UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Cisco Systems, Inc.
`Petitioner
`
`v.
`
`Capella Photonics, Inc.
`Patent Owner
`
`Patent No. RE42,368
`Filing Date: June 15, 2010
`Reissue Date: May 17, 2011
`
`Title: RECONFIGURABLE OPTICAL ADD-DROP MULTIPLEXERS WITH
`SERVO CONTROL AND DYNAMIC SPECTRAL POWER MANAGEMENT
`CAPABILITIES
`
`
`
`Inter Partes Review No. 2014-01166
`
`PETITIONER'S REPLY TO PATENT OWNER’S RESPONSE
`
`

`
`INTRODUCTION............................................................................................................ 1 
`RESPONSES TO PATENT OWNER’S ARGUMENTS ............................................. 1 
`Petitioner does not “conflate two disparate embodiments of Bouevitch” -
`A. 
`Bouevitch Fig. 11 in view of Smith renders the claims obvious without
`any combination with Bouevitch Fig. 5 [Corresponds to Response § III.A] ......... 1 
`It was obvious to use 2-axis mirrors, including by combining Bouevitch
`Fig. 11 with Smith [Corresponds to Response § III.B].......................................... 2 
`Bouevitch teaches a MEMS structure for switching in Fig. 11 that
`1. 
`also performs power control using the same angular misalignment
`principle that Smith uses ............................................................................ 2 
`PO mischaracterizes the test for obviousness ............................................ 6 
`Engineering considerations are not a legal reason to block
`combining Bouevitch and Smith, and nothing prevented the POSA
`from substituting 2-axis for 1-axis mirrors ................................................ 7 
`PO did not deny that 2-axis mirrors were obvious to try nor did PO
`deny Petitioner’s other obviousness rationales .......................................... 8 
`PO proved no secondary considerations of non-obviousness .................. 10 
`5. 
`Bouevitch teaches input, output and other ports [Corresponds to Response
`§ III.C].................................................................................................................. 10 
`There is no dispute that the ordinary and customary meaning of
`1. 
`ports includes circulator ports .................................................................. 11 
`The patentee did not redefine “ports” ...................................................... 11 
`The patentee did not expressly disavow circulator ports ......................... 11 
`If anything, the patent expressly encompasses circulators ...................... 12 
`The patentee did not implicitly disavow circulator ports ......................... 13 
`a. 
`PO lacks expert support for its disavowal claim .......................... 13 
`b. 
`Dr. Marom did not imply that “port” excludes circulators
`[corresponds to Response § III.C.3] ............................................ 14 
`Circulators do not limit scalability ............................................... 14 
`c. 
`Circulators do not add significant size, cost or loss ..................... 15 
`d. 
`It was obvious to use continuous mirror control in both axes [Corresponds
`to Response § III.D] ............................................................................................. 16 
`PO fails to deny that continuous control was known and obvious to
`1. 
`try ............................................................................................................. 17 
`
`2. 
`3. 
`
`4. 
`
`2. 
`3. 
`4. 
`5. 
`
`B. 
`
`C. 
`
`D. 
`
`
`
`
`I. 
`II. 
`
`
`
`ii
`
`

`
`Lin teaches continuous control ................................................................ 18 
`2. 
`Each of PO’s arguments about Lin conflict with the facts ...................... 19 
`3. 
`Smith teaches continuous control ............................................................ 21 
`4. 
`Bouevitch teaches continuous control ..................................................... 22 
`5. 
`By teaching “focusing,” the prior art also teaches “imaging” for claims 17
`& 21 (as well as the “focusing” feature of claim 11) [Corresponds to
`Response §§ III.D.5 and VI.B] ............................................................................ 22 
`ROADM “Add” operations disclose “combin[ing] selected… channels”
`element of claim 17 [Corresponds to Response § IV] ......................................... 23 
`It was obvious to use any of the wavelength-selective devices recited in
`claim 12, including Dueck’s diffraction gratings [Corresponds to
`Response § V] ...................................................................................................... 23 
`It was obvious to use Smith’s servo control in Bouevitch [Corresponds to
`Response § VI.A] ................................................................................................. 24 
`Smith is prior art to the ‘368 patent [Response § VII] ......................................... 24 
`PO cites no evidence or law for its unsupported RPI theory [Corresponds
`to Response § VIII] .............................................................................................. 25 
`
`E. 
`
`F. 
`
`G. 
`
`H. 
`
`I. 
`J. 
`
`
`
`iii
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`
`
`
`
`
`
`

`
`List of Exhibits Cited in this Reply
`
`
`
`Exhibit 1039: June 30, 2015, Deposition Transcript of Dr. Alexander V. Sergienko
`(“S. Tr.”)
`
`Exhibit 1040: Abdul Al-Azzawi, Fiber Optics: Principles and Practices (CRC
`Press 2006). (“Al-Azzawi”) (containing additional excerpts to the
`copy produced by Patent Owner at Ex. 2020)
`
`Exhibit 1041: U.S. Patent No. 6,950,609 to Marom (“Marom ‘609”)
`
`Exhibit 1042: Rajiv Ramaswami & Kumar N. Sivarajan, Optical Networks: A
`Practical Perspective (Morgan Kaufmann Publishers 2000).
`(“Ramaswami”)
`
`Exhibit 1043: FiberStore.com, Optical Circulators (listed under WDM Optical
`Network->Passive Optical Components->Optical Circulator)
`
`Exhibit 1044: Clifford Holliday, Components for R-OADMs ’05 (B & C
`Consulting Services & IGI Consulting Inc. 2005). (“Updated
`Holliday R-OADMs”) (containing additional excerpts to the copy
`produced by Patent Owner at Ex. 2009)
`
`Exhibit 1045: Clifford Holliday, Switching the Lightwave: OXC’s – The
`Centerpiece of All Optical Network (IGI Consulting Inc. & B & C
`Consulting Services 2001). (“Updated Holliday OXC”) (containing
`additional excerpts to the copy produced by Patent Owner at Ex.
`2011)
`
`Petitioner also incorporates herein all exhibits from the IPR2014-01166 petition.
`
`
`
`iv
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`

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`Case No. 2014-01166 - Atty. D. No. CSCO-001/00US [034855.2014] (RE42,368)
`Petitioner’s Reply to Patent Owner’s Response
`
`I.
`
`INTRODUCTION
`
`The PO has provided nothing to warrant altering the Board’s determination
`
`that Petitioner should prevail on all of the challenged claims. Petitioner addresses
`
`below each of the arguments in the Patent Owner’s Response to the Petition.
`
`II. RESPONSES TO PATENT OWNER’S ARGUMENTS
`A.
`Petitioner does not “conflate two disparate embodiments of
`Bouevitch” - Bouevitch Fig. 11 in view of Smith renders the
`claims obvious without any combination with Bouevitch Fig. 5
`[Corresponds to Response § III.A]
`
`PO argues that Petitioner “appears to rely on” the beam modifying means of
`
`Bouevitch Fig. 5 in addition to Fig. 11. Ex. 2004, ¶ 122. PO contends (1) that Fig.
`
`5 is incompatible with Fig. 11 and Smith, and (2) that “[a]lthough not explicit in
`
`the Petition, Petitioner places modifying means 150 [of Fig. 5] into the
`
`configuration shown in Figure 11.” Resp., 21. Neither contention is accurate. Fig.
`
`5 has nothing to do with the Petition or with the instituted grounds, and Petitioner
`
`does not place Fig. 5 into Fig. 11 or otherwise rely on Fig. 5.
`
`Instead, the instituted combination of Bouevitch and Smith places only the
`
`2-axis MEMS modifying means of Smith into Bouevitch Fig. 11. In that
`
`combination, Fig. 11 discloses a COADM using MEMS mirrors that tilt in one axis
`
`for switching. Smith discloses mirrors that tilt in two axes as a substitute for one-
`
`axis mirrors for both switching and power control in COADMs. Pet., 31-35.
`
`It was obvious to replace Bouevitch’s 1-axis mirrors with Smith’s 2-axis
`
`
`
`1
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`

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`Case No. 2014-01166 - Atty. D. No. CSCO-001/00US [034855.2014] (RE42,368)
`Petitioner’s Reply to Patent Owner’s Response
`
`mirrors in part because both references use the same operating principles for both
`
`optical switching and power control. Those principles are (1) tilting mirrors at
`
`large angles to switch beams from one port to another for COADM (switching)
`
`functions, and (2) tilting at smaller angles to slightly misalign the beams to control
`
`power for DGE (Dynamic Gain Equalization) functions. See Pet. at 33-35, 42-43.
`
`As an example of principle (2), Petitioner cited generally to a passage (7:23-
`
`37) in Bouevitch. Pet., 18. That passage (which happens to mention Fig. 5),
`
`discusses tilting mirrors and misalignment for power control. Bouevitch also
`
`teaches the same general principle in embodiments like Fig. 11 that are unrelated
`
`to Fig. 5. As discussed in § II.B.1, infra, Fig. 11 can operate as a DGE, and as a
`
`DGE, it uses the same principle of misalignment for power control as Smith does.
`
`B.
`
`It was obvious to use 2-axis mirrors, including by combining
`Bouevitch Fig. 11 with Smith [Corresponds to Response § III.B]
`
`PO argues that substituting 2-axis mirrors for 1-axis mirrors was non-
`
`obvious. Resp., 22-30. Those arguments misapply both the law and the teachings
`
`of the prior art. Petitioner addresses each of these problems in detail below.
`
`1.
`
`Bouevitch teaches a MEMS structure for switching in Fig.
`11 that also performs power control using the same angular
`misalignment principle that Smith uses
`
`PO begins by mischaracterizing the combination of Bouevitch+Smith as
`
`involving Fig. 5, and then arguing that Fig. 5’s operating principle is different than
`
`Smith’s. Resp., 3-4. But as previously discussed, Fig. 5 is not relevant to
`2
`
`
`
`

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`Case No. 2014-01166 - Atty. D. No. CSCO-001/00US [034855.2014] (RE42,368)
`Petitioner’s Reply to Patent Owner’s Response
`
`Petitioner’s positions or the institution. § II.A, supra. Figure 11 includes the
`
`relevant disclosure, and it was obvious to combine Bouevitch Fig. 11 with Smith
`
`because both use the same principle of misaligning light beams for power control.
`
`Pet., 33-34. Bouevitch explicitly teaches this principle for Fig. 11, and the
`
`principle is also inherent as PO’s expert agrees. See S. Tr., 145:11-25, 284:18-25.
`
`Bouevitch teaches that the structure of Fig. 11 (a COADM) also works as a
`
`DGE (Dynamic Gain Equalization). As background, Bouevitch discloses both
`
`COADM and DGE embodiments separately for clarity. But as PO’s expert agrees,
`
`the embodiments are “intended to work at the same time as a DGE and a
`
`COADM.” S. Tr., 122:23-123:7. Figures 9 and 11 are one such pair of
`
`embodiments that share a common optical structure. Figure 11 is a “preferred”
`
`COADM embodiment of Fig. 9. Ex. 1003, 14:14-16. Figure 9 is a combined
`
`“DGE/COADM.” Id., 4:50-54.
`
`PO’s expert agrees that Figs. 9 and 11 use the same shared MEMS structure
`
`as a beam “modifying means” for both switching (as a COADM in Fig. 11) and
`
`power control (as a DGE in Fig. 9). Fig. 9 as drawn shows a liquid crystal means,
`
`and PO’s expert agrees that Bouevitch also describes a variant of DGE Fig. 9 that
`
`uses the same MEMS mirror array means of COADM Fig. 11 for power control:
`
`Q … the patent says that you can use the same MEMS modifying
`mirrors in both 9 and 11, even though figure 9 as drawn does not show
`the MEMS device, correct?
`
`
`
`3
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`

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`Case No. 2014-01166 - Atty. D. No. CSCO-001/00US [034855.2014] (RE42,368)
`Petitioner’s Reply to Patent Owner’s Response
`
`
`A That's the statement written in this document, that's correct.
`
`S. Tr., 129:9-16; see also Ex. 1003 at 4:50-54, 12:18-14:4.
`
`When used at the same time for switching and power control, the POSA
`
`understood that the MEMS structure in Figs. 9 and 11 uses larger angular
`
`deflection for switching and smaller deflections to affect misalignment to control
`
`power. E.g., Pet., 33-35; see also Ex. 1028, ¶¶ 94, 71, 43-44. These principles of
`
`operation are identical to Bouevitch and Smith, making the combination of the two
`
`especially obvious.1 Id., 28-29. The operation of Bouevitch Fig. 11 as a DGE (per
`
`Fig. 9) also refutes PO’s claim that Bouevitch “discourages, if not teaches away
`
`from, misalignment to control power.” Resp., 26. Instead, the preferred MEMS
`
`embodiment of Fig. 9 relies upon misalignment when working as a DGE.
`
`PO’s expert agrees that the DGE of Fig. 9 can operate using the identical
`
`structure as the COADM of Fig. 11. S. Tr., 129:17-130:1. He agreed that MEMS
`
`“power control by using angular misalignment” was known in the art. S. Tr.,
`
`268:2-15, 146:20-147:3. He also agreed angular misalignment (i.e., by tilting
`
`mirrors) was the only way the POSA would understand the MEMS in Fig. 9 to
`
`
`1 The petition relies on Smith, not Bouevitch to disclose 2-axis power control. Pet.,
`
`34. Thus, while Bouevitch teaches power control, that teaching is not dispositive
`
`and simply further supports the obviousness of combining the two references.
`
`
`
`4
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`

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`Case No. 2014-01166 - Atty. D. No. CSCO-001/00US [034855.2014] (RE42,368)
`Petitioner’s Reply to Patent Owner’s Response
`
`operate for power control (S. Tr., 145:11-25, 284:18-25; emphasis added):
`
`Q Well, what is your speculation with regard to how one of skill in the
`art would understand MEMS array 50 to perform attenuation in
`figure 9?
`A Well, any attenuation using tilting can be done only by
`misalignment of the beam relative to the port ….
`Q I believe you said, though, that the only way that you would be able
`to perform attenuation using the MEMS array in figure 9 would be
`through angular misalignment of the MEMS, correct?
`A That's correct, in general, in general, from the general knowledge,
`that is correct, but this is not what Bouevitch teaches in his patent.
`
`
`The only point of disagreement was whether Bouevitch explicitly recites the
`
`well known “angular misalignment” technique. S. Tr., 285:2-25. But what a
`
`reference teaches to the POSA is not limited to the result of a word search through
`
`a document for a particular term, and PO’s expert fails to acknowledge the full
`
`extent of Bouevitch’s teachings. See Martin v. Johnson, 454 F.2d 746, 751 (CCPA
`
`1972). The question is what the reference teaches and suggests to the POSA.
`
`To the POSA, Bouevitch explicitly teaches angular misalignment (even if it
`
`does not recite the term verbatim). Ex. 1028, ¶ 71. Bouevitch teaches this principle
`
`through repeated citations to “angular displacement provided by each MEMS
`
`reflector” for Fig. 11. Id.; Ex. 1003, 14:7-13. Because Bouevitch teaches that the
`
`DGE of Fig. 9 controls power using the same MEMS as Fig. 11, the POSA would
`
`understand these statements as an explicit teaching of the same type of angular
`
`misalignment for power control that Smith uses. See Ex. 1028, ¶ 71.
`
`
`
`5
`
`

`
`Case No. 2014-01166 - Atty. D. No. CSCO-001/00US [034855.2014] (RE42,368)
`Petitioner’s Reply to Patent Owner’s Response
`
`
`Even if Bouevitch did not expressly teach angular misalignment, the
`
`principle is inherent because the POSA would recognize that angular misalignment
`
`is necessarily present in the MEMS variant of Fig. 9. See, e.g., Continental Can
`
`Co., USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Specifically,
`
`PO’s expert agreed that the POSA understood that “the only way that you would
`
`be able to perform attenuation using the MEMS array in figure 9 would be through
`
`angular misalignment of the MEMS.” S. Tr., 145:11-25, 284:18-25
`
`PO mischaracterizes the test for obviousness
`
`2.
`PO’s argues that 2-axis mirrors are non-obvious because “re-design is not
`
`plug-and-play as Petitioner makes it seem,” and “redesign is complex.” Resp., 23,
`
`25. PO similarly faults Petitioner’s expert for not teaching “how to extend one axis
`
`MEMS mirror design into a two axis MEMS mirror design.” Resp., 23-24.
`
`PO and its expert argue (wrongly) that combinability essentially requires
`
`blueprints for the physical re-design of a 1-axis system into a 2 axis system. See,
`
`e.g., id.; S. Tr., 36:18-38:17. The law is just the opposite. “The test for
`
`obviousness is not whether the features of a secondary reference may be bodily
`
`incorporated into the structure of the primary reference.” IPR2013-00107, Paper 21
`
`at 19 (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). PO’s “redesign”
`
`argument is legally wrong. Under the proper test for obviousness, Bouevitch and
`
`Smith are analogous references whose teachings would be obvious to combine.
`
`
`
`6
`
`

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`Case No. 2014-01166 - Atty. D. No. CSCO-001/00US [034855.2014] (RE42,368)
`Petitioner’s Reply to Patent Owner’s Response
`
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421 (2007).
`
`3.
`
`Engineering considerations are not a legal reason to block
`combining Bouevitch and Smith, and nothing prevented the
`POSA from substituting 2-axis for 1-axis mirrors
`
`PO claims that the POSA’s attempts to combine technologies like Bouevitch
`
`and Smith would be thwarted by considerations such as “moisture,” changing
`
`temperatures, “varying changes in gravitational forces,” metal “creep,” and “other
`
`environmental conditions.” Ex. 2004 at ¶¶ 111-113; Resp., 23-24. To the
`
`contrary—working through these considerations are at best engineering tasks, not
`
`invention. PO’s expert confirmed that a POSA could overcome the alleged
`
`problems in combining the references. S. Tr., 267:15-25 (“would the person of
`
`ordinary skill that you've identified with her training and with her experience,
`
`would she be able to overcome the problems in paragraph 113? A. Yes.”).
`
`The patentee also confirmed that the POSA would have no problems
`
`substituting 2-axis mirrors for 1-axis mirrors. The ‘368 patent acknowledges that
`
`“a skilled artisan can design an OADM in accordance with the present invention,”
`
`which would include 2-axis OADMS. Ex. 1001, 5:46-48. Further confirming
`
`combinability is the fact the applicant saw no need to provide guidance on how to
`
`perform the 2-axis for 1-axis mirror substitution that the specification states may
`
`be done, and the patent makes no mention any of the issues that the PO claims
`
`prevented that substitution (e.g., “moisture”). Ex. 2004, ¶¶ 111-113; Resp., 23-24.
`
`
`
`7
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`

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`Case No. 2014-01166 - Atty. D. No. CSCO-001/00US [034855.2014] (RE42,368)
`Petitioner’s Reply to Patent Owner’s Response
`
`
`Finally, PO argues that one of Dr. Marom’s patents shows that MEMS were
`
`difficult to design for ROADM applications. Resp., 5, 24. Even if that were true,
`
`2-axis MEMS mirrors were already known to the POSA (S. Tr. 268:10-12, 274:1-
`
`13), and were commercially available (Ex. 1045, 22-23, 26). And MEMS design
`
`has nothing to do with the ‘368 patent claims or whether it was obvious to
`
`substitute 2-axis for 1-axis mirrors. Thus, PO’s “complexity” argument is not
`
`relevant to any KSR inquiry even if it were true. See Resp. at 5.
`
`4.
`
`PO did not deny that 2-axis mirrors were obvious to try nor
`did PO deny Petitioner’s other obviousness rationales
`
`PO attacked the combinability of individual references, but failed to address
`
`the many other rationales for obviousness that Petitioner and its expert analyzed,
`
`e.g., obvious to try, use of a known technique, and explicit motivations. Pet. at 19-
`
`22; see also MPEP § 2143. PO’s expert was not even aware the other rationales
`
`existed. S. Tr., 29:16-25.
`
`These unrebutted rationales are sufficient for the Board to find that
`
`substituting 2-axis mirrors for 1-axis mirrors would have been obvious. The
`
`Board’s institution decision credited Dr. Marom’s testimony regarding the
`
`obviousness of that substitution. Paper 8 at 18. The PO has provided no new
`
`arguments or evidence that should change that decision now.
`
`Petitioner proved “obvious to try”: Dr. Marom testified that there were
`
`
`
`8
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`

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`Case No. 2014-01166 - Atty. D. No. CSCO-001/00US [034855.2014] (RE42,368)
`Petitioner’s Reply to Patent Owner’s Response
`
`only two solutions to the known need to deflect light beams with MEMS: 1-axis or
`
`2-axis. Ex. 1028 at ¶ 45. He said that the POSA “would have a high expectation of
`
`success to try two-axis mirror control in Bouevitch” and that the combination
`
`would be predictable Id.
`
`PO denied none of this. At best, PO argues that the substitution is not
`
`“simple” because, e.g., “redesign is complex.” See Resp., 25; Ex. 2004, 58-59. But
`
`this argument is irrelevant to the KSR analysis. See § II.B.2, supra.
`
`Petitioner proved using 2-axis mirrors as the use of a known technique:
`
`Dr. Marom testified that 2-axis mirrors were known and that Bouevitch and Smith
`
`are comparable devices because both are ROADM applications in the same field
`
`that use the same MEMS devices. Pet. 20-21; Ex. 1028, ¶¶ 42-44; MPEP §
`
`2143(I)(C). He also testified that the POSA could have applied the known 2-axis
`
`technique in Smith to Bouevitch with predictable results. Ex. 1028, ¶¶ 42-44.
`
`PO does not deny that 2-axis mirrors were known, that the references are
`
`comparable, or that using the 2-axis improvement would be predictable. Compare
`
`id. to Ex. 2004, 62-72.
`
`Petitioner proved specific motivations to combine: Dr. Marom testified
`
`that the prior art provided motivations for using 2-axis mirrors such as the benefit
`
`of “a finer-grained movement for power (which was more sensitive to small
`
`changes in mirror angle) [in one axis] than the coarser-grained control that
`
`
`
`9
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`

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`Case No. 2014-01166 - Atty. D. No. CSCO-001/00US [034855.2014] (RE42,368)
`Petitioner’s Reply to Patent Owner’s Response
`
`accommodates the wider-range of potential tilt angles useful for switching [in the
`
`other].” Ex. 1028, ¶ 75.2 Two-axis mirrors also help overcome manufacturing
`
`deviations. Id., ¶ 40. Dr. Marom also testified that port proximity is beneficial, and
`
`that crosstalk is a risk when ports are sufficiently close, so 2-axis mirrors would be
`
`beneficial to reduce that crosstalk. Id., ¶ 74.
`
`PO did not rebut the first two benefits. And PO’s expert agreed generally on
`
`the benefits of port proximity and crosstalk reduction. S. Tr., 249:15-250:2.
`
`PO proved no secondary considerations of non-obviousness
`
`5.
`PO bore the burden of showing secondary considerations. MPEP § 2145.
`
`But PO made no proper showing of commercial sales, success, or praise. And to
`
`the extent PO’s hearsay evidence of press releases is admissible over the hearsay
`
`objection, PO did not address the commercial nexus requirement. In re Huang, 100
`
`F.3d 135, 140 (Fed. Cir. 1996) (“success is relevant…only if there is proof that the
`
`sales were a direct result of the unique characteristics of the claimed invention.”).
`
`PO’s expert also did not connect the claims to any of his alleged long-felt needs for
`
`“extreme reconfigurability” and “dynamic control.” See S. Tr., 34:2-5-36:1. Thus,
`
`Petitioner’s obviousness showings in § II.B.4, supra, remain unrebutted.
`
`C. Bouevitch teaches input, output and other ports [Corresponds
`
`2 PO dropped the argument in its Prelim. Resp. (pp. 18-19) that the ‘368 requires
`
`tilting in both axes simultaneously to control power. See S. Tr., 194:7-196:3.
`
`
`
`10
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`

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`Case No. 2014-01166 - Atty. D. No. CSCO-001/00US [034855.2014] (RE42,368)
`Petitioner’s Reply to Patent Owner’s Response
`
`
`to Response § III.C]
`
`A “circular port” is a “port." PO did not disclaim this ordinary/customary
`
`meaning of “port.” PO’s arguments for a special construction that would exclude
`
`circulator ports conflict with the patent and file history. If anything, far from
`
`disclaiming circular ports, the patent expressly encompasses circulator ports.
`
`1.
`
`There is no dispute that the ordinary and customary
`meaning of ports includes circulator ports
`
`There is no dispute that the “IN,” “OUT DROP,” etc. ports of Bouevitch Fig.
`
`11 meet the ordinary and customary meaning of “port,” and Bouevitch explicitly
`
`refers to them as “ports.” Ex. 1003, 14:27-33. PO’s expert says that the ordinary
`
`meaning of port is a “point of entry or exit of light.” S. Tr., 43:16-23. The ports of
`
`Fig1 11 are points of entry/exit. Ex. 1003, 14:14-36. “Port” is also a generic word
`
`that is meant to encompass multiple types of ports, as shown in text books and
`
`through the testimony of PO’s expert. See, e.g., Ex. 1040 at 127-129 (internal); Ex.
`
`1042 at 113; S. Tr., 42:17-43:23. The term can be limited by adding modifiers
`
`such as “circulator port,” but the patentee did not do so. See id., claim 1.
`
`The patentee did not redefine “ports”
`
`2.
`PO agrees the patentee did not expressly re-define “port.” S. Tr., 52:6-15.
`
`The patentee did not expressly disavow circulator ports
`
`3.
`The PO does not point to any express disavowal of the term port as
`
`including circulator ports. The patent and its file history contain nothing like the
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`broad, unequivocal statements in the two cases PO cites. Resp., 34. Nowhere has
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`the PO pointed to any “expressions of manifest exclusion or restriction,
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`representing a clear disavowal of claim scope” as required by law. Conoco, Inc. v.
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`Energy & Envtl. Int’l., 460 F.3d 1349, 1357 (Fed. Cir. 2006).
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`The PO also appears to have given up on the one allegedly-express
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`disavowal to which it referred in its Preliminary Response. Prelim. Resp., 38-39.
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`The Board concluded that PO’s original argument “misrepresents what is set forth
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`in the ’368 patent, which makes clear that it [a reference to circulators] is
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`contrasting Aksyuk to Tomlinson…, not to the ’368 patent.” Paper 8 at 16.
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`If anything, the patent expressly encompasses circulators
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`4.
`The provisional to which the ‘368 claims priority shows that the purported
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`invention uses “port” generically and encompasses using circulators to provide
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`ports. The provisional says that “[t]hree different OADM architectures disclosed
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`in the present invention are shown in Figures 7-9.” Ex. 1008, 4. And Fig. 9 shows
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`an embodiment where ports are made available through the help of circulators:
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`Reply Figure 1 (Ex.
`1008, Fig. 9
`(annotated))
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`.
`The provisional also refers to the circulators ports in Fig. 9 as “ports.” Id. at 4.
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`The patentee knew how to distinguish between ports with and without
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`circulators if it wanted to. The provisional used terms like “add/drop ports” when
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`referring to ports with circulators and to “physical input/output ports” for ports
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`without circulators. Ex. 1008, 4. Yet when drafting the claims, the patentee
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`avoided the word “physical” and just used the generic terms “input port” and
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`“output port.” Claim 1. The patentee also chose claim terms the provisional used
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`to explicitly include circulators—e.g., “add port” and “drop port.” Claims 15, 16.
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`The patentee did not implicitly disavow circulator ports
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`5.
`PO’s arguments for an implicit disavowal fall far short of carrying the heavy
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`burden required to show such a disavowal. Each PO argument either lacks
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`expert/factual support or conflicts with the facts on the record.
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`a.
`The sole evidence for PO’s claim that the ‘368 patent “manifestly
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`PO lacks expert support for its disavowal claim
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`disclaim[s] the use of circulators” is a single paragraph (¶ 160) in the expert’s
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`declaration. Resp., 35. But in that paragraph the expert merely equivocates that “a
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`POSA would read the ’368 patent as teaching away from or at the least
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`discouraging the use of circulators.” Ex. 2004, ¶ 160; emphasis added.
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`“Discourages” is far short of disavowal. PO also claims that the patent “discusses
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`providing a scalable system without circulator ports.” Resp., 35. But the only
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`expert evidence PO provides for that claim is a single sentence that simply parrots
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`the Response with no analysis and no supporting cites. Id. (citing Ex. 2004, ¶ 157).
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`b.
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`Dr. Marom did not imply that “port” excludes
`circulators [corresponds to Response § III.C.3]
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`PO notes that Dr. Marom used the term “port” in one of his patents to refer
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`to ports that do not include circulators. Resp. at 39-40. First, pointing to extrinsic
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`evidence cannot support PO’s disavowal position. Second, Dr. Marom uses “port”
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`in other patents to refer to circulators just like those in Bouevitch. E.g., Ex. 1041,
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`6:30-49, Fig. 7. This confirms that port is a broad, generic term.
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`c.
`PO also argues that circulators limit “scalability” to large numbers of
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`Circulators do not limit scalability
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`channels or ports. Resp., 9-11. First, scalability is not relevant to the actual
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`claimed invention. The claim language the patentee chose deliberately excluded
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`scalability by claiming a system with only one input, output and “other” ports. See,
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`e.g., claim 1. Second, the facts show that circulators limit neither type of scaling.
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`As for channels, circulators do not limit scaling. When referring to a
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`circulator-based prior art reference in Fig. 5 of the provisional, the patentee said
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`“this architecture is attractive in the sense that it is compact and scalable to high
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`channel count.” Ex. 1008 at 2, 12. PO’s expert also agreed that Bouevitch (and its
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`use of circulators) did not limit Bouevitch from scaling to many channels. S. Tr.,
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`211:13-212:3; see also id., 208:20-212:11.
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`As for ports, PO also argues that scaling to large numbers of ports implicates
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`some disavowal of circulators. Resp., 11-14, 35-36. This argument has several
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`problems. First, the ‘368 patent focuses on scaling in channels, not ports. The
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`patent emphasizes that its “underlying architecture is intrinsically scalable to a
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`large number of channel counts”. Ex. 1001, 5:56-57. The provisional echoes this
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`concern. Ex. 1008, 2-3 (the “system can readily scale to a large channel count”).
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`Second, the concept of scaling to many ports is not a feature in the patent
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`claims, each of which require at most “an input port,” “an output port,” and “one
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`or more” other ports (claim 1; emphasized). The purported invention as claimed
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`covers systems with only a single input, output, and “other” port. E.g., claim 1.
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`Even if scaling in ports was claimed, both the provisional and the ‘368
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`specification show that circulators were not an impediment to such scaling.
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`Provisional Fig. 9 promotes the addition of a circulator on each output of a
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`ROADM that the patentee said that Fig. 9 (annotated below) was one of the three
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`architectures of “the present invention.” Ex. 1008 at Fig. 9, p. 4. Thus, the
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`provisional
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`explicitly
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`adopts
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`an
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`architecture with a circulator for each of
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`multiple ports. And Fig. 9 can scale with ports, because no matter how many ports
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`exist, the small (~0.5 dB) loss for the circulator will only be incurred once for each
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`port. See S. Tr., 212:12-16. There is no cumulative loss to prevent scaling.
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`d.
`PO argues that the patentee disavowed circulators because of their alleged
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`Circulators do not add significant size, cost or loss
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`size, cost, and loss. See Resp. at 10. Again, none of those three features are
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`claimed limitations. Moreover, the PO overreaches on each of these issues. The
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`alleged “bulk” of a circulator was one-five-hundredth the size of the overall
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`ROADM. S. Tr., 221-222:4 (50 vs. 0.1 cubic inches). The price (as low as $200
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`currently) of a circulator is less than 1% of the $25,000 90-channel Capella
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`product. Compare Ex. 1043 to Ex. 2006 at 2. And a circulator’s loss (~0.5 dB) is
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`at least ten times smaller than the rest of a ROADM’s loss (5-7 dB). S. Tr., 212:12-
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`25, see also 216:2-219:12; Ex. 1008 at 41.
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`Moreover, the mere existence of disadvantages resulting from a modification
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`does not refute the obviousness of the modification, especially when the prior art
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`indicates that the modification (