UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Cisco Systems, Inc.
`Petitioner
`
`v.
`
`Capella Photonics, Inc.
`Patent Owner
`
`Patent No. RE42,678
`Filing Date: June 15, 2010
`Reissue Date: September 6, 2011
`
`Title: RECONFIGURABLE OPTICAL ADD-DROP MULTIPLEXERS WITH
`SERVO CONTROL AND DYNAMIC SPECTRAL POWER MANAGEMENT
`CAPABILITIES
`
`
`
`Inter Partes Review No. 2014-01276
`
`PETITIONER'S REPLY TO PATENT OWNER’S RESPONSE
`
`

`
`B.
`
`C.
`
`
`
`
`INTRODUCTION ........................................................................................ 1
`I.
`II. RESPONSES TO PATENT OWNER’S (PO’S) ARGUMENTS ............. 1
`A.
`Petitioner does not “conflate two disparate embodiments of
`Bouevitch” [Corresponds to Response § III.A] ................................... 1
`It was obvious to use 2-axis mirrors, including by combining
`Bouevitch Fig. 11 with Smith [Corresponds to Response §
`III.B] ..................................................................................................... 2
`1.
`Bouevitch teaches a MEMS structure for switching in
`Fig. 11 that also performs power control using the same
`angular misalignment principle that Smith uses ........................ 2
`PO mischaracterizes the test for obviousness ............................ 4
`Engineering considerations are not a legal reason to
`block combining Bouevitch & Smith, as the patentee
`confirmed ................................................................................... 5
`PO did not deny Petitioner’s non-combinatory
`obviousness rationales [Corresponding in part to
`Response § III.B.3] .................................................................... 6
`PO proved no secondary considerations of non-
`obviousness ................................................................................ 7
`Bouevitch teaches “multiple fiber collimators,
`providing…ports” [Corresponds to Response § III.C] ........................ 8
`1.
`Bouevitch’s microlenses “provide” ports [Corresponds to
`Response § III.C.1] .................................................................... 8
`a.
`The ordinary meaning of “providing” ............................. 8
`b.
`Bouevitch meets the ordinary meaning of “fiber
`collimators providing…ports” ......................................... 9
`PO’s implicit (and incorrect) BRI for “providing”
`is “exclusively providing on a one-to-one to basis” ........ 9
`PO’s proposed BRI for “collimators providing …
`ports” is incorrect ........................................................... 10
`
`2.
`3.
`
`4.
`
`5.
`
`c.
`
`d.
`
`
`
`ii
`
`

`
`2.
`
`3.
`
`The ‘678 encompasses circulator ports [Response §
`III.C.2] ...................................................................................... 11
`a.
`There is no dispute that the ordinary and
`customary meaning of ports includes circulator
`ports ............................................................................... 12
`The patentee did not redefine “ports” ............................ 12
`b.
`The patent expressly encompasses circulators .............. 12
`c.
`There was no express disavowal of circulator ports ...... 13
`d.
`The patentee did not implicitly disavow circulator ports ........ 14
`a.
`PO lacks expert support for its disavowal claim ........... 14
`b.
`Dr. Marom did not imply that “port” excludes
`circulators [corresponds to Response § III.C.3] ............ 15
`Circulators do not limit scalability ................................ 15
`c.
`Circulators do not add significant size, cost or loss ...... 16
`d.
`Bouevitch reflects channels into ports in the same way
`disclosed in the ‘678 patent [Corresponds to Response § III.D] ....... 17
`It was obvious to use continuous mirror control in both axes
`[Corresponds to Response § III.E] ..................................................... 18
`1.
`PO fails to deny that continuous control was known and
`obvious to try ........................................................................... 18
`Lin teaches continuous control ................................................ 19
`Each of PO’s five arguments on Lin conflict with the
`facts .......................................................................................... 21
`Smith teaches continuous control ............................................ 22
`4.
`Bouevitch teaches continuous control ..................................... 22
`5.
`It was obvious to use any of the wavelength-selective devices
`recited in claims 17, 29, and 53 [Corresponds to Response § IV] ..... 23
`It was obvious to use Smith’s servo control in Bouevitch
`[Corresponds to Response § V] .......................................................... 23
`Smith is prior art to the ‘678 patent [Response § VI] ........................ 25
`PO cites no evidence or law for its unsupported RPI theory
`[Corresponds to Response § VII] ....................................................... 25
`iii
`
`2.
`3.
`
`
`
`
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`I.
`
`

`
`List of Exhibits Cited in this Reply
`
`
`
`
`
`Exhibit 1049: June 30, 2015, Deposition Transcript of Dr. Alexander V. Sergienko
`(“S. Tr.”)
`
`Exhibit 1050: Abdul Al-Azzawi, Fiber Optics: Principles and Practices (CRC
`Press 2006). (“Al-Azzawi”) (containing additional excerpts to the
`copy produced by Patent Owner at Ex. 2020)
`
`Exhibit 1051: U.S. Patent No. 6,950,609 to Marom (“Marom ‘609”)
`
`Exhibit 1052: Rajiv Ramaswami & Kumar N. Sivarajan, Optical Networks: A
`Practical Perspective (Morgan Kaufmann Publishers 2000).
`(“Ramaswami”)
`
`Exhibit 1053: FiberStore.com, Optical Circulators (listed under WDM Optical
`Network->Passive Optical Components->Optical Circulator)
`
`Exhibit 1054: The American Heritage College Dictionary, Houghton Mifflin Co.
`(1997 3d. Ed.)
`
`Exhibit 1055: Clifford Holliday, Components for R-OADMs ’05 (B & C
`Consulting Services & IGI Consulting Inc. 2005). (“Updated
`Holliday R-OADMs”) (containing additional excerpts to the copy
`produced by Patent Owner at Ex. 2009)
`
`Exhibit 1056: Clifford Holliday, Switching the Lightwave: OXC’s – The
`Centerpiece of All Optical Network (IGI Consulting Inc. & B & C
`Consulting Services 2001). (“Updated Holliday OXC”) (containing
`additional excerpts to the copy produced by Patent Owner at Ex.
`2011)
`
`Exhibit 1057: Webster’s New World Dictionary (1994 3d. Ed.)
`
`Petitioner also incorporates herein all exhibits from the IPR2014-01276 petition.
`
`
`
`iv
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`

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`Case No. 2014-01276 - Atty. D. No. CSCO-002/00US [034855.2015] (RE42,678)
`Petitioner’s Reply to Patent Owner’s Response
`
`I.
`
`INTRODUCTION
`
`The PO has provided nothing to warrant altering the Board’s determination
`
`that Petitioner should prevail on all of the challenged claims.
`
`II. RESPONSES TO PATENT OWNER’S (PO’S) ARGUMENTS
`A.
`Petitioner does not “conflate two disparate embodiments of
`Bouevitch” [Corresponds to Response § III.A]
`
`PO argues that Petitioner “appears to rely on” the beam modifying means of
`
`Bouevitch Fig. 5 in addition to Fig. 11. Ex. 2004, ¶ 122. PO contends (1) that Fig.
`
`5 is incompatible with Fig. 11 and Smith, and (2) that “[a]lthough not explicit in
`
`the Petition, Petitioner places modifying means 150 [of Fig. 5] into the
`
`configuration shown in Figure 11.” Resp., 21. Neither contention is accurate. Fig.
`
`5 has nothing to do with the Petition or with the instituted grounds, and Petitioner
`
`does not place Fig. 5 into Fig. 11 or otherwise rely on Fig. 5.
`
`Instead, the instituted combination of Bouevitch and Smith places only the
`
`2-axis MEMS modifying means of Smith into Bouevitch Fig. 11. In that
`
`combination, Fig. 11 discloses a COADM using MEMS mirrors that tilt in one axis
`
`for switching. Smith discloses mirrors that tilt in two axes as a substitute for one-
`
`axis mirrors for both switching and power control in COADMs. Pet., 31-35.
`
`It was obvious to replace Bouevitch’s 1-axis mirrors with Smith’s 2-axis
`
`mirrors in part because both references use the same operating principles for both
`
`optical switching and power control. Those principles are (1) tilting mirrors at
`
`
`
`1
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`

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`Case No. 2014-01276 - Atty. D. No. CSCO-002/00US [034855.2015] (RE42,678)
`Petitioner’s Reply to Patent Owner’s Response
`
`large angles to switch beams from one port to another for COADM (switching)
`
`functions, and (2) tilting at smaller angles to slightly misalign the beams to control
`
`power for DGE (Dynamic Gain Equalization) functions. Pet. at 33-35.
`
`As an example of principle (2), Petitioner cited generally to a passage (7:23-
`
`37) in Bouevitch. Pet., 18. That passage (which happens to mention Fig. 5),
`
`discusses tilting mirrors and misalignment for power control. Bouevitch also
`
`teaches the same general principle in embodiments like Fig. 11 that are unrelated
`
`to Fig. 5. As discussed in § II.B.1, infra, Fig. 11 can operate as a DGE, and as a
`
`DGE, it uses the same principle of misalignment for power control as Smith does.
`
`B.
`
`It was obvious to use 2-axis mirrors, including by combining
`Bouevitch Fig. 11 with Smith [Corresponds to Response § III.B]
`
`PO argues that substituting 2-axis mirrors for 1-axis mirrors was non-
`
`obvious. Resp., 23-32. Those arguments misapply both the law and the teachings
`
`of the prior art. Petitioner addresses each of these problems in detail below.
`
`1.
`
`Bouevitch teaches a MEMS structure for switching in Fig.
`11 that also performs power control using the same angular
`misalignment principle that Smith uses
`
`PO begins by mischaracterizing the combination of Bouevitch+Smith as
`
`involving Fig. 5, and then arguing that Fig. 5’s operating principle is different than
`
`Smith’s. Resp., 3-4. But as previously discussed, Fig. 5 is not relevant to
`
`Petitioner’s positions or the institution. § II.A, supra. Instead, it was obvious to
`
`combine Bouevitch Fig. 11 with Smith because both use the same principle of
`2
`
`
`
`

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`Case No. 2014-01276 - Atty. D. No. CSCO-002/00US [034855.2015] (RE42,678)
`Petitioner’s Reply to Patent Owner’s Response
`
`misaligning light beams for power control. Pet., 32-34. Bouevitch explicitly
`
`teaches this principle for Fig. 11, and the principle is also inherent. S. Tr., 145.
`
`Bouevitch teaches that the structure of Fig. 11 (a COADM) also works as a
`
`DGE. As background, Bouevitch discloses COADM and DGE embodiments
`
`separately for clarity. But as PO’s expert agrees, the embodiments are “intended to
`
`work at the same time as a DGE and a COADM.” S. Tr., 122:23-123:7. Figures 9
`
`and 11 are one such pair of embodiments that share a common optical structure.
`
`Figure 11 is a “preferred” COADM embodiment of Fig. 9. Ex. 1003, 14:14-16.
`
`Figure 9 is a combined “DGE/COADM.” Id., 4:50-54. PO’s expert agrees that in
`
`one embodiment, Figs. 9 and 11 use the same shared MEMS structure as a beam
`
`“modifying means” for both switching (as a COADM in Fig. 11) and power
`
`control (as a DGE in Fig. 9). S. Tr., 129:9-16; Ex. 1003, 4:50-54, 12:18-14:4.
`
`When used at the same time for switching and power control, the POSA
`
`understood that the MEMS structure in Figs. 9 and 11 uses larger angular
`
`deflection for switching and smaller deflections to affect misalignment to control
`
`power. E.g., Pet., 33-35, Ex. 1028, ¶¶ 114, 76, 45. Bouevitch and Smith use these
`
`same operating principles, making the combination especially obvious. Id., 28-29.
`
`PO’s expert agreed that angular misalignment (e.g.,, by tilting mirrors) was
`
`the only way the POSA would understand the MEMS in Fig. 9 to operate for
`
`power control. S. Tr., 145:11-25, 284:18-25. The only point of disagreement was
`
`
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`3
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`

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`Case No. 2014-01276 - Atty. D. No. CSCO-002/00US [034855.2015] (RE42,678)
`Petitioner’s Reply to Patent Owner’s Response
`
`whether Bouevitch explicitly recites the well known “angular misalignment”
`
`technique. S. Tr., 285:2-25.
`
`To the POSA, Bouevitch explicitly teaches angular misalignment (even if it
`
`does not recite the term verbatim). Ex. 1028, ¶ 76. Bouevitch teaches this principle
`
`through repeated citations to “angular displacement provided by each MEMS
`
`reflector” for Fig. 11. Id.; Ex. 1003, 14:7-8. Because Bouevitch teaches that the
`
`DGE of Fig. 9 controls power using the same MEMS as Fig. 11, the POSA would
`
`understand these statements as an explicit teaching of the same type of angular
`
`misalignment for power control that Smith uses. See Ex. 1028, ¶ 76.
`
`Even if Bouevitch did not expressly teach angular misalignment, the
`
`principle is inherent because the POSA would recognize that angular misalignment
`
`is necessarily present in Fig. 9. Specifically, PO’s expert agreed that angular
`
`misalignment was the only way the POSA would understand the MEMS in Fig. 9
`
`would work to control power. S. Tr., 145:11-25, 284:18-25
`
`PO mischaracterizes the test for obviousness
`
`2.
`PO’s argues that 2-axis mirrors are non-obvious because “re-design is not
`
`plug-and-play as Petitioner makes it seem,” and “redesign is complex.” Resp., 23,
`
`25. PO similarly faults Petitioner’s expert for not teaching “how to extend one axis
`
`MEMS mirror design into a two axis MEMS mirror design.” Resp., 25.
`
`PO and its expert argue (wrongly) that combinability essentially requires
`
`
`
`4
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`

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`Case No. 2014-01276 - Atty. D. No. CSCO-002/00US [034855.2015] (RE42,678)
`Petitioner’s Reply to Patent Owner’s Response
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`blueprints for the physical re-design of a 1-axis system into a 2 axis system. See,
`
`e.g., id.; S. Tr., 36:18-38:17. The law is just the opposite. “The test for
`
`obviousness is not whether the features of a secondary reference may be bodily
`
`incorporated into the structure of the primary reference.” IPR2013-00107, Paper 21
`
`at 19 (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Under the proper test
`
`for obviousness, Bouevitch and Smith are analogous references that would be
`
`obvious to combine. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421 (2007).
`
`3.
`
`Engineering considerations are not a legal reason to block
`combining Bouevitch & Smith, as the patentee confirmed
`
`PO claims that the POSA’s attempts to combine technologies like Bouevitch
`
`and Smith would be thwarted by considerations such as “moisture” and “varying
`
`changes in gravitational forces.” Ex. 2004 at ¶¶ 111-113; Resp., 23-24. To the
`
`contrary—working through these considerations are at best engineering tasks, not
`
`invention. PO’s expert confirmed that a POSA could overcome these alleged
`
`problems in combining the references. S. Tr., 267:15-25.
`
`The patentee also confirmed that the POSA would have no problems
`
`substituting 2-axis mirrors for 1-axis mirrors. The ‘678 states that “a skilled
`
`artisan can design an OADM in accordance with the present invention,” which
`
`would include 2-axis OADMS. Ex. 1001, 5:46-48. Further confirming
`
`combinability is the fact the applicant saw no need to provide guidance on how to
`
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`
`5
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`

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`Case No. 2014-01276 - Atty. D. No. CSCO-002/00US [034855.2015] (RE42,678)
`Petitioner’s Reply to Patent Owner’s Response
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`substitute 2-axis for 1-axis mirrors, or to address any of the issues that the PO
`
`claims prevented that substitution. Ex. 2004, ¶¶ 111-113; Resp., 23-24.
`
`Finally, PO argues that one of Dr. Marom’s patents shows that MEMS were
`
`difficult to design. Resp., 5. But 2-axis MEMS mirrors were available (S. Tr.
`
`268:10-12, 274:1-13), so their manufacture has nothing to do with obviousness.
`
`4.
`
`PO did not deny Petitioner’s non-combinatory obviousness
`rationales [Corresponding in part to Response § III.B.3]
`
`PO attacked the combinability of individual references, but failed to address
`
`the many other rationales for obviousness that Petitioner and its expert analyzed,
`
`e.g., obvious to try, explicit motivations, etc. Pet. at 19-22; see also MPEP § 2143.
`
`These unrebutted rationales are sufficient for the Board to find that substituting 2-
`
`axis mirrors for 1-axis mirrors would have been obvious.
`
`Petitioner proved “obvious to try”: Dr. Marom testified that there were
`
`only two solutions to the known need to deflect light beams with MEMS: 1-axis or
`
`2-axis. Ex. 1028 at ¶ 46. He said that the POSA “would have a high expectation of
`
`success to try two-axis mirror control in Bouevitch” and that the combination
`
`would be predictable Id. PO denied none of this. At best, PO argues that the
`
`substitution is not “simple” because, e.g., “redesign is complex.” See Resp., 25;
`
`Ex. 2004, 59-60. But this argument is irrelevant to the KSR analysis. § II.B.2.
`
`Petitioner proved 2-axis mirrors as the use of a known technique: Dr.
`
`
`
`6
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`

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`Case No. 2014-01276 - Atty. D. No. CSCO-002/00US [034855.2015] (RE42,678)
`Petitioner’s Reply to Patent Owner’s Response
`
`Marom testified that 2-axis mirrors were known and that Bouevitch and Smith are
`
`comparable devices because both are ROADM applications in the same field that
`
`use the same MEMS devices. Pet. 20-21; MPEP § 2143(I)(C); Ex. 1028 at ¶¶ 42-
`
`44. The POSA could have applied the known 2-axis technique in Smith to
`
`Bouevitch with predictable results. Id. PO does not deny that 2-axis mirrors were
`
`known, that the references are comparable, or that using the 2-axis improvement
`
`would be predictable. Compare id. to Ex. 2004, 64-74.
`
`Petitioner proved specific motivations to combine: Dr. Marom testified
`
`that the prior art provided motivations for using 2-axis mirrors such as the benefit
`
`of “a finer-grained movement for power (which was more sensitive to small
`
`changes in mirror angle) [in one axis] than the coarser-grained control that
`
`accommodates the wider-range of potential tilt angles useful for switching [in the
`
`other].” Ex. 1028, ¶ 78. Two-axis mirrors also help overcome manufacturing
`
`deviations. Id., ¶ 41. He also noted benefits of port proximity, and that crosstalk is
`
`a risk when ports are sufficiently close, so 2-axis mirrors would be beneficial to
`
`reduce that crosstalk. Id., ¶ 74. PO did not rebut the first two benefits, and agreed
`
`generally on the benefits of proximity & crosstalk reduction. S. Tr., 249:15-250:2.
`
`PO proved no secondary considerations of non-obviousness
`
`5.
`PO bore the burden of showing secondary considerations. MPEP § 2145.
`
`But PO made no proper showing of commercial sales, success, or praise. Nor did
`
`
`
`7
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`

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`Case No. 2014-01276 - Atty. D. No. CSCO-002/00US [034855.2015] (RE42,678)
`Petitioner’s Reply to Patent Owner’s Response
`
`PO address the commercial nexus requirement. See, e.g., In re Huang, 100 F.3d
`
`135, 140 (Fed. Cir. 1996).
`
`C. Bouevitch teaches “multiple fiber collimators,
`providing…ports” [Corresponds to Response § III.C]
`
`Petitioner showed how Bouevitch uses fiber collimators in the form of
`
`microlenses to provide input and output ports.1 Pet. 23-25; Ex. 1028, ¶¶ 51-53. PO
`
`does not deny that Bouevitch’s microlenses are fiber collimators. Resp. 32-35.
`
`Rather, PO argues that: (1) Bouevitch’s collimators do not “provide” ports, and (2)
`
`the ‘678 patent disavows using circulators to help provide the claimed ports.
`
`Petitioner addresses each PO argument below.
`
`1.
`
`Bouevitch’s microlenses “provide” ports [Corresponds to
`Response § III.C.1]
`
`Bouevitch “provides” ports under the ordinary meaning of that word. PO’s
`
`arguments to the contrary rely on an implicit BRI for “providing” that is incorrect
`
`because that BRI excludes a preferred embodiment.
`
`a.
`The customary/ordinary meaning of “providing” is simply “to make
`
`The ordinary meaning of “providing”
`
`available.” Ex. 1054 [American Heritage Dictionary], 1102. The patent provides
`
`no different definition. PO’s expert did not use any “special” definition for the
`
`term, and agreed to a meaning similar to the ordinary/customary meaning:
`
`1 PO’s “providing” argument does not affect claims 61-65, which lack that term.
`
`
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`8
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`Case No. 2014-01276 - Atty. D. No. CSCO-002/00US [034855.2015] (RE42,678)
`Petitioner’s Reply to Patent Owner’s Response
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`“something that helps deliver whatever it is that it’s providing.” S. Tr. 95:1-17.
`
`b.
`
`Bouevitch meets the ordinary meaning of “fiber
`collimators providing…ports”
`
`Under either the dictionary definition (“make available”) or the PO’s
`
`definition (“something that helps deliver” what it provides), microlenses 12a/12b
`
`in Bouevitch are fiber collimators that “provide” the ports that Petitioner identifies
`
`(e.g., “OUT EXPRESS” and “OUT DROP”, see Reply Fig. 1, below). Specifically,
`
`collimators 12a/12b make available and help deliver the light beams to waveguides
`
`99a and 99b that guide light to the circulators. See id.; S. Tr. 240:19-241:7 (“Q
`
`…12a and 12b helped to provide the functionality of 99a and 99b, correct? A
`
`That's correct….”). Collimators 12a/12b help make the ports available, because
`
`without 12a/12b, the system would not work as intended. Id.
`
`Reply Fig. 1:
`
`(Ex. 1003 at Fig. 11;
`annotated.)
`
`c.
`
`
`PO’s implicit (and incorrect) BRI for “providing” is
`“exclusively providing on a one-to-one to basis”
`
`PO’s first argument that Bouevitch does not provide ports hinges on PO’s
`
`BRI for “providing.” Resp. 34. PO does not give any explicit definition for
`
`“providing.” But based on the two distinctions PO makes to Bouevitch, PO’s claim
`
`
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`9
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`

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`Case No. 2014-01276 - Atty. D. No. CSCO-002/00US [034855.2015] (RE42,678)
`Petitioner’s Reply to Patent Owner’s Response
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`construction position effectively requires the Board to use a BRI for “providing” as
`
`“exclusively providing on a one-to-one to basis.” See Resp., 34-35.
`
`Specifically, PO first distinguishes Bouevitch because the ports to which
`
`Petitioner point are not provided exclusively by collimators 12a and 12b, but
`
`instead also by waveguides 99a/99b and circulators 80a/80b. See Resp., 6-7, 35-
`
`42; Reply Fig. 1, above. Second, PO distinguishes Bouevitch because a single
`
`collimator helps provide more than one port. Ex. 2004, ¶ 146. As per Reply Fig.
`
`1, above, microlens fiber collimator 12a provides port “OUT EXPRESS,” but also
`
`provides input port “IN.” PO’s expert claims that the collimators must instead
`
`“serve as the input and output ports in a one-to-one relationship.” Ex. 2004, ¶ 146.
`
`d.
`
`PO’s proposed BRI for “collimators providing …
`ports” is incorrect
`
`PO’s construction position is wrong because it conflicts with the ordinary
`
`meaning of “providing” and excludes embodiments of the ‘678 patent.
`
`The Board must use the ordinary meaning for the BRI for “providing” unless
`
`such meaning is inconsistent with the specification. MPEP § 2111.01(I). PO’s
`
`additional requirements for “exclusively providing on a one-to-one to basis” are
`
`not found in the ordinary meaning, and PO has not argued otherwise. See, e.g., Pet.
`
`34-42. Moreover, PO’s BRI is inconsistent with the ‘678 patent.
`
`PO’s interpretation of “collimators, providing” is incorrect because it
`
`
`
`10
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`

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`Case No. 2014-01276 - Atty. D. No. CSCO-002/00US [034855.2015] (RE42,678)
`Petitioner’s Reply to Patent Owner’s Response
`
`excludes two different aspects of a disclosed embodiment. See, Oatey Co. v. IPS
`
`Corp., 514 F.3d 1271, 1277 (Fed. Cir. 2008); Vitronics Corp. v. Conceptronic,
`
`Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (“[s]uch an interpretation is rarely, if
`
`ever, correct and would require highly persuasive evidentiary support”).
`
`Specifically, PO’s ‘exclusive’ claim (that collimators cannot work along
`
`with other components to “provide” the ports) would exclude Fig. 9 of the
`
`provisional application which the ‘678 incorporates. Fig. 9 was one of “[t]hree
`
`different OADM architectures disclosed in the present invention.” Ex. 1008, 3
`
`(internal). Fig. 9 shows the input and output (e.g., “add,” “drop”) ports being made
`
`available through both fiber collimators and circulators, as shown in Reply Fig. 2:
`
`Reply Fig. 2:
`
`(Ex. 1008, 4, Fig. 9;
`annotated)
`
`PO’s ‘one-to-one relationship’ requirement for collimators and ports would
`
`also exclude the embodiment of Fig. 9. As shown above in Reply Fig. 2, the
`
`provisional shows “input and output ports” that are not in a one-to-one relationship
`
`with the fiber collimators. Ex. 1008, Fig. 9. Instead, the circulators in Fig. 9 work
`
`together with the fiber collimators to create two ports from each collimator. Id.
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`The ‘678 encompasses circulator ports [Response § III.C.2]
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`2.
`PO also argues that even if Bouevitch “provides” ports, those ports are not
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`the claimed “ports” because Bouevitch uses circulators to provide them. Resp., 35-
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`40. However, PO’s arguments for a special construction that would exclude
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`circulator ports conflict with the patent and file history. If anything, far from
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`disclaiming circular ports, the patent expressly encompasses circulator ports.
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`a.
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`There is no dispute that the ordinary and customary
`meaning of ports includes circulator ports
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`There is no dispute that the “IN,” “OUT DROP,” etc. ports of Bouevitch Fig.
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`11 meet the ordinary and customary meaning of “port,” and Bouevitch explicitly
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`refers to them as “ports.” Ex. 1003, 14:27-33. PO’s expert says that the ordinary
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`meaning of port is a “point of entry or exit of light.” S. Tr., 43:16-23. The ports of
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`Fig. 11 are points of entry/exit for light. Ex. 1003, 14:14-36. “Port” is also a
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`generic word that is meant to encompass multiple types of ports, as shown in text
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`books and through the testimony of PO’s expert. See, e.g., Ex. 1050 at 127-129
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`(internal); Ex. 1052 at 113; S. Tr., 42:17-43:23. The term can be limited by adding
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`modifiers such as “circulator port,” but the patentee did not do so. See id., claim 1.
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`b.
`PO agrees the patentee did not expressly re-define “port.” S. Tr., 52:6-15.
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`The patentee did not redefine “ports”
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`c.
`The provisional to which the ‘678 claims priority shows that the purported
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`The patent expressly encompasses circulators
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`invention uses “port” generically and encompasses using circulators to provide
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`ports. The provisional says that “[t]hree different OADM architectures disclosed
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`in the present invention are shown in Figures 7-9.” Ex. 1008, 4. And Fig. 9 shows
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`an embodiment where ports are made available through the help of circulators:
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`Reply Figure 3 (Ex.
`1008, Fig. 9
`(annotated))
`
`.
`The provisional also refers to the circulators ports in Fig. 9 as “ports.” Id. at 4.
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`The patentee knew how to distinguish between ports with and without
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`circulators if it wanted to. The provisional used terms like “add/drop ports” when
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`referring to ports with circulators and to “physical input/output ports” for ports
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`without circulators. Ex. 1008, 4. Yet when drafting the claims, the patentee
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`avoided the word “physical” and just used the generic terms “input port” and
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`“output ports.” Claim 1. The patentee also chose claim terms the provisional used
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`to explicitly include circulators—e.g., “drop port.” Claim 44.
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`d.
`The PO does not point to any express disavowal of the term port as
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`There was no express disavowal of circulator ports
`
`including circulator ports. The patent and its file history contain nothing like the
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`broad, unequivocal statements in the two cases PO cites. Resp., 35. Nowhere has
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`the PO pointed to any “expressions of manifest exclusion or restriction,
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`representing a clear disavowal of claim scope” as required by law. Conoco, Inc. v.
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`Energy & Envtl. Int’l., 460 F.3d 1349, 1357 (Fed. Cir. 2006).
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`The PO appears to have given up on the one allegedly-express disavowal to
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`which it referred in its Preliminary Response. Prelim. Resp., 42-43. The Board
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`concluded that PO’s original argument “misrepresents what is set forth in the ‘678
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`patent, which makes clear that it [a reference to circulators] is contrasting Aksyuk
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`to Tomlinson…, not to the ‘678 patent.” Paper 8 at 16.
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`The patentee did not implicitly disavow circulator ports
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`3.
`PO’s arguments for an implicit disavowal fall far short of carrying the heavy
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`burden required to show such a disavowal. Each PO argument either lacks
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`expert/factual support or conflicts with the facts on the record.
`
`a.
`The sole evidence for PO’s claim that the ‘678 patent “manifestly
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`PO lacks expert support for its disavowal claim
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`disclaim[s] the use of circulators” is a single paragraph (¶ 160) in the expert’s
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`declaration. Resp., 36. But in that paragraph the expert merely equivocates that “a
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`POSA would read the ‘678 patent as teaching away from or at the least
`
`discouraging the use of circulators.” Ex. 2004, ¶ 160; emphasis added.
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`“Discouraging” falls far short of the “expression[] of manifest exclusion” required
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`for disavowal. Conoco, 460 F.3d at 1357.
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`More troubling is the article PO cites to claim that the ’678 aims to avoid
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`circulators. Ex. 2004, ¶ 158. PO did not tell the Board that the cited passage is
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`actually a copy of PO’s marketing material. Compare Ex. 2009, 61 to Ex. 2006 at
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`2. The article looks like a marketing piece re-packaged to appear as independent
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`academic literature. As a PO-drafted marketing piece, it is entitled to no weight.
`
`b.
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`Dr. Marom did not imply that “port” excludes
`circulators [corresponds to Response § III.C.3]
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`PO notes that Dr. Marom used the term “port” in one of his patents to refer
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`to ports that do not include circulators. Resp. at 40-41. But Dr. Marom uses “port”
`
`in other patents to refer to circulators just like those in Bouevitch. E.g., Ex. 1051,
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`6:30-49, Fig. 7. This confirms that “port” is a broad, generic term.
`
`c.
`PO argues that circulators limit “scalability” to large numbers of channels or
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`Circulators do not limit scalability
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`ports. Resp., 9-10. First, scalability is not relevant to the actual claimed invention.
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`The claim language the patentee chose deliberately excluded scalability by
`
`claiming a system with only one input port and as few as two output ports. See,
`
`e.g., claim 1. Second, the facts show that circulators limit neither type of scaling.
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`As for channels, both the provisional and the PO’s expert agree that
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`circulators do not limit scaling to many channels. Ex. 1008 at Fig. 5, pp. 2, 12 (Fig.
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`5 is “scalable to high channel count.” S. Tr., 211:13-212:3; 208:20-212:11.
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`As for ports, PO argues that scaling to large numbers of ports implicates
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`some disavowal of circulators. Resp., 10-14. But, the ‘678 patent focuses on
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`scaling in channels, not ports. See Ex. 1001, 5:56-57; Ex. 1008 at 1. Moreover, the
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`concept of scaling to many ports is not a feature in the patent claims, which require
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`at most “an input port,” and “a plurality [two or more] of output ports.” (claim 1;
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`emphasized).
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`Even if scaling in ports was claimed, both the provisional and the ‘678
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`specification show that circulators were not impediments to such scaling.
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`Provisional Fig. 9 promotes the addition of a circulator on each output of a
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`ROADM, and the patentee said that Fig. 9 was one of the three architectures of
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`“the present invention.” Ex. 1008 at Fig. 9, p. 4. Thus, the provisional explicitly
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`adopts an architecture with a circulator for each of multiple ports. And Fig. 9 can
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`scale with ports, because no matter how many ports exist, the small (~0.5 dB) loss
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`for the circulator will only be incurred once for each port. See S. Tr., 212:12-16.
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`d.
`PO argues that the patentee disavowed circulators because of their alleged
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`Circulators do not add significant size, cost or loss
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`size, cost, and loss. See Resp. at 10. Again, none of those three features are
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`claimed limitations, and the PO overreaches on each of these issues. The alleged
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`“bulk” of a circulator was one-five-hundredth the size of the overall ROADM. S.
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`Tr., 221:13-222:4 (50 vs. 0.1 cubic inches). The price (as low as $200 currently)
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`of a circulator is less than 1% of the $25,000 90-channel Capella product. Compare
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`Ex. 1053 to Ex. 2006 at 2. And a circulator’s loss (~0.5 dB) is at least ten times
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`less than a ROADM’s (5-7 dB). S. Tr., 212:12-25; 216:2-