Paper 8
`Entered: February 18, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01276
`Patent RE42,678 E
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Entered: February 18, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01276
`Patent RE42,678 E
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2014-01276
`Patent RE42,678 E
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Cisco Systems, Inc., filed a Petition (Paper 1, “Pet.”)
`
`requesting an inter partes review of claims 1–4, 9, 10, 13, 17, 19–23, 27, 29,
`
`44–46, 53, and 61–65 of U.S. Patent No. RE42,678 E (Ex. 1001, “the ’678
`
`patent”). Paper 2 (“Pet.”). Patent Owner, Capella Photonics, Inc., filed a
`
`Preliminary Response. Paper 7 (“Prelim. Resp.”). We have jurisdiction
`
`under 35 U.S.C. § 314(a), which provides that inter partes review may not
`
`be instituted unless the information presented in the petition and any
`
`preliminary response shows that there is a reasonable likelihood that the
`
`petitioner would prevail with respect to at least one of the claims challenged
`
`in the petition.
`
`Upon consideration of the Petition and the Preliminary Response, we
`
`conclude the information presented shows there is a reasonable likelihood
`
`that Petitioner would prevail in showing the unpatentability of the
`
`challenged claims. Accordingly, we authorize an inter partes review to be
`
`instituted as to claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46, 53, and
`
`61–65 of the ’678 patent. Our factual findings and conclusions at this stage
`
`of the proceeding are based on the evidentiary record developed thus far
`
`(prior to Patent Owner’s Response). This is not a final decision as to
`
`patentability of claims for which inter partes review is instituted. Our final
`
`decision will be based on the record, as fully developed during trial.
`
`
`
`
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`2
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`II.
`
`BACKGROUND
`
`A.
`
`The ’678 patent (Ex. 1001)
`
`The ’678 patent, titled “Reconfigurable Optical Add-Drop
`
`Multiplexers with Servo Control and Dynamic Spectral Power Management
`
`Capabilities,” reissued September 6, 2011, from U.S. Patent No. RE 39,397
`
`(“the ’397 patent”). Ex. 1001. The ’397 patent reissued November 14,
`
`2006, from U.S. Patent No. 6,625,346 (“the ’346 patent”). Id. The ’346
`
`patent issued September 23, 2003, from U.S. Patent Application
`
`No. 09/938,426, filed August 23, 2001.
`
`The ’678 patent describes a “wavelength-separating-routing (WSR)
`
`apparatus that uses a diffraction grating to separate a multi-wavelength
`
`optical signal by wavelength into multiple spectral characters, which are
`
`then focused onto an array of corresponding channel micromirrors.” Id. at
`
`Abstract. “The channel micromirrors are individually controllable and
`
`continuously pivotable to reflect the spectral channels into selected output
`
`ports.” Id. According to Petitioner, the small, tilting mirrors are sometimes
`
`called Micro ElectroMechanical Systems or “MEMS.” Pet. 7. The WSR
`
`described in the ’678 patent may be used to construct a dynamically
`
`reconfigurable optical add-drop multiplexer (“ROADM”) for wavelength
`
`division multiplexing (“WDM”) optical networking applications. Id. at
`
`3
`
`Abstract.
`
`
`
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`IPR2014-01276
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`
`
`Figure 1A of the ’678 patent is reproduced below.
`
`
`
`Figure 1A depicts WSR apparatus 100, in accordance with the ’678 patent.
`
`WSR apparatus 100 is comprised of an array of fiber collimators 110
`
`(multiple input/output ports, including input port 110-1 and output ports
`
`110-2 through 110-N), diffraction grating 101 (a wavelength separator),
`
`quarter wave plate 104, focusing lens 102 (a beam-focuser), and array of
`
`channel micromirrors 103. Ex. 1001, 6:57–63, 7:55–56.
`
`
`
`A multi-wavelength optical signal emerges from input port 110-1 and
`
`is separated into multiple spectral channels by diffraction grating 101, which
`
`are then focused by focusing lens 102 into a spatial array of distinct spectral
`
`spots (not shown). Id. at 6:64–7:2. Channel micromirrors 103 are
`
`positioned such that each channel micromirror receives one of the spectral
`
`channels. Id. at 7:2–5.
`
`The WSR may also incorporate a servo-control assembly (together
`
`termed a “WSR-S apparatus.”) Id. at 4:65–67. According to the ’678
`
`patent:
`
`4
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`IPR2014-01276
`Patent RE42,678 E
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`
`The servo-control assembly serves to monitor the power levels
`of the spectral channels coupled into the output ports and
`further provide control of the channel micromirrors on an
`individual basis, so as to maintain a predetermined coupling
`efficiency of each spectral channel in one of the output ports.
`As such, the servo-control assembly provides dynamic control
`of the coupling of the spectral channels into the respective
`output ports and actively manages the power levels of the
`spectral
`channels
`coupled
`into
`the
`output
`ports.
`
`Id. at 4:47–56.
`
`B.
`
`Illustrative Claims
`
`Challenged claims 1, 21, 44, and 61 of the ’678 patent are
`
`independent. Challenged claims 2–4, 9, 10, 13, 17, 19, and 20 ultimately
`
`depend from claim 1; claims 22, 23, 27, and 29 ultimately depend from
`
`claim 21; claims 45, 46, and 53 ultimately depend from claim 44; and,
`
`claims 62–65 ultimately depend from claim 61. Claims 1, 21, and 61 of the
`
`’678 patent are illustrative of the claims at issue:
`
`apparatus,
`
`1. A wavelength-separating-routing
`comprising:
`a) multiple fiber collimators, providing an input port
`for a multi-wavelength optical signal and a plurality of
`output ports;
`b) a wavelength-separator, for separating said multi-
`wavelength optical signal from said input port into multiple
`spectral channels;
`c) a beam-focuser, for focusing said spectral channels
`into corresponding spectral spots; and
`d) a spatial array of channel micromirrors positioned
`such that each channel micromirror receives one of said
`spectral channels, said channel micromirrors being pivotal
`about two axes and being individually and continuously
`to reflect [[said]] corresponding received
`controllable
`spectral channels into any selected ones of said output ports
`5
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`and to control the power of said received spectral channels
`coupled into said output ports.
`
`Ex. 1001, 14:6–23 (emphases in original, “[[ ]]” indicating matter in
`
`the first reissue that forms no part of the second reissue, and matter in
`
`italics indicating additions made by second reissue).
`
`21. A servo-based optical apparatus comprising:
`a) multiple fiber collimators, providing an input port
`for a multi-wavelength optical signal and a plurality of
`output ports;
`b) a wavelength-separator, for separating said multi-
`wave-length optical signal from said input port into multiple
`spectral channels;
`c) a beam-focuser, for focusing said spectral channels
`into corresponding spectral spots; and
`d) a spatial array of channel micromirrors positioned
`such that each channel micromirror receives one of said
`spectral channels,
`said channel micromirrors being
`individually controllable to reflect said spectral channels
`into selected ones of said output ports; and
`e) a servo-control assembly, in communication with
`said channel micromirrors and said output ports, for
`maintaining a predetermined coupling of each reflected
`spectral
`channel
`into one of
`said output ports.
`
`Ex. 1001, 15:29–48.
`
`
`61. A method of performing dynamic wavelength
`separating and routing, comprising:
`a) receiving a multi-wavelength optical signal from an
`input port;
`b) separating said multi -wavelength optical signal
`into multiple spectral channels;
`c) focusing said spectral channels onto a spatial array
`of corresponding beam-deflecting elements, whereby each
`
`6
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`
`beam-deflecting element receives one of said spectral
`channels; and
`d) dynamically and continuously controlling said
`beam-deflecting elements [[, thereby directing]] in two
`dimensions
`to direct said spectral channels
`into [[a
`plurality]] any selected ones of said output ports and to
`control the power of the spectral channels coupled into said
`selected output ports.
`
`Ex. 1001, 18:55–19:3 (emphases in original, with “[[ ]]” indicating
`
`matter in the first reissue that forms no part of the second reissue, and
`
`matter in italics indicating additions made by second reissue).
`
`C.
`
`Related Proceedings
`
`Petitioner states that the ’678 patent is a subject of the following civil
`
`action: Capella Photonics, Inc. v. Cisco Systems, Inc., Civil Action No.
`
`3:14-CV-03348-NC, pending in the Northern District of California. Pet. 2.
`
`7
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`D.
`
`Asserted Grounds of Unpatentability
`
`Petitioner contends that claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–
`
`46, 53, and 61–65 of the ’678 patent are unpatentable based on the following
`
`grounds:
`
`Reference[s]
`Bouevitch1 and Smith2
`
`Bouevitch, Smith, and Lin3
`
`Bouevitch, Smith, and Dueck4
`Bouevitch, Smith, Lin, and Dueck
`
`
`Challenged Claims
`Basis
`§ 103(a) 1–4, 9, 10, 13, 17, 19–
`23, 27, 29, 44–46, 53,
`and 61–65
`§ 103(a) 1–4, 9, 10, 13, 17, 19–
`23, 27, 29, 44–46, 53,
`and 61–65
`§ 103(a) 17, 29, and 53
`
`§ 103(a) 17, 29, and 53
`
`E.
`
`Prior Art Status of Smith
`
`Petitioner contends Smith is § 102(e) prior art as of the September 22,
`
`2000, filing date of its corresponding provisional application No. 60/234,683
`
`(the “Smith ’683 Provisional,” Ex. 1005). Pet. 60. Petitioner’s declarant,
`
`Dan Marom, testifies that the Smith ’683 Provisional discloses all of the
`
`features of Smith relied upon to demonstrate unpatentability of the
`
`challenged claims of the ’678 patent. Declaration of Dan Marom, Ex. 1028,
`
`¶ 153. In his Declaration, Mr. Marom also provides a chart identifying the
`
`
`1 U.S. Patent No. 6,498,872 B2, issued December 24, 2002 (Ex. 1003,
`“Bouevitch”).
`2 U.S. Patent No. 6,798, 941 B2, issued September 28, 2004 (Ex. 1004,
`“Smith”).
`3 U.S. Patent No. 5,661,591, issued August 26, 1997 (Ex. 1010, “Lin”).
`4 U.S. Patent No. 6,011,884, issued January 4, 2000 (Ex. 1021, “Dueck”).
`8
`
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`IPR2014-01276
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`claimed subject matter of the ’678 patent and the corresponding disclosures
`
`in both Smith and the Smith ’683 Provisional. Id. at ¶ 154.
`
`Patent Owner argues that Petitioner failed to make a threshold
`
`showing that Smith is entitled to the filing date of the Smith ’683
`
`Provisional. Prelim. Resp. 22–26. In particular, Patent Owner argues that
`
`there is no written description support for the two-axis mirror embodiment
`
`disclosed in Figures 14 and 15 of Smith, which, Patent Owner contends, are
`
`traceable to a second provisional application. Id. Whether portions of the
`
`information in the specification of the ’678 patent appear in another
`
`provisional application, however, has no bearing on whether the Smith ’683
`
`Provisional provides written description support for the relevant disclosures
`
`of Smith that allegedly correspond to certain claim elements of the ’678
`
`patent. Similarly, to the extent Patent Owner argues a gimbal structure
`
`described in Smith was not disclosed in the Smith ’683 Provisional, Patent
`
`Owner’s argument is beyond the scope of the claims of the ’678 patent,
`
`which do not require a particular gimbal structure. See Prelim. Resp. 3.
`
`Petitioner has supported its contention that Smith is prior art with the
`
`testimony of Mr. Marom. Based on the present record, Petitioner has made
`
`a threshold showing that Smith is § 102(e) prior art as of the filing date of
`
`the Smith ’683 Provisional.
`
`III. ANALYSIS
`
`A.
`
`Claim Construction
`
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.100(b).
`
`9
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`1.
`
`“servo-control assembly” and “servo-based optical apparatus”
`
`Challenged claims 2–4, 21–23, and 45 recite a “servo-control
`
`assembly.” Petitioner asserts “servo-control assembly” means “feedback-
`
`based control assembly,” thereby suggesting “servo” means “feedback-
`
`based.” Pet. 12. Challenged claims 21–25, 27, and 29 recite a “servo-based
`
`optical apparatus.” Petitioner asserts that “servo-based” means “feedback-
`
`based control.” Id. Patent Owner offers no construction of the term. We
`
`are not persuaded that “servo” necessarily means “feedback” or “feedback-
`
`based” merely because the ’678 patent describes a processing unit within a
`
`servo-control assembly as using power measurements from the spectral
`
`monitor to provide feedback control of the channel mirrors. Pet. 13–14.
`
`The ’678 patent does not use the term “servo-based” outside of the
`
`preamble of challenged claims 21-25, 27, and 29. “If . . . the body of the
`
`claim fully and intrinsically sets forth the complete invention, including all
`
`of its limitations, and the preamble offers no distinct definition of any of the
`
`claimed invention’s limitations, . . . then the preamble is of no significance
`
`to claim construction because it cannot be said to constitute or explain a
`
`claim limitation.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
`
`1298, 1305, (Fed. Cir. 1999) (citations omitted). The bodies of claims 21–
`
`25, 27, and 29 fully and intrinsically set forth the complete invention;
`
`therefore, the use of “servo-based” in the preamble does not serve as a
`
`limitation and need not be construed.
`
`With respect to “servo-control assembly,” the ’678 patent states that it
`
`“serves to monitor the power levels of the spectral channels coupled into the
`
`output ports and further provide control of the channel micro mirrors on an
`
`10
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`IPR2014-01276
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`individual basis.” Ex. 1001, 4:47–50. Further, “[i]f the WSR apparatus
`
`includes an array of collimator-alignment mirrors . . . the servo-control
`
`assembly may additionally provide dynamic control of the collimator-
`
`alignment mirrors. Id. at 4:56–60. According to the ’678 patent, “[a] skilled
`
`artisan will know how to implement a suitable spectral monitor along with
`
`an appropriate processing unit to provide a servo-control assembly in a
`
`WSP-S apparatus according to the present invention, for a given
`
`application.” Ex. 1001, 12:11–15.
`
`Based on the specification and the present record, a “servo-control
`
`assembly” encompasses a spectral monitor and processing unit to monitor
`
`spectral channel power levels and control channel micro mirrors on an
`
`individual basis. See id. at 11:10–36.
`
`2.
`
`“to reflect” and “to control”
`
`Independent claims 1 and 44 each recite outside of the preamble:
`
`a spatial array of channel micromirrors positioned such that
`each channel micromirror receives one of said spectral
`channels, said channel micromirrors being pivotal about two
`axes and being individually and continuously controllable to
`reflect corresponding received spectral channels into any
`selected ones of said output ports and to control the power of
`said received spectral channels coupled into said output ports.
`
`Ex. 1001, 14:16–23, 17:43–52 (emphases added and omitted). Independent
`
`claim 61 contains a similar limitation.5 Independent claim 21 recites “to
`
`
`5 Claim 61 recites: “dynamically and continuously controlling said beam-
`deflecting elements in two dimensions to direct said spectral channels into
`any selected ones of said output ports and to control the power of the
`spectral channels coupled into said selected output ports.” Ex. 1001, 18:65–
`19:3 (emphases omitted).
`
`11
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`reflect said spectral channels,” but does not contain a “to control” limitation.
`
`Id. at 15:43. Petitioner contends that the “to reflect” and “to control” clauses
`
`are non-functional use clauses that say nothing about the claimed structure,
`
`and, therefore, are non-limiting. Pet. 10–11. We disagree. Although
`
`“apparatus claims cover what a device is, not what a device does,” the
`
`language at issue here describes the function the apparatus must be capable
`
`of performing. Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d
`
`1464, 1468 (Fed.Cir.1990); see also K-2 Corp. v. Salomon S.A., 191 F.3d
`
`1356, 1363 (Fed. Cir. 1999) (explaining that functional language is an
`
`additional limitation in the claim).6
`
`Patent Owner argues that the claim limitations above should be read
`
`to require that the element be controllable in two dimensions “to reflect”
`
`and, separately, be controllable in two dimensions “to control.” Prelim.
`
`Resp. 19–20. On the present record, Patent Owner’s argument is not
`
`commensurate with the scope of the claim or its broadest reasonable
`
`interpretation. The claim only requires “individually and continuously
`
`controllable” elements that are “pivotal about two axes,” and further
`
`describes the function of those elements as including both “to reflect” and
`
`“to control.” How those functions are to be accomplished has no bearing on
`
`what structure is required by the claim. No express construction of the “to
`
`reflect” and “to control” limitations is necessary for purposes of this
`
`decision.
`
`
`6 For the same reasons we decline to adopt for purposes of this decision
`Petitioner’s proposition that other claim phrases reciting “wherein,”
`“whereby,” and “for” should be considered non-limiting. See Pet. 10–11.
`12
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`3.
`
`Additional Claim Terms
`
`Petitioner addresses several additional claim terms, including
`
`“continuously controllable,” “spectral monitor,” “beam-focuser,” and “in
`
`two dimensions.” Pet. 9–16. For purposes of this decision, no express
`
`construction of any additional claim term is necessary.
`
`B.
`
`References Asserted as Prior Art
`
`Petitioner relies on Bouevitch, Smith, Lin, and Dueck with respect to
`
`its assertion that the challenged claims would have been obvious.
`
`1.
`
`Bouevitch
`
`Bouevitch describes an optical device for rerouting and modifying an
`
`optical signal, including modifying means such as a MEMS array and a
`
`liquid crystal array which functions as an attenuator when the device
`
`operates as a dynamic gain equalizer, and as a switching array when the
`
`device operates as a configurable optical add/drop multiplexer (“COADM”).
`
`Ex. 1003, Abstract.
`
`2.
`
`Smith
`
`Smith describes an optical switch including an array of mirrors tiltable
`
`about two axes, permitting a mirror tilt axis to be used for switching and a
`
`perpendicular axis to be used for power control. Ex. 1004, Abstract, 16:34–
`
`51; see also Ex. 1005, 6 (describing the same).
`
`3.
`
`Lin
`
`
`
`Lin describes a “spatial light modulator . . . operable in the analog
`
`mode for light beam steering or scanning applications.” Ex. 1010, Abstract.
`
`Lin explains that the angular deflection of a mirror about the torsional axis is
`
`a function of the voltage potential applied to an address electrode. Id. at
`
`13
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`6:29–32. Petitioner contends that Figure 3B of Lin depicts a continuous and
`
`linear relationship between the deflection angle of the MEMS mirrors and
`
`the applied voltage. Pet. 30.
`
`
`
`
`
`4.
`
`Dueck
`
`Dueck describes a wavelength division multiplexer that integrates an
`
`axial gradient refractive index element with a diffraction grating to provide
`
`efficient coupling from a plurality of input sources. Ex. 1021, Abstract.
`
`Petitioner contends that Dueck describes various diffraction gratings for use
`
`in WDM devices. Pet. 17.
`
`C.
`
`Asserted Obviousness Over Bouevitch, Smith, and Lin
`
`Petitioner asserts that claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46,
`
`53, and 61–65 would have been obvious over Bouevitch, Smith, and Lin.
`
`Pet. 23–60.
`
`1.
`
`Claim 1
`
`Petitioner first argues that during reissue Patent Owner admitted that
`
`all elements of claim 1, except for two-axis mirrors, were disclosed by
`
`Bouevitch. Pet. 7– 9. Rather than identify any such admission, Petitioner
`
`directs us to a Replacement Reissue Application Declaration by Assignee
`
`which states:
`
`At least one error upon which reissue is based is
`described as follows: Claim 1 is deemed to be too broad and
`invalid in view of U.S. Patent No. 6,498,872 to Bouevitch and
`further in view of one or more of U.S. Patent No. 6,567,574 to
`Ma, U.S. Patent No. 6,256,430 to Jin, or U.S. Patent No.
`6,631,222
`to Wagener by failing
`to
`include
`limitations
`regarding the spatial array of beam deflecting elements being
`individually and continuously controllable in two dimensions to
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`control the power of the spectral channels reflected to selected
`output ports, as indicated by the amendments to Claim 1 in the
`Preliminary Amendment [referred to above].
`
`Pet. 7–8, (quoting Ex. 1002, 104 (emphases omitted)). Rather than admit
`
`that all original elements of claim 1 are disclosed by Bouevitch, the
`
`statement makes clear that three additional references not relied upon by
`
`Petitioner in this proceeding were considered in combination with
`
`Bouevitch. Moreover, Petitioner identifies no persuasive authority for the
`
`proposition that such a statement should be treated as an admission in this
`
`proceeding. As a result, we are not persuaded that Patent Owner has
`
`admitted all elements of claim 1, except for two-axis mirrors, were disclosed
`
`by Bouevitch.
`
`
`
`Petitioner also provides contentions as to how the relied upon prior art
`
`describes the elements of claim 1. Petitioner contends that Bouevitch
`
`describes microlenses 12a and 12b, corresponding to the recited “multiple
`
`fiber collimators.” Pet. 24. We are not persuaded on the present record by
`
`Patent Owner’s argument that Bouevitch describes only a “single”
`
`collimating lens 990 (or 90 in Figure 11). See Prelim. Resp. 41. To the
`
`contrary, Bouevitch describes two microlenses, 12a and 12b, disposed on
`
`one side of lens 90. Ex. 1003, 14:20–21. Petitioner’s declarant, Dan
`
`Marom, equates microlenses 12a and 12b to fiber collimators. Petitioner
`
`further asserts that the microlenses of Bouevitch, in conjunction with fiber
`
`waveguides and circulators, provide an input port (labeled “IN”), and a
`
`plurality of output ports (labeled “OUT EXPRESS” and “OUT DROP”).
`
`Pet. 24 (citing Ex. 1003, Fig. 11). Petitioner’s contentions are supported by
`
`Mr. Marom. Ex. 1028 ¶¶ 52–53.
`
`15
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`Patent Owner argues that the ports relied upon by Petitioner in
`
`Bouevitch are optical circulators, and that the’678 patent teaches away from
`
`the use of optical circulators. Prelim. Resp. 42. In particular Patent Owner
`
`argues:
`
`In contrast to Aksyuk [U.S. Patent No. 6,204,946], the
`’678 patent presents an optical add/drop multiplexer that “is
`able to perform both the add and drop functions without
`involving additional optical components (such as optical
`circulators used in the system of Aksyuk et al.).” ([Ex. 1001] at
`3:6-9 (emphasis added).)
`
`Prelim. Resp. 43. Patent Owner’s argument misrepresents what is set forth
`
`in the ’678 patent, which makes clear that it is contrasting Aksyuk to
`
`Tomlinson (U.S. Patent No. 5,960,133), not to the ’678 patent, and the ’678
`
`patent further proceeds to identify drawbacks of the Tomlinson OADM. See
`
`Ex. 1001, 2:65–3:19. Patent Owner’s attorney argument is not persuasive on
`
`the present record.
`
`Petitioner identifies Bouevitch’s diffraction grating 20 as a
`
`“wavelength-separator,” as recited in claim 1. Pet. 25–26. Petitioner also
`
`identifies Bouevitch’s reflector 10 as a “beam-focuser,” as recited in claim 1.
`
`Id. at 26–27. Further, according to Petitioner, MEMS array 50 and reflectors
`
`51 and 52 of Bouevitch correspond to “a spatial array of channel
`
`micromirrors positioned such that each channel micromirror receives a
`
`corresponding one of said spectral channels.” Id. at 27.
`
`In addition to arguing that Bouevitch discloses the “continuously
`
`controllable” limitation of claim 1, Petitioner also identifies descriptions in
`
`Smith and Lin as corresponding to this limitation. Pet. 29–31. Patent
`
`Owner’s unsupported argument that Smith does not disclose the
`
`16
`
`
`
`IPR2014-01276
`Patent RE42,678 E
`
`“continuously controllable” limitation is not persuasive on the present
`
`record. See Prelim. Resp. 47–49. Moreover, Patent Owner has not disputed
`
`that Lin describes “continuously controllable,” as recited by claim 1. See id.
`
`at 49 n.4.
`
`With respect to the requirement of claim 1 that such channel
`
`micromirrors be “pivotal about two axes,” Petitioner relies on the description
`
`in Smith of a “multi-wavelength . . . optical switch including an array of
`
`mirrors tiltable about two axes, both to control the switching and to provide
`
`variable power transmission.” Pet. 31 (quoting Ex. 1004, Abstract). In light
`
`of Petitioner’s analysis, we are not persuaded by Patent Owner’s argument
`
`that the Petition should be denied for failure “to determine the scope of the
`
`prior art and independently ascertain the differences.” See Prelim. Resp. 2.
`
`With respect to a rationale for combining Bouevitch and Smith,
`
`Petitioner contends the use of the two-axis mirror of Smith in Bouevitch:
`
`(1) is a simple substitution of one known element for another yielding
`
`predictable results, (2) is the use of a known technique to improve similar
`
`devices, (3) would have been obvious to try as there are only two options for
`
`tilting MEMS mirrors: one-axis and two-axis mirrors, and (4) would have
`
`been the result of a motivation to reduce crosstalk in attenuation and to
`
`increase port density. Pet. 19–22.7
`
`Petitioner also contends that several reasons support the addition of
`
`Lin’s continuous analog control to the asserted combination, including
`
`
`7 Petitioner also argues, without citing authority, that Patent Owner admitted
`the “combinability” of references during prosecution, and that such
`admission applies to the references identified by Petitioner in “the identical
`technology area.” Pet. 22. We find no such admission.
`17
`
`
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`IPR2014-01276
`Patent RE42,678 E
`
`interchangeability with discrete-step mirrors and more precision in matching
`
`the optimal coupling value. Pet. 30.
`
`Patent Owner argues that Petitioner has not explained how Bouevitch
`
`and Smith could be combined without changing the principles of operation
`
`of one or both references. Prelim. Resp. 30–31. In particular, Patent Owner
`
`argues that because Bouevitch uses a single axis MEMS array, it does not
`
`rely on angular misalignment to attenuate power and, therefore, does not
`
`suffer from crosstalk. Id. at 31. Moreover, Patent Owner asserts that
`
`replacing a single axis mirror with a two-axis mirror would not be a simple
`
`substitution, and argues that Bouevitch teaches away from such a
`
`substitution because it treats angular displacement as disadvantageous. Id. at
`
`31–37 (contending “Petitioner’s allegation is technically flawed”). Patent
`
`Owner further asserts that Bouevitch teaches away from using an external
`
`feedback loop to control power as described by Smith because the system of
`
`Bouevitch eliminates the need for external feedback. Id. at 37–39.
`
`At this stage of the proceedings, absent additional supporting
`
`evidence, we are not persuaded by Patent Owner’s attorney arguments and
`
`credit the testimony of Petitioner’s declarant, Mr. Marom. Accordingly,
`
`based on the information presented, Petitioner has demonstrated a
`
`reasonable likelihood that it would prevail in showing claim 1 unpatentable
`
`as obvious over Bouevitch, Smith, and Lin.
`
`2. Claims 2–4, 9, 10, 13, 19–23, 27, 44–46, and 61–65.
`
`
`
`In addition to addressing the elements of claim 1, Petitioner also
`
`identifies how claims 2–4, 9, 10, 13, 19–23, 27, 44–46, and 61–65 would
`
`have been obvious over Bouevitch, Smith, and Lin, as supported by the
`
`18
`
`
`
`IPR2014-01276
`Patent RE42,678 E
`
`Declaration of Mr. Marom. Pet. 35–45, 47–60. Patent Owner has not raised
`
`additional arguments with regard to the additional challenged claims beyond
`
`those addressed above with respect to claim 1. Based on the information
`
`presented, Petitioner has demonstrated a reasonable likelihood that it would
`
`prevail in showing claims 2–4, 9, 10, 13, 19–23, 27, 44–46, and 61–65
`
`unpatentable as obvious over Bouevitch, Smith, and Lin.
`
`D.
`
`Asserted Obviousness Over Bouevitch, Smith, Lin, and Dueck
`
`Petitioner contends claims 17, 29, and 53 would have been obvious
`
`over Bouevitch, Smith, Lin, and Dueck. Claim 17 recites the device of
`
`claim 1, wherein the “wavelength-separator comprises an element selected
`
`from the group consisting of ruled diffraction gratings, holographic
`
`diffraction gratings, echelle gratings, curved diffraction gratings, and
`
`dispersing gratings.” Ex. 1001, 15:14–18. Claims 29 and 53 recite similar
`
`limitations. Petitioner contends that Dueck discloses ruled diffraction
`
`gratings, as claimed. Pet. 46. Petitioner further asserts that it would have
`
`been obvious to try Dueck’s ruled diffraction gratings in the devices of
`
`Bouevitch and Smith because it represents the “best mode” of separating
`
`wavelengths in WDM devices. Id. at 44–47. Based on the information
`
`presented, Petitioner has demonstrated a reasonable likelihood that it would
`
`prevail in showing claims 17, 29, and 53 unpatentable as obvious over
`
`Bouevitch, Smith, Lin, and Dueck.
`
`E.
`
`Additional Grounds of Unpatentability
`
`The patent rules promulgated for AIA post-grant proceedings,
`
`including those pertaining to institution, are “construed to secure the just,
`
`speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
`
`19
`
`
`
`IPR2014-01276
`Patent RE42,678 E
`
`§ 42.1(b); see also 35 U.S.C. § 316(b) (regulations for AIA post-grant
`
`proceedings take into account “the efficient administration of the Office”
`
`and “the ability of the Office to timely complete [instituted] proceedings”).
`
`Therefore, we exercise our discretion and, for reasons of administrative
`
`necessity to ensure timely completion of the instituted proceeding, do not
`
`institute a review limited to the grounds asserting unpatentability of claims
`
`1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46, 53, and 61–65 as obvious over
`
`Bouevitch and Smith; claims 17, 29, and 53 as obvious over Bouevitch,
`
`Smith, and Lin; and claims 17, 29, and 53 as obvious over Bouevitch, Smith,
`
`and Dueck. See 37 C.F.R. § 42.108(a).
`
`
`
`
`
`20
`
`
`
`IPR2014-01276
`Patent RE42,678 E
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that inter partes review of U.S. Patent No. RE42,678 E is
`
`instituted in IPR2014-01276 with respect to the following grounds of
`
`unpatentability:
`
`(1) claims 1–4, 9, 10, 13, 19–23, 27, 44–46, and 61–65 as obvious
`
`over Bouevitch, Smith, and Lin under 35 U.S.C. § 103(a);
`
`(2) claims 17, 29, and 53 as obvious over Bouevitch, Smith, Lin, and
`
`Dueck under 35 U.S.C. § 103(a);
`
`FURTHER ORDERED that no ground other than those specifically
`
`instituted above is authorized for the inter partes review; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of U.S. Patent No. RE42,678 E is hereby instituted in
`
`IPR2014-01276 commencing on the entry date of this Order, and pursuant to
`
`35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the
`
`institution of a trial.
`
`21
`
`
`
`
`
`22
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`IPR2014-01276
`Patent RE42,678 E
`
`
`PETITIONER:
`
`Wayne Stacy
`wstacy@cooley.com
`
`Matthew Leary
`capellacisco@cooley.com
`
`
`
`PATENT OWNER:
`
`Robert Sterne
`Rsterne-ptab@skgf.com
`
`Jon Wright
`Jwright-ptab@skgf.com
`
`Jason Eisenberg
`Jasone-ptab@skgf.com
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