to meet Capella’s configuration by piecing together
`
`elements from three main references: (1) U.S. Patent No. 6,498,872 to Bouevitch et
`
`al. (“Bouevitch”); (2) U.S. Patent No. 6,798,941 to Smith et al. (“Smith”); and (3)
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`U.S. Patent No. 5,661,591 to Lin et al. (“Lin”). The asserted combination,
`
`however, is problematic for the following reasons:
`
`Petitioner conflates disparate embodiments of Bouevitch without providing
`
`KSR rationale. And fundamentally, the separate embodiments are not combinable.
`
`Petitioner points to Bouevitch Figure 5 and Bouevitch Figure 11 (annotated figures
`
`reproduced below) when arguing that Bouevitch explicitly discloses every element
`
`of the independent claims except for the use of mirrors rotatable in two axes.
`
`Bouevitch Figure 5 and Portion of Figure 11 Annotated to Show Different
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`Reflection Angles
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`Case IPR2014-01166 of
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`Petitioner errs in combining these two embodiments because the
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`embodiments were designed to operate in entirely different optical configurations
`
`and to perform entirely different functions. The Figure 5 embodiment is used in an
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`optical system configured to function as a dynamic gain equalizer (“DGE”) to
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`control power attenuation. The Figure 11 embodiment is used in an optical system
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`configured to function as a configurable optical add/drop multiplexer (“COADM”)
`
`to perform switching. The embodiments are also different because the Figure 5
`
`embodiment uses multiple structures to control a light beam using polarization,
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`while the Figure 11 embodiment is a plain mirror. Further, the embodiments are
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`not interchangeable because as shown in the annotations to Figures 5 and 11, the
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`Figure 5 embodiment operates with input and output light beams in parallel, while
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`the Figure 11 embodiment reflects an input light beam according to the incident
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`angle of reflection. Contrary to Petitioner’s contentions, a POSA could not have
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`plugged the Figure 5 embodiment into the optical system shown in Figure 11.
`
`Petitioner also errs because Bouevitch and Smith are not combinable.
`
`Petitioner contends that using Smith’s two-axis micromirror in Bouevitch would
`
`have been a simple substitution, but Petitioner fails to explain how to combine the
`
`references or how to reconcile technical differences between Bouevitch and Smith.
`
`For example, Capella’s expert Dr. Sergienko raises technical problems that would
`
`result when combining Bouevitch and Smith. Capella also asked Dr. Marom,
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`Case IPR2014-01166 of
`U.S. Patent No. RE42,368
`Petitioner’s expert, to explain some of the technical challenges that a POSA would
`
`have considered when designing a functional micromirror. Dr. Marom explained
`
`that a POSA would have considered numerous variables. Dr. Marom’s explanation
`
`spanned five pages of the deposition transcript and covered variables including
`
`temperature, orientation, moisture, oxide buildup, and stress of metal components
`
`over time. Despite knowing that a POSA would have considered these variables,
`
`Petitioner does not address any of them when blankly calling the substitution
`
`“simple.”
`
`Contrary to Petitioner’s contentions, this case is technologically complex. As
`
`the Board can glean from comparing the applied references, Dr. Sergienko’s expert
`
`declaration, Dr. Marom’s explanations during the deposition, and Dr. Marom’s
`
`own patent on a two-dimensional micromirror, Petitioner over simplifies issues and
`
`leaps to conclusions on combinability. As Dr. Marom said, “it’s a small device in
`
`the end but it’s got a lot of engineering disciplines put into it [from] [e]lectrical
`
`engineering, mechanical engineering, physics, [and] packaging technology.” (Ex.
`
`2005, Marom Depo. Tr., 222:13-19.) Petitioner’s failure to adequately explain how
`
`the references are combinable is fatal to the instituted grounds, so the Board should
`
`uphold patentability of all instituted claims.
`
`Additionally, the Board should uphold patentability of all instituted claims
`
`because the asserted combination does not disclose each and every claim element.
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`The first reference, Bouevitch, discloses an optical system comprising one
`
`input port and one output port. Like the prior art systems that are described in the
`
`’368 Patent, Bouevitch uses peripheral circulators to add optical signals to the
`
`input port and to drop optical signals from the output port. To compare the
`
`collimators that serve as ports in the ’368 Patent to circulators in Bouevitch, Figure
`
`1A of the ’368 Patent and Figure 11 of Bouevitch are reproduced below.
`
`
`
`Figure 1A of the ’368 Patent
`
`
`
`
`
`Figure 11 of Bouevitch
`
`
`
`
`Petitioner contends that the circulator ports in Bouevitch read on the claimed
`
`“input port,” “output port,” and “one or more [other] ports.” But such interpretation
`
`is inconsistent with the ’368 Patent, the ’368 Patent’s earliest provisional
`
`application, and the underlying motivation to design an optical switch scalable to a
`
`large number of channels. The ’368 Patent and the earliest provisional application
`
`distinguish circulators from the claimed “ports” and emphasize that conventional
`
`optical systems could not scale to a large number of channels because the
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`Case IPR2014-01166 of
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`conventional optical systems utilized circulators. The ’368 Patent explicitly labels
`
`the ports “collimators” and says throughout the specification that collimators serve
`
`as the ports. The ports in the ’368 Patent are not circulator ports. Construing the
`
`claimed ports to read on optical circulator ports is contrary to the ’368 Patent and
`
`undermines the capabilities of the ’368 Patent brought to the industry.
`
`The combination of references also does not teach or suggest beam-
`
`deflecting elements that are continuously controllable in two dimensions, as recited
`
`in all independent claims. For this claim element, Petitioner uses the second and
`
`third references, Smith and Lin. Neither Smith nor Lin, however, teaches beam-
`
`deflecting elements that are continuously controllable in two dimensions.
`
`Petitioner first says Smith teaches continuous control because Smith teaches
`
`analog control. But Smith, along with several other patent applications and patents
`
`in the Smith family, indicates that the Smith mirror operates under step-wise digital
`
`control (i.e., not analog control).
`
`Petitioner then says Lin teaches continuous control. But as recognized by
`
`both Dr. Sergienko and Dr. Marom, Lin does not teach or suggest beam-deflecting
`
`elements that are continuously controllable in two dimensions because Lin only
`
`shows a mirror rotatable along one axis (i.e., control in only one dimension).
`
`Even more problematic than the shortcomings of Smith and Lin, Petitioner
`
`provides no KSR rationale for combining Smith and Lin or for combining both
`
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`references with Bouevitch. Because Petitioner fails to show that the combination
`
`teaches or suggests beam-deflecting elements that are continuously controllable in
`
`two dimensions or that a POSA would have been motivated to combine the
`
`references, the Board should uphold patentability of all instituted claims.
`
`Further, the Board should uphold patentability of all instituted claims
`
`because the sections of Smith that Petitioner relies on are not prior art to the ’368
`
`Patent. The sections of Smith that Petitioner relies on do not have written support
`
`that pre-dates the ’368 patent’s effective filing date. Every ground improperly
`
`relies on these descriptions of Smith, so the Board should uphold the patentability
`
`of all grounds on this basis.
`
`Finally, the Board should deem the Petition incomplete because Petitioner
`
`fails to identify all real parties in interest (“RPI”). This inter partes review is one
`
`of four parallel attacks on the ’368 Patent. (See IPR2015-00726; IPR2015-00731;
`
`IPR2015-00816.) The attacks are made by Petitioner’s optical switch supplier and
`
`different combinations of Petitioner’s district court co-defendants. Since
`
`Petitioner’s supplier is obligated to indemnify Petitioner under California law and
`
`the co-defendants are bound by court order on the estoppels in this inter partes
`
`review, Petitioner’s supplier and other co-defendants are interested parties.
`
`Because the multiple petitioners attempt to circumvent RPI to have four
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`opportunities to invalidate the ’368 Patent, the Board should find that the Petition
`
`is incomplete.
`
`II. Background
`At the time of the effective filing date—March 19, 2001—the number one
`
`concern for fiber optic carriers was the ability to provide an optical switch scalable
`
`to a large number of channels. (See Ex. 2008, Yeow, p. 163 (“[O]ptical switches
`
`need the capability to scale in order to manipulate the increased number of
`
`wavelengths. MEMS-based optical switches must incorporate this key feature to
`
`gain widespread acceptance of the carriers.”); Ex. 2010, Chu, p. 81 (“scalability is
`
`a paramount concern”); Sergienko Dec., ¶¶ 44, 50.) Providing a scalable switch
`
`was such an important concern because the demand for fiber optics communication
`
`was increasing, even as much as 400% per year. (See Ex. 2011, Holliday OXC, p.
`
`18; Sergienko Dec., ¶ 44. See also ’368 Patent, 1:32-36 (“there is a growing
`
`demand for optical components and subsystems that enable the fiber-optic
`
`communications networks to be increasingly scalable, versatile, robust, and cost-
`
`effective”).)
`
`A. Optical Circulators Limited the Scalability of Optical Switches
`Optical switches were unable to meet increasing demand because optical
`
`switches were typically limited to two ports. (Sergienko Dec., ¶ 45.) Optical
`
`switches required all signals to enter the optical switch on a single fiber and exit
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`Case IPR2014-01166 of
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`the optical switch on a single fiber (i.e., two ports). (See ’368 Patent, 1:59-63; Ex.
`
`1008, ’217 Provisional, p. 2; Sergienko Dec., ¶ 48.) An additional means was
`
`required to add optical signals to the single input fiber and to drop optical signals
`
`from the single output fiber. (See ’368 Patent, 1:59-63; ’217 Provisional, p. 2;
`
`Sergienko Dec., ¶ 48.)
`
`Optical circulators often served as the additional means to add and drop
`
`optical signals. (See ’368 Patent, 1:59-2:2; ’217 Provisional, p. 2; Sergienko Dec.,
`
`¶ 45.) Despite having the capability to add and drop signals, circulators increased
`
`the physical size of a system, contributed to optical loss, and increased costs. (See
`
`Ex. 2007, Dingel, p. 401; Sergienko Dec., ¶¶ 46-47.)
`
`Around the invention date of the ’368 Patent, one attempt to meet increasing
`
`demand was to concatenate optical switches (i.e., connecting multiple optical
`
`switches in a chain). (See ’368 Patent, 1:59-63; Sergienko Dec., ¶ 47.) However,
`
`concatenating optical switches substantially added bulk and cost. (Sergienko Dec.,
`
`¶ 47.) Other inventors were attempting to add circulator ports to circulators. (See,
`
`e.g., Ex. 2012, Tran, p. 1100 (disclosing a circulator with eight circulator ports);
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`Ex. 2013, Kim, p. 561 (disclosing a circulator with six circulator ports). Sergienko
`
`Dec., ¶ 47.) Systems using complex circulators, however, still had limited
`
`scalability because the circulators were bulky, expensive, and resulted in insertion
`
`loss. (Sergienko Dec., ¶ 47.) The industry needed a system that eliminated optical
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`circulators while providing an optical switch scalable to a large number of
`
`channels. (See ’368 Patent, 1:32-36; Sergienko Dec., ¶ 47.)
`
`The ’368 Patent Discloses a Scalable ROADM with Multiple Ports
`
`B.
`The inventors of the ’368 Patent recognized the limitations of circulator-
`
`based optical switches. (See ’368 Patent, 2:49-57, 3:45-46; Sergienko Dec., ¶¶ 48,
`
`51.) To address the problem of limited scalability, the inventors disclosed a
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`multiple port system for optical switching. (See ’368 Patent, 5:51-58 (“[The]
`
`underlying architecture is intrinsically scalable to a large number of channel
`
`counts.”); Sergienko Dec., ¶¶ 50-54.) As stated in the ’368 Patent, “the underlying
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`OADM architecture thus presented is intrinsically scalable and [is a system that]
`
`can be readily extended.” (’368 Patent, 5:36-40.)
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`The inventors of the ’368 Patent found that continuous control of beam-
`
`deflecting elements could enable reflection to multiple output ports without using
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`circulators. (See ’368 Patent, 4:7-14; Sergienko Dec., ¶ 52.) The inventors aligned
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`a plurality of ports, a diffraction grating, a lens, and a micromirror array in a
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`configuration capable of directing an input light beam to multiple output ports.
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`(See, e.g., ’368 Patent, FIG. 1A; Sergienko Dec., ¶ 52.) The configuration
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`disclosed in the ’368 Patent not only enabled dynamic switching but also reduced
`
`the number of components required to scale the system. (Sergienko Dec., ¶ 53.)
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`For example, adding a port 110-N to the array of ports 110 could seamlessly
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`accommodate an additional input to the system or an additional output from the
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`system. (See ’368 Patent, FIG. 1A, 2A, 2B, 3; Sergienko Dec., ¶¶ 52, 53, 56. See
`
`also Ex. 2009, Holliday R-OADMs, p. 61 (“Capella’s WavePath product line
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`[(which uses the technology disclosed in the ’368 Patent)] enables system
`
`architects to design optical platforms that offer dynamic and remote
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`reconfigurability, thus greatly simplifying the engineering and provisioning of
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`optical networks.”); Ex. 2018, WavePath, pp. 1, 4 (showing that the WavePath
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`product line is covered by the ’368 Patent); Sergienko Dec., ¶ 53.)
`
`The system in Figures 1A and 1B (both reproduced below) depict the
`
`claimed features of the ’368 Patent. The system has an array of micromirrors that
`
`are individually and continuously controllable to reflect individual channels into a
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`selected output port among the multiple ports. (See, e.g., ’368 Patent, Abstract,
`
`FIG. 1A.) The system also has a diffraction grating 101 to demultiplex and
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`multiplex a light beam and a focusing lens 102 to focus the light beam’s
`
`wavelengths onto the array of micromirrors 103. (Id. at 6:52-63.) Further, the
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`system has, as circled in red, multiple collimators 110 serving as the structure for
`
`the input and output ports. (Id.) The ’368 Patent describes a collimator as
`
`“typically in the form of a collimating lens (such as a GRIN lens) and a ferrule-
`
`mounted fiber packaged together in a mechanically rigid stainless steel (or glass)
`
`tube.” (Id. at 9:17-20.)
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`Figures 1A and 1B of the ’368 Patent
`
`
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`In the system, a multi-wavelength light beam is first sent through the input
`
`
`
`
`
`port. (See ’368 Patent, 6:64-7:11; Sergienko Dec., ¶ 57.) The input light beam
`
`impinges on the diffraction grating to demultiplex the light beam into individual
`
`wavelengths. (See ’368 Patent, 6:64-7:11; Sergienko Dec., ¶ 57.) The individual
`
`wavelengths then diffract off the diffraction grating toward the lens. (See ’368
`
`Patent, 6:64-7:11; Sergienko Dec., ¶ 57.) And the lens focuses the individual
`
`wavelengths onto different mirrors along the micromirror array. (See ’368 Patent,
`
`6:64-7:11; Sergienko Dec., ¶ 57.)
`
`A unique feature of the ’368 Patent is that each micromirror is individually
`
`and continuously controllable in two dimensions. (See ’368 Patent, 8:21-27, 9:8-9;
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`Sergienko Dec., ¶ 58.) The mirror’s controllability enables the system to
`
`dynamically direct light to the multiple output ports. (See ’368 Patent, 8:21-27,
`
`9:8-9; Sergienko Dec., ¶ 58.) So, because the individual wavelengths are focused
`
`onto different mirrors along the micromirror array and because each micromirror is
`
`individually and continuously controllable, the tilt of each micromirror reflects the
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`individual wavelengths back along a selected path to a desired output port. (See
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`’368 Patent, 6:64-7:11; Sergienko Dec., ¶¶ 58, 59.)
`
`The individually and continuously controllable mirrors are used not only for
`
`switching but also for power control. (See ’368 Patent, 8:28-36; Sergienko Dec., ¶
`
`62.) The system controls power by altering the coupling efficiency of the spectral
`
`channels into the respective output ports. (See ’368 Patent, 8:28-36; Sergienko
`
`Dec., ¶ 62.) The coupling efficiency was defined as the ratio of the amount of
`
`optical power that is coupled into the output port’s fiber core to the total amount of
`
`optical power from the light beam. (’368 Patent, 8:31-36; Sergienko Dec., ¶ 62.)
`
`To monitor power, embodiments of the ’368 Patent utilize servo-control.
`
`(’368 Patent, 4:47-56, 11:52-57; Sergienko Dec., ¶¶ 63, 64.) An embodiment of the
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`servo-control assembly is depicted in Figure 4A. (See ’368 Patent, FIG. 4A;
`
`Sergienko Dec., ¶ 63.)
`
`C. Claims
`The elements of the ’368 Patent are incorporated into the claims. The’368
`
`Patent claims recite the following features with emphasis added:
`
`Claim 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;
`
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`. . . 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.
`
`
`
`Claim 15. An optical add-drop apparatus, comprising
`
`an input port . . . ;
`
`an output port . . . ;
`
`one or more drop ports . . . ;
`
`. . . and
`
`a spatial array of beam-deflecting 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, whereby a subset of said spectral channels is directed to said
`drop ports.
`
`
`
`Claim 16. An optical add-drop apparatus, comprising
`
`an input port . . . ;
`
`an output port . . . ;
`
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`one or more add ports . . . ;
`
`. . . 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 dimensio