Cisco Systems, Inc.
`vs.
`Capella Photonics, Inc.
`
`IPR2014-01166, 01276
`Patent Owner Demonstratives
`
`Capella 2027
`Cisco et al. v. Capella
`IPR2014-01276
`
`
`vs.
`Capella Photonics, Inc.
`
`IPR2014-01166, 01276
`Patent Owner Demonstratives
`
`Capella 2027
`Cisco et al. v. Capella
`IPR2014-01276
`
`
`
`Patents at issue
`
`The ’368 patent claims at least two unique features:
`
`• an optical switch that has an input port, an output port and one or
`more other ports
`• beam-deflecting elements that are individually and continuously
`controllable in two dimensions
`(Representative claim 1)
`
`The ’678 patent claims at least two unique features:
`
`• multiple fiber collimators, providing an input port and a plurality of
`output ports
`• micromirrors being pivotal about two axes and being continuously
`controllable
`(Representative claim 1)
`
`2
`
`
`
`Patents at issue
`
`These features allow the claimed systems to route individual channels from
`the input port to a selected output port among multiple ports. As a result, the
`claimed systems can route a greater number of individual channels than
`systems in the prior art. (’368 and ’678 patents, 5:49-58, Fig. 1A.)
`
`3
`
`
`
`Prior art
`
`• Prior art optical switches relied on circulators
`• A circulator is a device that is used to separate optical signals traveling in
`opposite directions.
`Light entering circulator port 1 is emitted from circulator port 2, light
`entering circulator port 2 is emitted from circulator port 3, and light
`entering circulator port 3 is emitted from circulator port 1.
`
`•
`
`• Optical systems using circulators were not scalable to a large number of
`channels because every added circulator contributed cost, bulk, and
`insertion loss (i.e., crosstalk between channels) to the optical system.
`
`4
`
`
`
`Patents at issue
`
`•
`
`To overcome the limitations of circulators, the inventors of the ’368 and
`’678 patents designed an add/drop optical switch using multiple ports
`instead of circulators. This multiple port configuration made Capella’s
`system reconfigurable and scalable to a large number of channels. (’368
`and ’678 patents, 5:56-58; Fig. 1A.)
`
`5
`
`
`
`Patents at issue
`
`• “The introduction of dynamic reconfigurability will
`enable service providers to drastically reduce operating
`expenses associated with planning . . . by offering
`remote and dynamic reconfigurability.” Ex. 2006,
`Business Wire, p. 2
`
`• “Capella is the only company to offer a 10-fiber port
`solution, i.e., one input, one express output, and 8
`service ports.” Ex. 2009, Holliday R-OADMs, p. 61
`
`6
`
`
`
`Reasons for patentability
`
`(cid:190) Smith does not teach:
`• mirrors that are continuously controllable in two dimensions (’368 patent)
`• micromirrors being pivotal about two axes and being continuous
`controllable (’678 patent)
`(cid:190) Lin does not teach:
`• mirrors that are continuously controllable in two dimensions (’368 patent)
`• micromirrors being pivotable about two axes and being continuously
`controllable (’678 patent)
`(cid:190) Additional missing elements
`(cid:190) Petitioner improperly combines Bouevitch Figs. 5 and 11
`(cid:190) A POSA would not have been motivated to combine Smith’s mirrors with
`Bouevitch
`(cid:190) Bouevitch fails to teach all of the claimed “ports”
`(cid:190) The disclosure in the Smith patent alleged to teach Capella’s claimed mirror
`feature is new matter and, therefore, not prior art
`
`7
`
`
`
`Missing element (two-axis mirrors)
`
`It is Capella’s position that, in its Petition, Petitioner contended that
`Bouevitch teaches “continuous control” of its mirrors and relied on
`Fig. 5 for support. (’368 Pet., p. 28; ’678 Pet., pp. 28-29.)
`
`8
`
`
`
`Missing element (two-axis mirrors)
`
`In the Reply, Petitioner disavowed reliance upon Fig. 5. (’368 and ’678 Pet.
`Reply, p. 1.)
`
`9
`
`
`
`Missing element (two-axis mirrors)
`
`•
`
`•
`•
`
`Smith’s linear applied force does not teach the claimed continuously
`controllable in two dimensions.
`Smith describes a gimbal structure shown in Figs. 14 and 15.
`The gimbal structure is tilted by an electrostatic force applied to the
`electrodes 274 (shown in green) under the mirror plate 268 and another
`pair of electrodes 276 (also shown in green) under the outer frame 262.
`(Smith, 15:6-8; Sergienko Dec., ¶ 93.)
`
`10
`
`Fig. 14
`
`Fig. 15
`
`
`
`Missing element (two-axis mirrors)
`
`• Applying voltage across the electrodes exerts a positive force
`acting to overcome torsion beams 266, 272. (Smith, 15:38-42;
`Sergienko Dec., ¶ 94.)
`• Petitioner contends that Smith discloses continuous control
`because “the force used to tilt the mirrors is ‘approximately
`linearly proportional
`to the magnitude of
`the applied
`voltage.’” (’368 Pet., p. 28; ’678 Pet., p. 29.)
`• The term “linear” is used in Smith to describe the magnitude
`of force used to overcome the torsion beams 266, 272.
`(Smith, 15:38-42; Sergienko Dec., ¶ 175.)
`• The term does not relate to continuous movement of Smith’s
`mirror. (Sergienko Dec., ¶ 175.)
`
`11
`
`
`
`Missing element (two-axis mirrors)
`
`Smith discloses tilting mirrors at both large and small angles (Smith,
`18:12-14.)
`
`12
`
`
`
`Missing element (two-axis mirrors)
`
`Dr. Sergienko testified that a mirror that is positional around a finite number of
`angles is not continuous or analog control. (Sergienko Dec., ¶ 177.)
`
`13
`
`
`
`Reasons for patentability
`
`(cid:190) Smith does not teach:
`• mirrors that are continuously controllable in two dimensions (’368 patent)
`• micromirrors being pivotal about two axes and being continuous
`controllable (’678 patent)
`(cid:190) Lin does not teach:
`• mirrors that are continuously controllable in two dimensions (’368 patent)
`• micromirrors being pivotable about two axes and being continuously
`controllable (’678 patent)
`(cid:190) Additional missing elements
`(cid:190) Petitioner improperly combines Bouevitch Figs. 5. and 11
`(cid:190) A POSA would not have been motivated to combine Smith’s mirrors with
`Bouevitch
`(cid:190) Bouevitch fails to teach all of the claimed “ports”
`(cid:190) The disclosure in the Smith patent alleged to teach Capella’s claimed mirror
`feature is new matter and, therefore, not prior art
`
`14
`
`
`
`Lin discloses one-axis mirrors (embodiment 1)
`
`Lin discloses an embodiment shown in Fig. 1B that includes a flap 30 and
`an electrode 36 (shown in green). (Lin, 3:1-2; Sergienko Dec., ¶ 179.)
`
`The portion 34 is a hinge at which the mirror is deflected. (Lin, 2:53-55;
`Marom Depo. Tr., 157:7-11; Sergienko Dec., ¶¶ 102-03.)
`
`•
`
`•
`
`15
`
`
`
`Lin discloses one-axis mirrors (embodiment 2)
`
`•
`
`In another embodiment, Lin shows a one-axis mirror that
`rocks along a single torsional axis.
`
`16
`
`Fig. 3A
`
`
`
`Lin discloses one-axis mirrors
`
`• Lin explicitly says the deflection in the Fig. 1B embodiment is
`“nonlinear and is not proportional to the voltage applied.” (Lin, 3:15-
`16; Sergienko Dec., ¶ 179.)
`• Lin also says that the embodiment shown in Figure 1B can be operated
`in an analog mode. (Lin, 2:46-49; Sergienko Dec., ¶ 179.) But the
`analog mode, according to Lin, does not deflect a mirror linearly.
`(Sergienko Dec., ¶ 179.)
`• Fig. 3B only shows a general relationship between mirror deflection
`and the voltage applied to the electrodes 60 of the embodiment
`shown in Figs. 2 and 3A. (Lin, 5:27-28; Sergienko Dec., ¶ 181.)
`• Dr. Marom said that “[for continuous control] you need more than just
`the ability to prescribe voltage in a continuous sweep. You need to
`have the actuator also map the voltage values into angular values in a
`one-to-one relationship.” (Marom Depo Tr., 154:13-155:8.)
`
`17
`
`
`
`Lin discloses one-axis mirrors
`
`• Dr. Marom agreed that Figs. 2 and 3A show single axis
`mirrors: “[I]f there is one [axis] and there are two
`electrodes, it is a single-axis mirror. . . . I have reviewed
`the pictures here [(Lin, Figs. 2 and 3A)] and both appear
`to be single-axis mirrors.” (Marom Depo. Tr., 155:9-
`157:11; Sergienko Dec., ¶ 183.)
`
`18
`
`
`
`Reasons for patentability
`
`(cid:190) Smith does not teach:
`• mirrors that are continuously controllable in two dimensions (’368 patent)
`• micromirrors being pivotal about two axes and being continuous
`controllable (’678 patent)
`(cid:190) Lin does not teach:
`• mirrors that are continuously controllable in two dimensions (’368 patent)
`• micromirrors being pivotable about two axes and being continuously
`controllable (’678 patent)
`(cid:190) Additional missing elements
`(cid:190) Petitioner improperly combines Bouevitch Figs. 5 and 11
`(cid:190) A POSA would not have been motivated to combine Smith’s mirrors with
`Bouevitch
`(cid:190) Bouevitch fails to teach all of the claimed “ports”
`(cid:190) The disclosure in the Smith patent alleged to teach Capella’s claimed mirror
`feature is new matter and, therefore, not prior art
`
`19
`
`
`
`Missing element
`(servo control and spectral monitor)
`Smith fails to teach the servo control and spectral monitoring
`features (even if taught, combination with Bouevitch isn’t
`obvious) (’368 dependent claims 3 and 22; ’678 independent
`claim 21 and dependent claims 2-4, 22, 23, 45, 46, 62, and 63.)
`• Petitioner relies on Smith to teach or suggest the servo control and
`spectral monitor features of dependent claims 3 and 22. (See ’368
`Pet., pp. 37-41, 59; ’678 Pet., pp. 35-43 (admitting that Bouevitch
`does not explicitly disclose servo control and relying on Smith).)
`• The Petition and the Marom Declaration are devoid of any
`articulation on how or why a POSA would have been able to add
`Smith’s control features to Bouevitch without disrupting Bouevitch’s
`operation. (Sergienko Dec., ¶ 111.)
`
`20
`
`
`
`Missing element (imaging)
`Bouevitch does not teach imaging each of said spectral
`channels onto a corresponding beam deflecting
`element, as recited in claim 17 of the ’368 patent.
`• Petitioner does not provide any explicit teaching in
`Bouevitch for this feature of claim 17.
`• Petitioner
`is
`“focusing”
`summarily concludes
`that
`“imaging,” and that,
`therefore, Bouevitch allegedly
`teaches “imaging” because it teaches “focusing.” (‘368
`Pet., pp. 54-55.)
`• Petitioner never actually describes with any particularity
`how Bouevitch teaches “imaging” and has, therefore,
`failed to meet its burden.
`
`21
`
`
`
`Missing element (focusing)
`
`Bouevitch fails to teach the “focusing” feature of
`claims 11 and 22 of the ’368 patent.
`• Petitioner ignores the difference between claims 1 and
`17, which recite imaging (’368 patent, 4:39-44) or
`directing light onto beam deflecting elements, and claims
`11 and 22, which recite focusing (’368 patent, 6:61-62)
`light onto beam deflecting elements.
`• By ignoring the distinctions between imaging/directing
`and focusing, and merely relying on the arguments from
`claims 1 and 17, Petitioner has failed to meet its burden
`of showing how Bouevitch teaches claims 11 and 22.
`
`22
`
`
`
`Missing element (combine)
`Petitioner has not met its burden of showing the claim
`element “controlling . . . beam-deflecting elements . . .
`so as to combine selected ones of said spectral
`channels into an output . . .,” as recited in claim 17 of
`the ’368 patent.
`• Petitioner ignored the limitation “so as to combine
`selected ones of said spectral channels into an output.”
`(’368 Pet., pp. 55-56.)
`• The Board should uphold patentability of claim 17
`because Petitioner has not met its burden of showing
`that the applied references teach or suggest each and
`every element of claim 17.
`
`23
`
`
`
`Missing element (reflect)
`Bouevitch Fig. 11 does not
`teach “reflect[ing said
`corresponding received spectral channels into any selected
`ones of said output ports.” (’678, claims 1 and 44 and
`similarly recited in claims 21 and 61.)
`• Petitioner argues that “[e]ach reflector [in Bouevitch]
`is
`individually controlled in [sic] to deflect the respective beam
`to either of the output ports at 80a or at 80b.” (’678 Pet., p.
`28 (citing Bouevitch, 14:52-63, 10:47-51, Fig. 11; Marom Dec.,
`¶ 63) (emphasis added).)
`• Bouevitch teaches reflecting a light beam back to lens 90,
`having the light beam pass through either waveguide 99a or
`99b, and then having the light beam “propagate” or “return”
`to the circulator port 3 of circulator 80a or 80b.
`(See
`Bouevitch, 14:55-15:18; Sergienko Dec., ¶ 157.)
`• Propagating is not reflecting, as recited in the ’678 patent.
`
`24
`
`
`
`Reasons for patentability
`
`(cid:190) Smith does not teach:
`• mirrors that are continuously controllable in two dimensions (’368 patent)
`• micromirrors being pivotal about two axes and being continuous
`controllable (’678 patent)
`(cid:190) Lin does not teach:
`• mirrors that are continuously controllable in two dimensions (’368 patent)
`• micromirrors being pivotable about two axes and being continuously
`controllable (’678 patent)
`(cid:190) Additional missing elements
`(cid:190) Petitioner improperly combines Bouevitch Figs. 5 and 11
`(cid:190) A POSA would not have been motivated to combine Smith’s mirrors with
`Bouevitch
`(cid:190) Bouevitch fails to teach all of the claimed “ports”
`(cid:190) The disclosure in the Smith patent alleged to teach Capella’s claimed mirror
`feature is new matter and, therefore, not prior art
`
`25
`
`
`
`Improperly combined elements
`
`’368 and ’678 Pets., pp. 24-25 (using Fig. 11 to show ports)
`
`*
`
`*
`
`*
`
`*
`
`*
`
`*
`
`26
`
`’368 Pet., pp. 24-25
`
`
`
`Improperly combined elements
`
`’368 Pet., pp. 27-28; ’678 Pet., p. 28 (using MEMS array 50 from
`Fig. 11 to show beam-deflecting mirrors that are individually
`controllable)
`
`27
`
`’368 Pet., pp. 27-29
`
`
`
`Improperly combined elements
`
`’368 and ’678 Pets., pp. 28-29 (Capella contends that Petitioner
`used modifying means 150 from Fig. 5 to argue that Bouevitch
`discloses beam-deflecting mirrors that are continuously
`controllable)
`
`28
`
`’368 Pet., pp. 27-29
`
`
`
`Improperly combined elements
`
`’368 and ’678 Pets., pp. 33-35 (Capella contends that Petitioner
`used modifying means 150 of Fig. 5 to show power control)
`
`29
`
`’368 Pet., pp. 33-35
`
`
`
`Improperly combined elements
`
`Modifying means 150 of Fig. 5 operates as a DGE to control power
`based on polarization characteristics. (Bouevitch, 7:23-44.)
`
`30
`
`
`
`Improperly combined elements
`
`Modifying means 150 of Fig. 5 is used in the configuration shown
`in Fig. 1. (Bouevitch, 7:29-44; Sergienko Dec., ¶¶ 75-79.)
`
`31
`
`
`
`Improperly combined elements
`
`Modifying means 150 reflects the light beam along a
`substantially parallel path. (Bouevitch, 7:45-65, Figs. 1, 5.)
`
`32
`
`
`
`Improperly combined elements
`
`Bouevitch Fig. 11 is a COADM, not a DGE. (Bouevitch, 14:14-16.)
`
`33
`
`
`
`Improperly combined elements
`
`Bouevitch uses MEMS array 50 within the COADM of Fig. 11 to
`switch light beams between port 1 on circulator 80a and port 3
`on circulator 80b. (Bouevitch, 14:23-27; Sergienko Dec., ¶ 80.)
`
`34
`
`
`
`Improperly combined elements
`
`Modifying means 150 is designed so the input and output light
`beams enter and exit in parallel, while the input light beam is
`reflected from MEMS array 50 according to the incident angle of
`reflection. (Compare Bouevitch, Figs. 3a-3d, 4a-4b, 5 with
`Bouevitch, Fig. 11. Sergienko Dec., ¶ 82; Bouevitch, Figs. 5, 11.)
`
`35
`
`
`
`Improperly combined elements
`
`Petitioner contends now that it does not rely on Fig. 5 in making its invalidity
`challenge and that the instituted combination only places Smith’s 2-axis mirrors in
`Bouevitch Fig. 11. (Compare ’368 Pet., p. 33 with ’368 Reply, p. 1 and ’678 Pet., pp.
`33-34 with ’678 Reply, p. 1.)
`
`’368 Petition
`
`’368 Reply
`
`36
`
`
`
`Improperly combined elements
`
`• Bouevitch states that Fig. 11 is a preferred embodiment designed to operate
`as a COADM – not a DGE – and as such, does not teach power control.
`(Bouevitch, 14:14-17; Sergienko Dec., ¶ 83.)
`
`•
`
`If Petitioner has disavowed any reliance on Fig. 5 and “the instituted
`combination of Bouevitch and Smith places only 2-axis MEMS modifying
`means of Smith into Bouevitch Fig. 11,” then Petitioner’s new argument fails
`because such a combination fails to teach or suggest power control.
`
`37
`
`
`
`Improperly combined elements
`
`Instead of a combination of Fig. 5 and 11, Petitioner now relies on an
`improper combination of Figs. 9 and 11. (’368 and ’678 Replies, p. 3.)
`
`38
`
`’368 Reply, p. 3
`
`
`
`Improperly combined elements
`
`Figs. 9 and 11 are separate embodiments.
`Fig. 9 is a DGE:
`
`Fig. 11 is a COADM – not a “preferred” COADM embodiment of Fig. 9 as
`Petitioner alleges:
`
`•
`•
`
`•
`
`39
`
`
`
`Reasons for patentability
`
`(cid:190) Smith does not teach:
`• mirrors that are continuously controllable in two dimensions (’368 patent)
`• micromirrors being pivotal about two axes and being continuous
`controllable (’678 patent)
`(cid:190) Lin does not teach:
`• mirrors that are continuously controllable in two dimensions (’368 patent)
`• micromirrors being pivotable about two axes and being continuously
`controllable (’678 patent)
`(cid:190) Additional missing elements
`(cid:190) Petitioner improperly combines Bouevitch Figs. 5 and 11
`(cid:190) A POSA would not have been motivated to combine Smith’s mirrors with
`Bouevitch
`(cid:190) Bouevitch fails to teach all of the claimed “ports”
`(cid:190) The disclosure in the Smith patent alleged to teach Capella’s claimed mirror
`feature is new matter and, therefore, not prior art
`
`40
`
`
`
`•
`
`No motivation to combine
`In Bouevitch, all modifying means 150 embodiments have light beams enter
`and exit in parallel. (Bouevitch, 6:6-7; Sergienko Dec., ¶¶ 68, 131.)
`• According to Bouevitch, parallel alignment allows for highly efficient coupling
`between a plurality of input/output waveguides. (Bouevitch, 7:56-63.)
`
`41
`
`
`
`No motivation to combine
`
`In Bouevitch Fig. 9, the modified beam is coupled to the output port 987
`because “the angular displacement provided by each MEMS reflector
`complements the angular displacement resulting from the use of the off-axis
`input/output port(s) on the GRIN lens 990.” (Bouevitch, 14:5-13.)
`
`42
`
`
`
`No motivation to combine
`
`Unlike Bouevitch, Smith uses the MEMS mirrors to intentionally misalign or
`angularly displace the light beams off the output port. (Smith, 17:24-25 (Fig.
`17); 34-38 (Fig. 18); Smith ’683 Provisional, p. 5; Sergienko Dec., ¶ 137.)
`
`43
`
`
`
`No motivation to combine
`
`• Combining Smith’s mirrors with Bouevitch Fig. 5 would disrupt Bouevitch’s
`polarization-based switch. (Sergienko Dec., ¶¶ 122-25.)
`
`•
`
`•
`
`Tilting the reflector 155 in Fig. 5 of Bouevitch would change the
`polarization of a light beam traveling through modifying means 150 and
`would reflect certain polarities of light back to port 102a. (Id.)
`
`Fig. 5 is not intended to have part of an incident light beam return to port
`102a. (Id.)
`
`• Returning the light beam to port 102a would disrupt clean switching,
`result in crosstalk, and cause cross-contamination. (Id.)
`
`44
`
`
`
`No motivation to combine
`• Petitioner contends that Bouevitch Fig. 11 and Smith both teach power
`control via misalignment. (’368 Reply, p. 3; ’678 Reply, pp. 2-3.)
`
`•
`
`If that is true, Petitioner’s motivation to combine a two-axis mirror with
`Fig. 11 is based on nothing but pure hindsight, because Bouevitch already
`teaches power control with a one-axis mirror. (’368 and ’678 Pets., p. 34.)
`
`’368 Reply, p. 3
`
`45
`
`’368 Pet., p. 34
`
`
`
`No motivation to combine
`
`• Re-designing micromirrors is not a simple substitution. (Sergienko Dec., ¶¶
`112-13, 117.)
`– Exposed oxides can cause unwanted charge.
`– Deposited metal on mirror hinges experience creep.
`– Different vendors mount switches differently (e.g., horizontally and
`vertically.
`– Temperature issues when designing an optical switch because ambient
`temperatures can change or cause misalignment.
`– Moisture can lead to oxide buildup and an electrical breakdown.
`• Dr. Marom provided a long explanation why the Capella two-dimensional
`mirrors were complex and difficult to fabricate. (Marom Depo. Tr., 219:16-
`222:11.)
`• Dr. Marom explained why the industry liked his own simple single-axis
`mirror design. (Marom Depo. Tr., 233:14-234:21; Sergienko Dec., ¶ 139.)
`
`46
`
`
`
`Reasons for patentability
`
`(cid:190) Smith does not teach:
`• mirrors that are continuously controllable in two dimensions (’368 patent)
`• micromirrors being pivotal about two axes and being continuous
`controllable (’678 patent)
`(cid:190) Lin does not teach:
`• mirrors that are continuously controllable in two dimensions (’368 patent)
`• micromirrors being pivotable about two axes and being continuously
`controllable (’678 patent)
`(cid:190) Additional missing elements
`(cid:190) Petitioner improperly combines Bouevitch Figs. 5 and 11
`(cid:190) A POSA would not have been motivated to combine Smith’s mirrors with
`Bouevitch
`(cid:190) Bouevitch fails to teach all of the claimed “ports”
`(cid:190) The disclosure in the Smith patent alleged to teach Capella’s claimed mirror
`feature is new matter and, therefore, not prior art
`
`47
`
`
`
`Missing element (ports)
`
`• Bouevitch fails to teach every element of claims 1, 15, and 16
`of the ’368 patent because Bouevitch does not have an “input
`port,” “output port,” and “one or more other ports.”
`
`• Bouevitch fails to teach every element of claims 1, 21, 44, and
`61 of the ’678 patent because Bouevitch does not have
`“multiple fiber collimators” providing an “input port” and a
`“plurality of output ports.”
`
`48
`
`
`
`Missing element (ports)
`
`Petitioner relies on Bouevitch Fig. 11 for the multiple port elements of
`independent claims 1, 15, and 16 of the ’368 patent and independent claims
`1, 21, 44, and 61 of the ’678 patent. (’368 and ’678 Pets., p. 24.)
`
`49
`
`
`
`Missing element (ports)
`
`But elements 80a and 80b are optical circulators, and the alleged ports of
`Bouevitch that Petitioner maps to claim 1 of both the ’368 and ’678 patents
`are optical circulator ports. (’368 and ’678 Pets., p. 24; Bouevitch, 14:21-38.)
`
`’678 Pet., p. 34
`
`50
`
`
`
`Missing element (ports)
`
`The inventors of the Capella patents recognized that circulators “can lead to
`significant additional expense” and were disadvantageous. (Ex. 1008 (’217
`Provisional), p. 3.)
`
`*
`
`*
`
`*
`
`51
`
`
`
`Missing element (ports)
`
`The inventors state that the circulators used by Aksyuk lead to “optical losses,
`which can accumulate to a substantial amount.” (’368 and ’678 patents, 2:40-57.)
`
`52
`
`
`
`Missing element (ports)
`
`Both Aksyuk (Fig. 3) and Bouevitch (Fig. 11) use circulators for add/drop functions
`
`Circulators
`
`Switch device
`
`53
`
`
`
`Missing element (ports)
`
`• As properly construed, circulator ports cannot teach the claimed “ports”
`of the ’368 patent or the claimed “fiber collimators providing the ports” of
`the ’678 patent.
`The “ports” as recited in the claims of the ’368 and ’678 patents are
`comprised of fiber collimators.
`
`•
`
`54
`
`
`
`Missing element (ports)
`
`• Bouevitch discloses only two fiber collimators, and therefore, has at most
`two “ports” as claimed in the ’368 and ’678 patents. (Bouevitch, 14:19-21;
`Figs. 9a-9f, 11, 12; Sergienko Dec., ¶ 157; Marom Depo. Tr., 205:14-18.)
`
`Marom Depo Tr.
`
`55
`
`
`
`Reasons for patentability
`
`(cid:190) Smith does not teach:
`• mirrors that are continuously controllable in two dimensions (’368 patent)
`• micromirrors being pivotal about two axes and being continuous
`controllable (’678 patent)
`(cid:190) Lin does not teach:
`• mirrors that are continuously controllable in two dimensions (’368 patent)
`• micromirrors being pivotable about two axes and being continuously
`controllable (’678 patent)
`(cid:190) Additional missing elements
`(cid:190) Petitioner improperly combines Bouevitch Figs. 5 and 11
`(cid:190) A POSA would not have been motivated to combine Smith’s mirrors with
`Bouevitch
`(cid:190) Bouevitch fails to teach all of the claimed “ports”
`(cid:190) The disclosure in the Smith patent alleged to teach Capella’s claimed mirror
`feature is new matter and, therefore, not prior art
`
`56
`
`
`
`Dynamic Drinkware
`
`• The law has held for at least 34 years that a patent is prior art
`as of its provisional application’s filing date only for subject
`matter carried over from the provisional application and only
`if the patent’s claims have § 112 support in the provisional
`application.
`
`• Dynamic Drinkware did not change the law. The Federal
`Circuit in Dynamic Drinkware cited to 34 year-old precedent.
`
`57
`
`
`
`’683 provisional does not provide 112
`support for the Smith patent’s claims
`
`For 112 support for Smith’s claimed mirror, Petitioner relies on the ’683 provisional’s
`disclosure of “a mirror array with elements that can be rotated in an analog fashion about
`two orthogonal axes.” (’368 (Paper 34) and ‘678 (Paper 30), claim chart p. 2.)
`
`58
`
`
`
`Elements that can be rotated in an analog fashion
`were not carried forward into the Smith patent
`The Smith patent does not teach or suggest “elements that can be rotated
`in an analog fashion.”
`The mirror structure disclosed in the Smith patent comes not from the
`’683 provisional but rather from the ’285 provisional (different inventors).
`
`•
`
`•
`
`59
`
`
`
`Elements that can be rotated in an analog fashion
`were not carried forward into the Smith patent
`
`A side by side comparison of the portion of Smith relied on by Petitioner to
`show beam deflecting elements continuously controllable in two dimensions
`shows that the gimbal mirror in Smith originated from the from the ’285
`provisional, not the ’683 provisional.
`
`Smith, 14:57-65
`The cell includes a gimbal structure of
`an outer frame 262 twistably supported
`in a support structure 264 of the MEMS
`array through a first pair of torsion
`beams 266 extending along and twisting
`about a minor axis. The cell further
`includes a mirror plate 268 having a
`reflective surface 270 twistably
`supported on the outer frame 262
`through a second pair of torsion beams
`272 arranged along a major axis
`perpendicular to the minor axis and
`twisting thereabout.
`
`’285 Provisional, p. 2
`It includes a gimbal structure of
`an outer frame 10 twistably supported
`in the support structure 12 of the MEMS
`array through a first pair of torsion
`bars 14 extending along and twisting
`about a minor axis and a mirror plate 16
`having a reflective surface twistably
`supported by the outer frame 10
`through a second pair of torsion bars
`18 arranged along a major axis
`perpendicular to the minor axis and
`twisting thereabout.
`
`60
`
`
`
`Petitioner improperly relies on portions of
`Smith that are not prior art
`
`Capella contends that Petitioner relies on Smith’s gimbal mirror shown in Figs. 14 and
`15 to teach the “continuously controllable” limitation. (’368 Pet., pp. 28-29; ’678 Pet.,
`pp. 29-30.)
`
`61
`
`’368 Pet., pp. 28-29
`
`
`
`Claim 1 ’368 Patent
`
`62
`
`
`
`Claim 15 ’368 Patent
`
`63
`
`
`
`Claim 16 ’368 Patent
`
`64
`
`
`
`Claim 1 ’678 Patent
`
`65
`
`
`
`Claim 21 ’678 Patent
`
`66
`
`
`
`Claim 44 ’678 Patent
`
`67
`
`
`
`Claim 61 ’678 Patent
`
`68
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