UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`CISCO SYSTEMS, INC., CIENA CORPORATION,
`CORIANT OPERATIONS, INC., CORIANT (USA) INC., AND
`FUJITSU NETWORK COMMUNICATIONS, INC.
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`___________________
`
`Case IPR2014-012761
`Patent RE42,678
`___________________
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`OF THE JUDGMENT AND FINAL WRITTEN DECISION
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Case IPR2015-00894 has been joined with this proceeding.
`
`
`
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`CISCO SYSTEMS, INC., CIENA CORPORATION,
`CORIANT OPERATIONS, INC., CORIANT (USA) INC., AND
`FUJITSU NETWORK COMMUNICATIONS, INC.
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`___________________
`
`Case IPR2014-012761
`Patent RE42,678
`___________________
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`OF THE JUDGMENT AND FINAL WRITTEN DECISION
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Case IPR2015-00894 has been joined with this proceeding.
`
`
`
`
`
`IPR2014-01276
`U.S. Pat. No. RE42,678
`
`TABLE OF CONTENTS
`
`
`I. Statement of Relief Requested .............................................................................. 1
`II. The Facts Support Only One Conclusion: Bouevitch Teaches Away From
`Misalignment to Control Power. ................................................................................ 1
`A. Bouevitch Teaches Away from Smith’s Power-Control Method. .................. 2
`1. Bouevitch Explicitly Discourages the Power-Control Method Disclosed in
`Smith. .................................................................................................................. 3
`2. A POSA, After Reading Bouevitch, Would Have Been Led Down a
`Divergent Path. .................................................................................................... 5
`B. Petitioner’s Argument is Factually Incorrect .................................................. 6
`III. Combining Bouevitch and a Two-Axis Mirror Would Disrupt Bouevitch’s
`Principle of Operation. .............................................................................................10
`IV. Conclusion .........................................................................................................12
`
`
`
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`- i -
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`IPR2014-01276
`U.S. Pat. No. RE42,678
`
`I.
`
`Statement of Relief Requested
`
`The Board should rehear and reverse its Final Written Decision because the
`
`Board overlooked key facts Capella raised in its Patent Owner Response and
`
`misinterpreted Capella’s arguments on the combinability of U.S. Patent No.
`
`6,498,872 to Bouevitch et al. and U.S. Patent No. 6,798,941 to Smith et al.
`
`In its Patent Owner Response, Capella primarily relied on two reasons why a
`
`person having ordinary skill in the art at the time of the invention (“POSA”) would
`
`not have combined Bouevitch and Smith: (1) Bouevitch teaches away from using
`
`misalignment and angular displacement to control power; and (2) combining
`
`Bouevitch and a two-axis mirror would change the basic principle under which
`
`Bouevitch was designed to operate. For the first reason, the Board erred because it
`
`credited Petitioner’s arguments, which are factually incorrect. For the second
`
`reason, the Board misinterpreted Capella’s arguments. Accordingly, Capella
`
`requests rehearing under 37 C.F.R. §42.71(d).
`
`II. The Facts Support Only One Conclusion: Bouevitch Teaches Away
`From Misalignment to Control Power
`
`Capella argued in its Patent Owner Response that a POSA would not have
`
`combined Bouevitch and Smith because Bouevitch
`
`teaches away from
`
`misalignment and angular displacement—the method Smith uses to control power.
`
`POR, Paper 15, pp. 27-30. The Board disagreed with Capella’s arguments and
`
`credited Petitioner with showing that certain embodiments in Bouevitch disclose
`
`
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`- 1 -
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`IPR2014-01276
`U.S. Pat. No. RE42,678
`misalignment. Final Written Decision, Paper 40, p. 38 (citing Pet. Reply, pp. 3-5;
`
`Ex. 1028, ¶ 76). But under the proper legal standard described below, the facts
`
`prove that Bouevitch teaches away from misalignment and angular displacement to
`
`control power—the power-control method in Smith.
`
`A. Bouevitch Teaches Away from Smith’s Power-Control Method
` “A reference may be said to teach away when a person of ordinary skill,
`
`upon reading the reference, would be discouraged from following the path set out
`
`in the reference, or would be led in a direction divergent from the path that was
`
`taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (emphasis
`
`added); see also In re Fulton, 391 F.3d 1195, 1200 (“A case on point is In re
`
`Gurley”); DePuy Spine, Inc. v. Medtronic Sofamor Danek, 567 F.3d 1314, 1326-29
`
`(Fed. Cir. 2009).2
`
`
`2 In re Fulton, the case the Board relied on, is distinguishable because the
`
`reference in that case did not criticize or discourage use of alternatives; the
`
`reference merely chose a preference. In re Fulton, 391 F.3d 1195, 1200-01 (Fed.
`
`Cir. 2004) (a reference must “criticize, discredit, or otherwise discourage” to teach
`
`away); see also In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (a disclosure
`
`of an “inferior” alternative is insufficient for a teaching away unless the reference
`
`criticizes, discredits, or otherwise discourages such a combination). This case is
`
`
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`- 2 -
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`IPR2014-01276
`U.S. Pat. No. RE42,678
`As explained below, Bouevitch’s disclosure meets this standard. In
`
`particular, after reading Boeuvitch, a POSA (1) would have been discouraged from
`
`using misalignment to control power; and (2) would have been led down a
`
`divergent path.
`
`1. Bouevitch Explicitly Discourages the Power-Control
`Method Disclosed in Smith
`
`Smith teaches a method to control power in an optical system—misaligning
`
`or angularly displacing an output beam to an output port. See Smith, Ex. 1004,
`
`17:24-38; see also id. at FIGS. 17, 18 (reproduced below); POR, pp. 27-30.
`
`
`
`Bouevitch, however, explicitly teaches away from this method. According to
`
`Bouevitch, the prior art “is limited in that the add/drop beams of light are angularly
`
`displaced relative to the input/output beams of light. This angular displacement is
`
`disadvantageous with respect to coupling the add/drop and/or input/output beams
`
`of light into parallel optical waveguides . . . .” Bouevitch, Ex. 1003, 2:1-7. To
`
`
`distinguishable because Bouevitch includes the explicit criticism and
`
`discouragement lacking in In re Fulton and In re Mouttet. See infra Part II.A.1.
`
`
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`- 3 -
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`IPR2014-01276
`U.S. Pat. No. RE42,678
`avoid this angular displacement, Bouevitch discloses two sets of embodiments,
`
`which both avoid misalignment or angular displacement to the output port. First,
`
`Bouevitch discloses embodiments where “[t]he lateral displacement of the input
`
`and modified output beams of light (i.e., as opposed to angular displacement)
`
`allows for highly efficient coupling between a plurality of
`
`input/output
`
`waveguides.” Bouevitch, 7:60-63; see also id. at 10:62-11:4. Second, Bouevitch
`
`discloses embodiments where the angular displacement of an input beam is
`
`corrected on the beam’s return path. See id. at 13:65-14:13.
`
`In both sets of embodiments, Bouevitch’s optical system either avoids or
`
`corrects misalignment and angular displacement to have “fewer alignment
`
`problems and less loss than prior art systems.” Id. at 10:62-11:4; see also id. at
`
`15:28-30 (physically moving
`
`the ports
`
`if, for whatever reason, angular
`
`displacement is introduced to the system). This is, according to Boeuvitch, the
`
`“advantage” of its system. Id. at 10:62-11:4.
`
`To avoid these disadvantages, every embodiment of Bouevitch purposefully
`
`performs power control at the modifying means—not at the port—and reflects each
`
`modified sub-beam back to the output port. See, e.g., id. at 2:44-61 (“In accordance
`
`with the instant invention there is provided an optical device comprising [a]
`
`modifying means . . . for selectively modifying each sub-beam of light and for
`
`reflecting each of the modified sub-beams back . . . along substantially parallel
`
`
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`- 4 -
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`IPR2014-01276
`U.S. Pat. No. RE42,678
`optical paths.”) (emphasis added); see also Record of Oral Hearing, Paper 39,
`
`55:16-56:2. As a result, Bouevitch is able to maintain efficient coupling of the
`
`output beams to the output port, while still performing power control. See, e.g.,
`
`Bouevitch, 2:1-7.
`
`2. A POSA, After Reading Bouevitch, Would Have Been Led
`Down a Divergent Path
`
`A POSA, after reading Bouevitch, would have been led down a divergent
`
`path from the misalignment and angular displacement taught in Smith because
`
`Bouevitch teaches that power control should be performed at a modifying means—
`
`not the output port. This is true for every embodiment of Bouevitch, including
`
`Bouevitch’s claimed invention. See, e.g., Bouevitch, claims 1, 5, 12, 27.
`
`The four embodiments in Figures 3a, 3b, 3c, 3d, 4a, 4b, and 5 control power
`
`at the modifying means—not the output port. See id. at 6:33-41; 6:56-59; 7:9-12;
`
`7:37-43; see also id. at 7:45-49 (“[O]ther modifying means 150 including at least
`
`one optical element capable of modifying . . . and reflecting the modified beam of
`
`light back in substantially the same direction from which it originated are
`
`possible.”). The embodiment in Figures 6a and 6b controls power at the modifying
`
`means—not the output port. Id. at 10:47-51 (“Each sub-beam of light . . . is
`
`modified and reflected backwards . . . .”). The embodiment in Figure 8 controls
`
`power at the modifying means—not the output port. Id. at 11:32-35 (“Once
`
`
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`- 5 -
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`IPR2014-01276
`U.S. Pat. No. RE42,678
`attenuated, the sub-beams of light are reflected back . . . .”). And the embodiment
`
`in Figure 9 controls power at the modifying means—not the output port. Id. at
`
`12:60-67 (“The spherical reflector 910 redirects the modified spatially dispersed
`
`beam of light back . . . such that it is recombined to form a single modified output
`
`beam of light . . . .”).
`
`In each of Bouevitch’s seven embodiments that control power, attenuation
`
`always occurs at the modifying means and away from the output port. Combined
`
`with Bouevitch’s teachings that misalignment and angular displacement are
`
`disadvantageous, a POSA would have been led down a divergent path from the
`
`misalignment and angular displacement taught in Smith.
`
`B. Petitioner’s Argument is Factually Incorrect
`Petitioner’s conclusion that Bouevitch teaches misalignment for power
`
`control is incorrect for at least three reasons.
`
`First, Petitioner and its expert rely on Bouevitch’s Figure 5 embodiment.
`
`Pet., Paper 2, pp. 33-34, Pet. Reply, Paper 20, pp. 2-3; Marom Decl., Ex. 1028, ¶
`
`76. But in Bouevitch’s Figure 5 embodiment, the light beam is attenuated before it
`
`even reaches the output port. Bouevitch explains:
`
`After passing through the quarter waveplate 157 for a second time, the
`attenuated sub-beam of light will have a polarization state that has
`been rotated 90° from the original polarization state. As a result, the
`
`
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`- 6 -
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`IPR2014-01276
`U.S. Pat. No. RE42,678
`attenuated sub-beam is refracted in the birefringent element 156 and
`is directed out of the device to port 102b.
`
`Bouevitch, 7:37-43 (emphasis added).
`
`
`
`In the Figure 5 embodiment, the light beam is attenuated when passing
`
`through the modifying means. See id.; see also POR, p. 17. And Bouevitch
`
`performs attenuation with a MEMS 155 that does not even tilt—it deflects. See
`
`Bouevitch, 7:35-37. So Petitioner’s reliance on Figure 5 to show misalignment at
`
`the output port is misplaced.
`
`Second, Petitioner
`
`relies on mischaracterized
`
`testimony
`
`from Dr.
`
`Sergienko’s deposition. See Pet. Reply, pp. 3-4. Although Dr. Sergienko testified
`
`that Bouevitch could control power using misalignment, Dr. Sergienko testified
`
`that a POSA would not have had a motivation to use misalignment in Bouevitch
`
`because every embodiment of Bouevitch purposefully performs power control at a
`
`modifying means. See POR, pp. 27-28; see also Ex. 2004, ¶¶ 70, 126 (“a POSA
`
`would not have combined Smith’s two-axis mirrors with Bouevitch because Smith
`
`and Bouevitch use entirely different means to control power.”), 134. Bouevitch
`
`may be technically capable of controlling power through misalignment. See Ex.
`
`1049, 145:11-17. However, if a POSA wanted to improve power control in
`
`Bouevitch, the POSA would have pursued power-control methods that remained
`
`isolated from the output port. See Ex. 2004, ¶¶ 130, 131, 134; Ex. 1049, 147:4-18.
`
`
`
`- 7 -
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`IPR2014-01276
`U.S. Pat. No. RE42,678
`So, Dr. Sergienko’s testimony does not lead to a conclusion that Bouevitch teaches
`
`misalignment or that a POSA would have used misalignment in Bouevitch. It leads
`
`to the opposite conclusion.
`
`Third, Petitioner in its Reply relied on disclosure from Bouevitch’s Figure 9
`
`embodiment, which allegedly can comprise a MEMS array. Pet. Reply, pp. 3-4.3
`
`Figure 9 does not expressly disclose power control using angular misalignment, so
`
`Petitioner alleges that “the principle is inherent because the POSA would recognize
`
`that angular misalignment is necessarily present in Fig. 9.” Pet. Reply, p. 4. But
`
`inherency cannot counter the teaching away. For inherency, “[t]he mere fact that a
`
`certain thing may result from a given set of circumstances is not sufficient.” In re
`
`Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (citing In re Oelrich, 666 F.2d 578,
`
`581-82 (CCPA 1981)) (emphasis in original). To show inherency, the feature must
`
`be necessarily present in the reference. Id.
`
`[T]he extrinsic evidence must make clear that the missing descriptive
`matter is necessarily present in the thing described in the reference,
`and that it would be so recognized by persons of ordinary skill.
`Inherency, however, may not be established by probabilities or
`possibilities. The mere fact that a certain thing may result from a
`given set of circumstances is not sufficient.
`
`3 The Board deemed this line of argument outside the scope of the Petition.
`
`See Final Written Decision, p. 36 n.14.
`
`
`
`- 8 -
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`
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`IPR2014-01276
`U.S. Pat. No. RE42,678
`In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).
`
`Misalignment
`
`is not
`
`inherent
`
`in Bouevitch because Bouevitch’s
`
`embodiments comprising MEMS do not necessarily control power using
`
`misalignment. Rather, the embodiments using MEMS can control power without
`
`using misalignment. For example, the Figure 5 embodiment comprises MEMS.
`
`Bouevitch, 7:23-26. And an optical configuration using the Figure 5 embodiment
`
`controls power using polarization-based optics; it does not control power using
`
`misalignment. Bouevitch, 7:37-49. Since misalignment is not necessarily present,
`
`Bouevitch neither expressly nor inherently discloses misalignment.
`
`* * *
`
`A POSA, after reading Bouevitch, would have been led down an alternative
`
`path from the one taken by Capella. Bouevitch not only explicitly discourages
`
`misalignment, but every embodiment points in the direction of controlling power
`
`away from the output port. Therefore, a POSA would have had no reason to look to
`
`an inconsistent method to control power, even if that method existed at the time of
`
`the invention. For these reasons, the Board erred in determining that Bouevitch
`
`does not teach away from the power-control method taught in Smith.
`
`
`
`- 9 -
`
`
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`IPR2014-01276
`U.S. Pat. No. RE42,678
`III. Combining Bouevitch and a Two-Axis Mirror Would Disrupt
`Bouevitch’s Principle of Operation
`
`Capella also asks for rehearing because the Board misinterpreted Capella’s
`
`argument that combining Bouevitch with a two-axis mirror would disrupt
`
`Bouevitch’s principle of operation.
`
`Capella argued in its Patent Owner Response that a POSA would not have
`
`combined Bouevitch and a two-axis mirror because “the combination would
`
`disrupt Bouevitch’s polarization-based switch.” POR, pp. 26-27; see also Record
`
`of Oral Hearing, 53:1-53:24, 54:19-55:3. The Board in its Final Written Decision,
`
`however, misinterpreted Capella’s argument. See Final Written Decision, pp. 38-
`
`39.
`
`Capella did not argue that Bouevitch and Smith are not combinable because
`
`Smith’s mirrors cannot be bodily incorporated into Bouevitch. Contra id. at 37,
`
`with POR, pp. 26-27. Rather, Capella argued that a POSA would not have been
`
`motivated to combine Bouevitch and a two-axis mirror because doing so would
`
`require substantial reconstruction and redesign, as well as a change in the basic
`
`principle under which Bouevitch was designed to operate. POR, pp. 23-27; see
`
`also Ex. 2004, ¶¶ 112, 122 (“a POSA would not have been motivated to combine
`
`Smith’s two-axis mirrors with Bouevitch because the combination would render
`
`Bouevitch unsatisfactory for its intended purpose.”).
`
`
`
`- 10 -
`
`
`
`IPR2014-01276
`U.S. Pat. No. RE42,678
`When a combination “would require a substantial reconstruction and
`
`redesign of the elements shown in [the primary reference] as well as a change in
`
`the basic principle under which the [primary reference] construction was designed
`
`to operate,” the combination is not obvious. See In re Ratti, 270 F.2d 810, 813
`
`(CCPA 1959); see also M.P.E.P. § 2143.01 (“The proposed modification cannot
`
`change the principle of operation of a reference.”).
`
`Similar to In re Ratti where the combination would have resulted in
`
`substantial reconstruction, substantial redesign, and a change in the basic principles
`
`the primary reference was designed to operate, combining Bouevitch and a two-
`
`axis mirror would result in substantial reconstruction, substantial redesign, and a
`
`change in the core principle Bouevitch was designed to operate. See POR, pp. 26-
`
`27. Bouevitch’s 4-f optical configuration is purposefully designed to avoid
`
`misalignment and angular displacement by using polarization-based optics to
`
`attenuate power. See Bouevitch, 2:1-7; POR, pp. 26-27. As acknowledged by the
`
`Board, combining Bouevitch and a two-axis mirror would require substantial
`
`engineering. See Final Written Decision, pp. 39-40. The combination would
`
`require complex redesign. See POR, pp. 25-26. And importantly, the combination
`
`would fundamentally change the optical principles Bouevitch uses to attenuate
`
`power. See POR, pp. 25-27.
`
`
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`- 11 -
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`lPR20l4-01276
`
`U.S. Pat. No. RE42,678
`
`Capella’s argument therefore is that a POSA would not have had a
`
`motivation to use a two-axis mirror in Bouevitch because doing so would require
`
`substantial reconstruction and redesign with no added benefit, while
`
`simultaneously disrupting the core principle under which Bouevitch was designed
`
`to operate. This alone is a sound argument for why a POSA would not have had a
`
`motivation to combine Bouevitch and Smith.
`
`IV. Conclusion
`
`The Board erred in determining that a POSA would have had a motivation to
`
`combine Bouevitch and Smith. Bouevitch explicitly teaches away from using the
`
`power-control method disclosed in Smith, and even if Bouevitch does not teach
`
`away, incorporating Smith’s power-control method into Bouevitch would disrupt
`
`the core principle under which Bouevitch was designed to operate. Accordingly,
`
`the Board should rehear and reverse its Final Written Decision for claims 1-4, 9,
`
`10, 13, 19-23, 27, 44-46, and 61-65.
`
`Date: March 16, 2016
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371 2600
`
`/%L/‘rmya
`
`Robert Greene Sterne
`Registration No. 28912
`Attorney for Patent Owner —
`Capella Photonics, Inc.
`
`-12-
`
`
`
`CERTIFICATE OF SERVICE
`
`1PR20l4-01276
`
`U.S. Pat. No. RE42,678
`
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`REQUEST FOR REHEARING OF THE JUDGMENT AND INAL
`
`WRITTEN DECISION was served electronically Via e—mail in its entirety on
`
`March 16, 2016, upon the following counsel for Petitioner:
`
`Wayne 0. Stacy
`Matthew J. Leary
`Matthew J. Moore
`
`Robert Steinberg
`Christopher Chalsen
`Nathaniel Browand
`
`Lawrence T. Kass
`
`Suraj Balusu
`Thomas K. Pratt
`
`J. Pieter van Es
`
`Jordan N. Bodner
`
`Michael S. Cuviello
`
`wstacy@cooley.com
`CapellaCisco@cooley.com
`Matthew.Moore@lw.corn
`Bob.Steinberg@lw.com
`CCha1sen@mi1bank.com
`NBrowand@milbank.com
`LKass@mi1bank.com
`SBalusu@milbank.com
`TPratt@Ea1merwitcoff.com
`PvanEs@bannerwitcoff.com
`JBodner@bannerwitcoff.com
`MCuViello@bannerwitcoff.com
`
`Date: March 16, 2016
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`1100 New York Avenue, N.W.
`
`Washington, D.C. 20005
`(202) 371-2600
`
`Raw/mam
`
`Robert Greene Sterne
`
`Registration No. 28,912
`Attorney for Patent Owner —
`Capella Photonics, Inc.
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