CISCO SYSTEMS, INC.
`Petitioner
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`v.
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`CAPELLA PHOTONICS, INC.
`Patent Owner
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`____________________
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`Case IPR2014-01166
`Patent RE42,368
`____________________
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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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`PATENT OWNER PRELIMINARY RESPONSE
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`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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`Case IPPR2014-011166
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`INNTRODUCCTION ......................................................
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`Tablee of Contennts
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`BACKGROOUND ......
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`.................ogy ...........A. Overrview of the Technolo
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`B.
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`C.
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`Summmary of ’368 Patent ...................................
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`Summmary of thee Petition ...................................
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`Summaryy of Bouevvitch ..........................
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`B A B C
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`I.
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`II.
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`1.
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`2.
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`Summaryy of Smithh Patent andd the ’683
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`Provisionaal ..............
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`... 12
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`III. CCLAIM COONSTRUCCTION .......................................
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`.. 16
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`.. 20
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`thhe Petitionn does not eestablish a prima faciie case thatt the indeppendent
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`laims of thhe ’368 pattent are obvvious and ccontains irrreparable
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`ubstantial evidentiaryy gaps ........................................
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`cs
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`IV.
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`A.
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`Petitiioner failedd to make aa thresholdd showing
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`that the Smmith
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`patennt is entitleed to the § 102(e) prioor art filingg date of thhe ’683
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`proviisional ......
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`.. 22
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`u A
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`BB.
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`Petitiioner failedd to determmine the sc
`prior art aand
`ope of the
`med
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`indeppendently aascertain thhe differennces betwe
`en the clai
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`invenntion and thhe prior arrt ................................
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`.. 27
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`C.
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`Petitiioner failedd to show wwhy a POSSA would hhave been
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`motivvated to coombine Bouuevitch annd Smith ...
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`.. 29
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`D.
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`Boueevitch teachhes away ffrom Smithh ...............
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`.. 32
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`E.
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`Boueevitch doess not teach or suggestt “an inputt port,” “onne or
`ited by
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`moree other/dropp/add portss,” and “ann output poort,” as rec
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`indeppendent claaims 1, 15 and 16 ......................
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`.. 37
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`FF.
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`The SSmith pateent does noot teach “beeam defleccting elemeents . . .
`in
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`continuously coontrollablee in two dimmensions”
`as recited
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`indeppendent claaims 1, 15,, 16 and 177 ...............
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`.. 42
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`- i -
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`C D E
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`1166 Case IPPR2014-01
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`1.
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`The Smitth patent ddoes not teaach or sugggest “each
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`elementss being individually aand continuuously
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`controllaable” in twoo dimensioons as recitted in indeependent
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`claims 1,, 15, 16, annd 17 .........................
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`of said
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`... 44
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`.. 46
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`.. 48
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`GG.
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`The SSmith pateent is subst
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`antially simmilar to refferences frrom
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`originnal prosecuution and tthe two reiissues, so innstitution sshould
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`be deenied for alll grounds using the SSmith pateent. .............................
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`The groundds are redunndant and tthe petitionner fails too provide
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`meaningfuul distinctioons” betweeen the groounds. .......
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`T“
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`V.
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`..................................................SION .........VI. CCONCLUS
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`.. 50
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`- ii -
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`Case IPR2014-01166
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`Cases
`
`Table of Authorities
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`Application of Lund,
`376 F.2d 982 (C.C.P.A. 1967) ....................................................................... 23
`
`Application of Warner,
`379 F.2d 1011 (C.C.P.A. 1967) ..................................................................... 21
`
`Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc.,
`249 F.3d 1341 (Fed. Cir. 2001) ..................................................................... 17
`
`CallCopy, Inc. v. Verint Americas, Inc.,
`IPR2013-00486, Paper 11 (P.T.A.B. Feb. 5, 2013) ...................................... 22
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) ..................................................................... 16
`
`Crocs Inc. v. International Trade Commission,
`598 F.3d 1294 (Fed. Cir. 2010) ..................................................................... 30
`
`DeSilva v. DiLeonardi,
`181 F.3d 865 (7th Cir. 1999) .................................................................. 19, 29
`
`Ex Parte Mortensen,
`No. 2010-012383 (B.P.A.I. May 7, 2012). .................................................... 21
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`Google Inc. v. EveryMD.com LLC,
`IPR2014-00347, Paper 9 (P.T.A.B. May 22, 2014) ............................... 19, 29
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`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ........................................................................................... 27
`
`In re Chaganti,
`2014 WL 274514 (Fed. Cir. 2014) ................................................................ 21
`
`In re Giacomini,
`612 F.3d 1389 (Fed. Cir. 2010) ..................................................................... 22
`
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994) ......................................................................... 33
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`Case IPR2014-01166
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`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ....................................................................... 21
`
`In re Morris,
`127 F.3d 1048 (Fed. Cir. 1997) ..................................................................... 16
`
`K-2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999) ..................................................................... 18
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007).................................................................... 21, 27, 29, 30
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`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25, 2012) ............................. 48, 49
`
`Medrad, Inc. v. MRI Devices Corp.,
`401 F.3d 1313 (Fed. Cir. 2005) ..................................................................... 18
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`Mentor H/S, Inc. v. Med. Device Alliance, Inc.,
`244 F.3d 1365 (Fed. Cir. 2001) ..................................................................... 17
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`Olympus Am., Inc. v. Perfect Surgical Techniques, Inc.,
`IPR2014-00233, Paper 16 (P.T.A.B. June 16, 2014) .................................... 49
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`Pac-Tec, Inc. v. Amerace Corp.,
`903 F.2d 796 (Fed. Cir. 1990) ....................................................................... 18
`
`Perry v. Amerace Corp.,
`502 U.S. 808 (1991)....................................................................................... 18
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`Synopsys, Inc. v. Mentor Graphics Corporation,
`IPR2012-00041, Paper 16 (P.T.A.B. Feb. 22, 2013) .................................... 17
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`United States v. Adams,
`383 U.S. 39 (1966) ......................................................................................... 29
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`Zodiac Pool Systems, Inc. v. Aqua Products, Inc.,
`IPR2013-00159, Paper 18 (P.T.A.B Aug. 23, 2013) ..................................... 32
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`Statutes
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`35 U.S.C. § 102(e) ........................................................................................... passim
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`35 U.S.C. § 103(a) ................................................................................................... 20
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`- iv -
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`Case IPR2014-01166
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`35 U.S.C. § 112 ........................................................................................................ 26
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`35 U.S.C. § 312(a)(3) ............................................................................................... 22
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`35 U.S.C. § 325(d) .............................................................................................. 4, 46
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`Rules
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`37 C.F.R. § 42.100(b) .............................................................................................. 16
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`37 C.F.R. § 42.104(b)(4) .......................................................................................... 22
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`37 C.F.R. § 42.108(b) .............................................................................................. 48
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`37 C.F.R. § 42.22(a)(2) ............................................................................................ 22
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`Other Authorities
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`77 Fed. Reg. 48763 (Aug. 14, 2012) ....................................................................... 19
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`- v -
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`Case IPR2014-01166
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`Exhibit #
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`2001
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`Exhibit List
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`Description
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`Provisional Patent Application No. 60/267,285
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`Case IPR2014-01166
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`I.
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`INTRODUCTION
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`The Patent Owner respectfully requests that the Board deny institution of the
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`Petition because the Petitioner did not demonstrate a reasonable likelihood that any
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`of the proposed grounds of unpatentability invalidate any claim of U.S. Patent No.
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`RE42,368 (“the ’368 patent”). The Board should deny institution for at least four
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`reasons: (1) the Petitioner failed to make a threshold showing that the Smith patent
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`is entitled to the § 102(e) prior art filing date of the ’683 provisional; (2) the
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`Petition fails to state a prima facie case of obviousness by failing either to ascertain
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`the scope and content of the prior art and the differences between the prior art and
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`the ’368 patent, or to adequately explain why a POSA would have been motivated
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`to combine the primary prior art references; (3) the prior art references relied upon
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`by Petitioner fail to teach material limitations of the claims; and (4) the arguments
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`presented by the Petitioner are nearly identical to combinations of prior art
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`references that were previously before the Office.
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`First, Petitioner failed to make a threshold showing that the Smith patent is
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`entitled to the § 102(e) prior art filing date of the ’683 provisional. For example,
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`Petitioner contends that Bouevitch discloses every element of the four independent
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`claims of the ’368 patent except for the use of beam deflecting elements
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`continuously controllable in two dimensions, and relies solely on the Smith patent
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`(with alleged support from the ’683 provisional) to show this missing feature. But
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`Case IPR2014-01166
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`there is no written description support in the ’683 provisional for the two-axis
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`mirror embodiment disclosed in the Smith patent and relied upon by the Petitioner.
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`As will be shown in detail below, this embodiment is traceable, not to the ’683
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`provisional, but, instead, to a second provisional application filed by a separate set
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`of inventors. As a result, the Smith patent cannot qualify as prior art under pre-AIA
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`35 U.S.C. § 102(e) and all four grounds set forth in the Petition, each of which
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`relies on the Smith patent, should be denied.
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`Second, the Board should deny the Petition because Petitioner failed to
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`determine the scope of the prior art and independently ascertain the differences
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`between the claimed invention and the prior art. Instead, Petitioner twists the
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`patentee’s reissue declaration into an alleged admission and then relies on that
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`alleged admission, without independent analysis, to wrongly conclude that
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`“Bouevitch explicitly discloses every element of the 4 independent claims of the
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`’368 patent . . . except for the use of mirrors rotatable in two axes.” (Petition, Paper
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`2, p. 18.) Since the wrongly alleged admission forms the entire basis for the
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`Petitioner’s argument, the Petition should be denied.
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`The Petitioner also failed to present a complete analysis of the Graham
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`factors, and further failed to present an adequate analysis of the KSR rationales.
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`More specifically, Petitioner states that elements of the claims of the ’368 patent
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`are allegedly taught by non-specific combinations of references, but fails to
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`Case IPR2014-01166
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`articulate any reason why a POSA would have thought to combine the references,
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`or why a POSA would have thought that the references could even operate as
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`required after being combined. Indeed, contrary to Petitioner’s claims, a POSA
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`would not have been motivated to make the prior art combinations put forth by the
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`Petitioner because Bouevitch specifically teaches away from the use, as described
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`in Smith, of angular displacement of light beams relative to the output ports to
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`perform power control.
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`Third, the Board should deny the Petition because the prior art references
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`relied upon do not, in fact, teach all the material limitations of the challenged
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`claims. For example, Bouevitch’s “optical circulators” do not read on the “input,”
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`“output,” and “other” port limitations of the ’368 patent. In fact, the ’368 patent
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`teaches away from the use of optical circulators, rendering Petitioner’s comparison
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`in this regard inapt.
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`More critically, Petitioner relies on Smith patent to teach mirrors that are
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`controllable in two dimensions. But the ’683 provisional does not, itself, disclose
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`any structure, working or otherwise, that would allow such two-dimensional
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`rotation, and the complicated gimbal structure described in the Smith patent was
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`developed by others and set forth, not in the ’683 provisional, but in a separate
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`provisional, provisional application No. 60/267,285 (“the ’285 provisional,”
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`provided as Ex. 2001), to which the Smith patent improperly claims priority since
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`Case IPR2014-01166
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`there are no overlapping inventors. The Smith patent also fails to teach beam
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`deflecting elements that are “continuously” controllable. As a result, the Smith
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`patent fails to teach “beam-deflecting elements…continuously controllable in two
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`dimensions to reflect its corresponding spectral channel to a selected one of said
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`ports and to control the power of the spectral channel reflected to said selected
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`port” as required by the independent claims of the ’368 patent.
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`Finally, the Petitioner’s arguments are not new. They are nearly identical to
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`combinations of prior art references that were previously before the Office. Section
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`325(d) permits the Board to take into consideration when granting a petition
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`whether the same or substantially the same prior art or argument was previously
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`presented to the Office. Since that is the case here, the Board should deny the
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`petition.
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`For the foregoing reasons, as explained in further detail below, Patent Owner
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`respectfully requests that the Board deny the instant Petition.
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`II. BACKGROUND
`The ’368 patent relates to switching in optical fiber networks. In particular,
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`the patent discloses a novel class of dynamically reconfigurable optical add/drop
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`multiplexers (“ROADMs”) for wavelength multiplexed optical networking
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`capabilities.
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`Case IPR2014-01166
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`A. Overview of the Technology
`Telecommunications companies use optical fiber to transmit telephone
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`signals, Internet communications, and cable television signals. Various
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`wavelengths of light can travel along an optical fiber at the same time, each
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`wavelength carrying specific data intended for delivery to a specific location.
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`Networks using optical fiber span the United States. Networks on a continent or
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`within a country form a grid. Line segments of fiber optic cable intersect at hubs or
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`nodes, and at these hubs or nodes, there are switching devices.
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`In modern networks, switching is accomplished in the optical domain by
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`ROADMs. ROADMs are the backbone of advanced fiber optic networks because
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`they route, or switch, signals traveling along fiber optic cables in the directions
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`they need to go. The switching occurs on the wavelength level, which means that a
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`ROADM can separate all the wavelengths of light entering the device and route
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`them in different directions depending on the ROADM’s configuration. ROADMs
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`can drop certain wavelengths from a fiber altogether and can also add new
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`wavelengths onto fibers. ROADMs can also control flow across fiber optic cables.
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`If traffic along one cable is particularly heavy at certain times, a ROADM can
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`manage the load by sending traffic along one fiber at certain times and another
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`fiber at other times.
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`Before ROADMs, service providers used Optical to Electrical to Optical
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`switches (“OEO switches”). In OEO switches, data carried along optical cables had
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`to be converted into electrical signals to be routed. OEO switches were big, slow,
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`and expensive. Internet service providers’ introduction of ROADMs into their
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`networks made all-optical networks possible. All-optical networks vastly increased
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`the speed at which signals could be transmitted, allowing for transmission of video
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`streams, while also significantly reducing cost and size of switching equipment.
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`In addition to their switching capabilities, ROADMs have the ability to
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`control the output power on the output ports of the optical switch. As a result,
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`ROADMs can provide high uniformity or equalization in the power level of the
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`channels across all-optical networks. One method by which ROADMs control
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`power output is through deliberate angular displacement or misalignment of the
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`light beam from the output waveguide, thereby controlling the coupling between
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`the light beam and the output waveguide.
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`ROADMs use wavelength selective routers (“WSRs”) to perform switching
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`and power control. Certain WSR embodiments perform their switching and power
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`control functions by steering light beams using beam deflecting elements. Such
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`beam deflecting elements can include but are not limited to small tilting mirrors,
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`commonly referred to as Micro ElectroMechanical Systems or “MEMS.”
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`Switching is performed by steering the beam to the intended output port and power
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`can be attenuated by steering the beam such that it is slightly misaligned with the
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`output port, thereby reducing coupling.
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`Summary of ’368 Patent
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`B.
`The ’368 patent describes a ROADM for optical switching in optical
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`networks. The inventors recognized certain limitations in conventional optical
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`switches including, for example, 1) intrinsically static wavelength routing, 2) add
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`and/or drop channels that needed to be multiplexed or demultiplexed, 3) the need
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`for stringent fabrication tolerance and optical alignment that was unable to be
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`actively maintained, 4) the need for systematic power maintenance of the spectral
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`channels, and 5) high cost and heavy optical loss. (’368 patent, 3:20-46.)
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`To address these issues, the inventors recognized that continuous control of
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`beam deflecting elements would enable scanning across all possible output ports,
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`allowing any individual spectral channel to be directed to any desired output port.
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`(Id. at 4:7-14.) The inventors further recognized that if the beam deflecting
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`elements were controllable in two dimensions, the fiber collimators serving as the
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`input and output ports could be arranged in either a one dimensional or two
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`dimensional array, and that dynamic control of the coupling between the spectral
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`channels and the output ports could be actively managed in order to control power.
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`(Id. at 4:26-56.) The inventors further recognized that “the underlying OADM
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`architecture thus presented is intrinsically scalable and can be readily extended to
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`any number of the WSR-S (or WSR) systems, if so desired for performing intricate
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`add and drop functions in a network environment.” (Id. at 5:50-58.)
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`In view of these principles, the ROADM described and claimed in the ’368
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`patent is capable of dynamic power management of optical signals, in addition to
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`its switching functions. The dynamic power management and switching functions
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`are enabled by a novel array of beam-deflecting elements that are individually and
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`continuously controllable in two dimensions for switching and power control.
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`Summary of the Petition
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`C.
`The Petition proposes four redundant and cumulative grounds of
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`unpatentability as indicated in the following table. The Petition relies on a single
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`primary reference, U.S. Patent No. 6,498,872 (“Bouevitch”) and three secondary
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`references. The secondary references are U.S. Patent No. 6,798,941 (“Smith” or
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`“Smith patent”) and a provisional it dubiously claims benefit of, U.S. Provisional
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`Patent Application 60/234,683 (“the ’683 provisional”), U.S. Patent No. 5,661,591
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`(“Lin”), and U.S. Patent No. 6,011,884 (“Dueck”).
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`Ground
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`1
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`2
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`3
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`’368 Patent
`Claims
`1-6, 9-13 and
`15-22
`1-6, 9-13 and
`15-22
`12
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`Type
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`Primary
`Reference
`Obviousness under §103 Bouevitch
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`Secondary
`References
`Smith
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`Obviousness under §103 Bouevitch
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`Obviousness under §103 Bouevitch
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`Smith
`Lin
`Smith
`Dueck
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`and
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`and
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`Case IPPR2014-011166
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`Seconddary
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`Referennces
`Smith,
`Lin
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`and Duecck
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`PR
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`Type
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`Primary
`Reference
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`OObviousneess under §§103 Boouevitch
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`Grounnd
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`’368 Patent
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`Claaims
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`12
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`4
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`AAs is demoonstrated heerein, Petittioner has
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`not met itss burden oof showingg that
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`there exxists a reassonable likkelihood thhat any off the claimms of the ’
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`368 patentt are
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`unpatenntable.
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`Summarry of Boueevitch
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`1.
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`BBouevitch ddescribes aan optical ddevice (as
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`shown in iits FIG. 1,
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`reproducedd
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`below) that is “cappable of opperating ass a Dynamiic Gain/Chhannel Equualizer (DGGE)
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`and/or aa Configurable Opticcal Add/Drop Multipllexer (COAADM).” (BBouevitch,
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`5:18-200.) The devvice includees “modifyying meanss 150 for mmodifying aat least a
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`portion of the lighht incident thereon.” ((Id. at 5:355-36 (emphhasis addedd).) In one
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`embodimment, the mmodifying means of BBouevitchh includes aa MEMS aarray.
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`Critically to the instant Petition, however, the MEMS array as described in
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`Bouevitch does not, in either its switching or power control functions, result in
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`deliberate angular displacement or misalignment of the beam from the output port.
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`Indeed, in either its power control, or add/drop multiplexing functions, Bouevitch
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`consistently teaches directly away from deliberate angular displacement or
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`misalignment of the optical beams, explicitly noting that angular displacement of
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`the beam in relation to the output port is disadvantageous.
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`For example, with respect to U.S. Patent No. 5,414,540 to Patel et al.
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`(“Patel”), Bouevitch states that “the disclosed device is limited in that the add/drop
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`beams of light are angularly displaced relative to the input/output beams of light.
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`This angular displacement is disadvantageous with respect to coupling the
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`add/drop and/or input/output beams of light into parallel optical waveguides, in
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`addition to the additional angular alignment required for the input beam of light.”
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`(Id. at 2:1-7 (emphasis added).)
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`As illustrated in FIGS. 3a and 3b of Bouevitch (reproduced below) the light
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`beam is not angularly displaced with respect to the output port during switching.
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`Instead, the light beam is reflected back to the output port on the same path (FIG.
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`3a) or on a parallel path (FIG. 3b). (Id. at 6:19-32.)
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`Similarly, Bouevitch does not rely on angular displacement of the beam in
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`relation to the output port in order to attenuate power.1 Again, as described and
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`illustrated in FIGS. 3a and 3b, even when used as a dynamic gain equalizer to
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`control power output, the light beam from modifying means 150 is always
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`reflected back to the output ports on either on the same path as the incoming light
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`(102a) or on a parallel path (102b). (Id. at 6: 33-41 (referring to FIGS. 3a and 3b
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`and describing how the claimed device can attenuate power when acting as a
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`DGE).)
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`Even when the modifying means of Bouevitch includes a MEMS array as
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`described at col. 7, lines 23-44 and shown in FIG. 5 (reproduced below), the beam
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`is always reflected either directly back at the output port or along a parallel path—
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`it is never angularly displaced or deliberately misaligned.
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`1 Even though two parallel lines may be laterally displaced from each other,
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`there is no angular displacement between them.
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`This concept is also illustrated in and described with regard to FIG. 8. In
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`discussing FIG. 8, Bouevitch specifically notes that the beam is reflected back
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`along the same optical path after power attenuation: “FIG. 8 illustrates a DGE
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`including a conventional three port optical circulator…[S]ub-beams of light…are
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`reflected and transmitted to the modifying means 850 in a direction parallel to the
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`optical axis…Once attenuated, the sub-beams of light are reflected back to the
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`spherical reflector 810, the diffraction grating 820, and the front-end unit 805
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`along the same optical path.” (Id. at 11:15-35 (emphasis added).)
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`Finally, as admitted by the Petitioner, the micro mirrors used in the MEMS
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`array as described in Bouevitch do not rotate in two dimensions. (Petition, p. 31.)
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`Summary of Smith Patent and the ’683 Provisional
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`2.
`Petitioner contends that Smith patent is entitled to a § 102(e) prior art date of
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`September 22, 2000, the filing date of the ’683 provisional. Petitioner concedes
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`that in order to demonstrate proper written description support, the portions of the
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`Smith patent it relies upon must be fully supported by the ’683 provisional. As a
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`result, for purposes of this response, the majority of citations and references made
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`herein are made with regard to the ’683 provisional.
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`Like Bouevitch, Smith patent is directed at ROADMs for optical switching
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`and power control. (’683 provisional, pp. 3, 4.) But unlike Bouevitch, Smith patent
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`describes using misalignment or angular displacement of the optical beams for
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`power control. For example, specifically with regard to power control, the ’683
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`provisional states:
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`• “the invention discloses the use of controlled misalignment in fiber
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`optical devices in order to introduce a controlled loss for the purposes
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`of enabling power equalization.” (Id. at 12 (emphasis added).)
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`• “[v]ertical misalignment is the preferred method of reducing power
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`coupling to the chosen output channel.” (Id. at 10 (emphasis added).)
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`• “misalignment further exacerbates this coupling degradation in a
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`dramatic manner well known to those skilled in the art. Angular
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`displacement off the waveguide axis is another, less preferred means
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`of reducing coupling.” (Id.)
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`Angular displacement of the optical beams in Smith patent is achieved by
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`the rotation of MEMS mirrors. However, as admitted by the Petitioner, Smith
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`patent uses one rotational axis for switching and a second axis for power control.
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`(Petition, p. 34 (“Smith switches with mirror rotation in one axis, and control
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`powers [sic] with mirror rotation in a second axis.”).) Specifically, as described
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`variously in the Smith patent and the ’683 provisional:
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`the “principal switching operations us[e] the one mirror tilt axis,”
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`while “[t]he other mirror tilt axis, the minor axis, can be used for
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`power adjustment.” (Smith patent, 16:34-51.)
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`• “[a]ngular displacement in a first, switching plane, is used to perform
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`an OXC, ADM or other switching function while angular
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`displacement about the orthogonal axis is used for power control.”
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`(’683 provisional, p. 6 (emphasis added).)
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`• “[i]n order to control the power of the beams leaving the switch via
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`the output and drop ports, the corresponding micro-mirror elements
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`are designed to tilt about a second, perpendicular axis in the plane of
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`the array.” (Id. at 9; see also FIG. 3.)
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`More critically, the Smith patent does not teach mirrors that are
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`“continuously controllable in two dimensions.” Although the Smith patent
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`allegedly teaches mirrors that are rotatable about one of two orthogonal axes, it
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`does not disclose any such embodiment, working or otherwise. The ’683
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`provisional states that a MEMS array “can be tilted about two orthogonal axes”
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`(’683 provisional, p. 10), and that such arrays are described in a paper by Dewa et
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`al.—but neither the Dewa paper nor its alleged embodiments were incorporated by
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`reference into the ’683 provisional. Moreover, the Smith patent itself includes a
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`complicated “gimbal” structure capable of rotation about two orthogonal axes, but
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`that structure was developed by others and set forth, not in the ’683 provisional,
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`but in the ’285 provisional, to which the Smith patent improperly claims priority
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`since there are no overlapping inventors.
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`Finally, the Petitioner fails to show that the Smith patent discloses beam
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`deflecting elements that are continuously controllable in two dimensions. Petitioner
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`points to a section of the Smith patent for support, where the term “linearly” is
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`used, but that section is describing the voltage that is “applied across opposed
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`electrodes” to exert “a positive force acting to overcome the torsion beams 266,
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`272 and to close the variable gap between the electrodes.” (Smith patent, 15:41-
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`42). However, as can be seen, this is merely a description of the magnitude of force
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`needed to overcome the torsion beams 266, 272. It does not speak to continuous
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`control in two dimensions.
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`Moreover, the referenced discussion does not refer to any embodiments
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`carried over from the ’683 provisional. The discussion refers to torsion beams 266,
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`272 of the gimbal structure that was lifted from the ’285 provisional to which the
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`Smith patent improperly claims priority. The ’683 provisional likewise provides no
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`support. The mere use of the word “analog” does not teach continuous control of
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`beam deflecting elements in two dimensions in the manner set forth in the claims.
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`As discussed herein, there is no disclosure in the ’683 provisional of a beam
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`deflecting element that is even capable of rotation about two axes. As a result, the
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`Smith patent fails to teach “beam-deflecting elements . . . continuously controllable
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`in two dimensions to reflect its corresponding spectral channel to a selected one of
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`said ports and to control the power of the spectral channel reflected to said selected
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`port” as required by the independent claims of the ’368 patent.
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`III. CLAIM CONSTRUCTION
`In an inter partes review, “[a] claim . . . shall be given its broadest
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`reasonable construction in light of the specification of the patent in which it
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`appears.” 37 C.F.R. § 42.100(b). Stated differently, claim terms should be
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`construed using “the broadest reasonable meaning of the words in their ordinary
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`usage as they would be understood by one of ordinary skill in the art, taking into
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`account whatever enlightenment by way of definitions or otherwise that may be
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`afforded by the written description contained in the applicant’s specification.” In re
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`Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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`There is a “heavy presumption” that a claim term carries its ordinary and
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`customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
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`(Fed. Cir. 2002). Ordinary and customary meaning refers to the meaning the term
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`would have to a person of ordinary skill in the art. Such terms have been held to
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`require no construction. See, e.g., Biotec Biologische Naturverpackungen GmbH &
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`Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed. Cir. 2001) (finding no error in
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`non-construction of “melting”); Mentor H/S, Inc. v. Med. Device Alliance, Inc.,
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`244 F.3d 1365, 1380 (Fed. Cir. 2001) (finding no error in court’s refusal to
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`construe “irrigating” and “frictional heat”). See also Synopsys, Inc. v. Mentor