CISCO SYSTEMS, INC.
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`____________________
`
`Case IPR2014-01276
`Patent RE42,678
`____________________
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`

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`Case IPR2014-01276
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`I.
`
`II.
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`Table of Contents
`
`INTRODUCTION .......................................................................................... 1
`
`BACKGROUND ............................................................................................ 4
`
`A. Overview of the technology ................................................................. 5
`
`1.
`
`2.
`
`3.
`
`Switching .................................................................................... 5
`
`Power........................................................................................... 6
`
`Switching and control with wavelength selective routers
`(WSRs) ........................................................................................ 6
`
`B.
`
`C.
`
`D.
`
`E.
`
`Summary of ’678 patent ....................................................................... 7
`
`Summary of the petition ....................................................................... 8
`
`Summary of Bouevitch ......................................................................... 9
`
`Summary of Smith patent and the ’683 provisional .......................... 13
`
`III. CLAIM CONSTRUCTION ......................................................................... 16
`
`IV. THE PETITION DOES NOT ESTABLISH A PRIMA FACIE CASE
`THAT INDEPENDENT CLAIMS 1, 21, 44, AND 61 OF THE ’678
`PATENT ARE OBVIOUS AND CONTAINS IRREPARABLE AND
`SUBSTANTIAL EVIDENTIARY GAPS ................................................... 20
`
`A.
`
`B.
`
`C.
`
`Petitioner failed to make a threshold showing that the Smith
`patent is entitled to the § 102(e) prior art filing date of the ’683
`provisional .......................................................................................... 22
`
`Petitioner failed to determine the scope of the prior art and
`independently ascertain the differences between the claimed
`invention and the prior art .................................................................. 27
`
`Petitioner failed to show why a POSA would have been
`motivated to combine Bouevitch and Smith ...................................... 29
`
`D.
`
`Bouevitch teaches away from Smith .................................................. 32
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`Case IPR2014-01276
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`1.
`
`2.
`
`Bouevitch teaches away from using “angular
`displacement” to control power as described in Smith ............. 32
`
`Bouevitch teaches away from using an external feedback
`loop to control power as described in Smith ............................. 37
`
`Bouevitch does not teach or suggest “multiple fiber
`collimators” as recited by independent claims 1 and 21, or “an
`array of fiber collimators” as recited by independent claim 44 ......... 39
`
`Bouevitch does not teach or suggest “an input port” and “output
`ports” as recited by the independent claims 1, 21, 44, and 61 ........... 41
`
`The Smith patent does not teach “channel micromirrors being
`pivotal about two axes” as recited in independent claims 1 and
`44, and similar features recited in independent claim 61 ................... 45
`
`The Smith patent does not teach or suggest “channel
`micromirrors … being individually and continuously
`controllable” as recited in independent claims 1 and 44, and
`similar features recited in independent claim 61................................ 47
`
`The Smith patent is substantially similar to references from
`original prosecution and the two reissues, so institution should
`be denied for all grounds using the Smith patent. .............................. 49
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`V.
`
`THE GROUNDS ARE REDUNDANT AND THE PETITIONER
`FAILS TO PROVIDE “MEANINGFUL DISTINCTIONS”
`BETWEEN THE GROUNDS ...................................................................... 52
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`VI. CONCLUSION ............................................................................................. 54
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`Case IPR2014-01276
`
`Cases
`
`Table of Authorities
`
`Application of Lund,
`376 F.2d 982 (C.C.P.A. 1967) ....................................................................... 22
`
`Application of McLaughlin,
`443 F.2d 1392 (C.C.P.A. 1971) ..................................................................... 30
`
`Application of Warner,
`379 F.2d 1011 (C.C.P.A. 1967) ..................................................................... 21
`
`Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc.,
`249 F.3d 1341 (Fed. Cir. 2001) ..................................................................... 17
`
`CallCopy, Inc. v. Verint Americas, Inc.,
`IPR2013-00486, Paper 11 (P.T.A.B. Feb. 5, 2013) ...................................... 22
`
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359 (Fed. Cir. 2002) ..................................................................... 17
`
`Crocs Inc. v. International Trade Commission,
`598 F.3d 1294 (Fed. Cir. 2010) ..................................................................... 30
`
`DeSilva v. DiLeonardi,
`181 F.3d 865 (7th Cir. 1999) ......................................................................... 29
`
`Ex Parte Mortensen,
`No. 2010-012383 (B.P.A.I. May 7, 2012). .................................................... 21
`
`Google Inc. v. EveryMD.com LLC,
`IPR2014-00347, Paper 9 (P.T.A.B. May 22, 2014) ...................................... 29
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ........................................................................................... 27
`
`In re Chaganti,
`2014 WL 274514 (Fed. Cir. 2014) ................................................................ 21
`
`In re Giacomini,
`612 F.3d 1389 (Fed. Cir. 2010) ..................................................................... 22
`
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`Case IPR2014-01276
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`In re Gordon,
`733 F.2d 900 (Fed. Cir. 1984) ....................................................................... 30
`
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994) ......................................................................... 33
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ....................................................................... 20
`
`In re Morris,
`127 F.3d 1048 (Fed. Cir. 1997) ..................................................................... 17
`
`K-2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999) ..................................................................... 18
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007).......................................................................... 21, 27, 30
`
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25, 2012) ............................. 52, 53
`
`Medrad, Inc. v. MRI Devices Corp.,
`401 F.3d 1313 (Fed. Cir. 2005) ..................................................................... 19
`
`Mentor H/S, Inc. v. Med. Device Alliance, Inc.,
`244 F.3d 1365 (Fed. Cir. 2001) ..................................................................... 17
`
`Olympus Am., Inc. v. Perfect Surgical Techniques, Inc.,
`IPR2014-00233, Paper 16 (P.T.A.B. June 16, 2014) .................................... 52
`
`Pac-Tec, Inc. v. Amerace Corp.,
`903 F.2d 796 (Fed. Cir. 1990) ....................................................................... 18
`
`Perry v. Amerace Corp.,
`502 U.S. 808 (1991)....................................................................................... 18
`
`Synopsys, Inc. v. Mentor Graphics Corporation,
`IPR2012-00041, Paper 16 (P.T.A.B. Feb. 22, 2013) .................................... 17
`
`United States v. Adams,
`383 U.S. 39 (1966) ......................................................................................... 30
`
`
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`- iv -
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`Case IPR2014-01276
`
`Zodiac Pool Systems, Inc. v. Aqua Products, Inc.,
`IPR2013-00159, Paper 18 (P.T.A.B Aug. 23, 2013) ..................................... 33
`
`Statutes
`
`35 U.S.C. § 102(e) ........................................................................................... passim
`
`35 U.S.C. § 103(a) ................................................................................................... 20
`
`35 U.S.C. § 112 ........................................................................................................ 26
`
`35 U.S.C. § 312(a)(3) ............................................................................................... 21
`
`35 U.S.C. § 325(d) .............................................................................................. 4, 49
`
`Rules
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`37 C.F.R. § 42.100(b) .............................................................................................. 16
`
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 21
`
`37 C.F.R. § 42.22(a)(2) ............................................................................................ 22
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`Case IPR2014-01276
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`Exhibit #
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`2001
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`Exhibit List
`
`
`Description
`
`Provisional Patent Application No. 60/267,285
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`- vi -
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`Case IPR2014-01276
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`I.
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`INTRODUCTION
`
`The Patent Owner respectfully requests that the Board deny institution of the
`
`Petition because the Petitioner did not demonstrate a reasonable likelihood that any
`
`of the proposed grounds of unpatentability invalidate any claim of U.S. Patent No.
`
`RE42,678 (“the ’678 patent”). The Board should deny institution for at least four
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`reasons: (1) the Petitioner failed to make a threshold showing that the Smith patent
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`is entitled to the § 102(e) prior art filing date of the ’683 provisional; (2) the
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`Petition fails to state a prima facie case of obviousness by failing either to ascertain
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`the scope and content of the prior art, and the differences between the prior art and
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`the ’678 patent, or to adequately explain why a POSA would have been motivated
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`to combine the primary prior art references; (3) the prior art references relied upon
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`by Petitioner fail to teach material limitations of the claims; and (4) the arguments
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`presented by the Petitioner are nearly identical to combinations of prior art
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`references that were previously before the Office.
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`First, Petitioner failed to make a threshold showing that the Smith patent is
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`entitled to the § 102(e) prior art filing date of the ’683 provisional. For example,
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`Petitioner contends that Bouevitch discloses every element of the four independent
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`claims 1, 44, and 61 of the ’678 patent except for the use of channel micromirrors
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`that are individually and continuously pivotal about two axes. It relies solely on the
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`Smith patent (with alleged support from the ’683 provisional) to show this missing
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`Case IPR2014-01276
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`feature. But there is no written description support in the ’683 provisional for the
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`two-axis mirror embodiment disclosed in the Smith patent and relied upon by the
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`Petitioner. As will be shown in detail below, this embodiment is traceable, not to
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`the ’683 provisional, but instead to a second provisional application filed by a
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`separate set of inventors. As a result, the Smith patent cannot qualify as prior art
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`under pre-AIA 35 U.S.C. § 102(e) and all four grounds set forth in the Petition,
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`each of which relies on the Smith patent, should be denied.
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`Second, the Board should deny the Petition because Petitioner failed to
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`determine the scope of the prior art and independently ascertain the differences
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`between the claimed invention and the prior art. Instead, Petitioner twists the
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`patentee’s reissue declaration into an alleged admission, and then relies on that
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`alleged admission to wrongly conclude that “Bouevitch explicitly discloses every
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`element of the 4 independent claims of the ’678 patent . . . except for the use of
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`mirrors rotatable in two axes.” (Petition, Paper 2, pp. 17-18.) Since the wrongly
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`alleged admission forms the entire basis for the Petitioner’s argument, the Petition
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`should be denied.
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`The Petitioner also failed to present a complete analysis of the Graham
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`factors, and further failed to present an adequate analysis of the KSR rationales.
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`
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`More specifically, Petitioner states that elements of the claims of the ’678 patent
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`
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`are allegedly taught by non-specific combinations of references, but fails to
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`Case IPR2014-01276
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`articulate any reason why a POSA would have thought to combine the references,
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`or why a POSA would have thought that the references could even operate as
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`required after being combined. Indeed, contrary to Petitioner’s claims, a POSA
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`would not have been motivated to make the prior art combinations put forth by the
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`Petitioner because Bouevitch specifically teaches away from the use, as described
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`in the Smith patent, of deliberate angular displacement of light beams relative to
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`the output ports to perform power control.
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`Third, the Board should deny the Petition because the prior art references
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`relied upon do not, in fact, teach all the material limitations of the challenged
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`claims. For example, Bouevitch’s “optical circulators” do not read on the “input
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`port” and “output ports” limitations of the ’678 patent. In fact, the ’678 patent
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`teaches away from the use of optical circulators, rendering Petitioner’s comparison
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`in this regard inapt.
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`More critically, Petitioner relies on the Smith patent to teach micromirrors
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`that are pivotal about two axes. But the ’683 provisional does not, itself, disclose
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`any structure, working or otherwise, that would allow such micromirrors. And the
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`complicated gimbal structure described in the Smith patent was developed by
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`others and set forth, not in the ’683 provisional, but in a separate provisional,
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`provisional application No. 60/267,285 (“the ’285 provisional,” provided as Ex.
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`2001). The Smith patent improperly claims priority to the ’285 provisional since
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`Case IPR2014-01276
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`there are no overlapping inventors. The Smith patent also fails to teach channel
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`micromirrors that are individually and continuously controllable. As a result, the
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`Smith patent fails to teach “channel micromirrors being pivotal about two axes and
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`being individually and continuously controllable to reflect corresponding received
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`spectral channels into any selected ones of said output ports and to control the
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`power of said received spectral channels coupled into said output ports” as
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`required by the independent claims 1 and 44, and similar features recited by
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`independent claim 61 of the ’678 patent.
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`Finally, the Petitioner’s arguments are not new. They are nearly identical to
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`combinations of prior art references that were previously before the Office. Section
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`325(d) permits the Board to take into consideration when granting a petition
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`whether the same or substantially the same prior art or argument was previously
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`presented to the Office. Since that is the case here, the Board should deny the
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`petition.
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`For the foregoing reasons, as explained in further detail below, Patent Owner
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`respectfully requests that the Board deny the instant Petition.
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`II. BACKGROUND
`The ’678 patent relates to switching in optical fiber networks. In particular,
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`the patent discloses a novel class of dynamically reconfigurable optical add/drop
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`Case IPR2014-01276
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`multiplexers (“ROADMs”) for wavelength multiplexed optical networking
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`capabilities.
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`A. Overview of the technology
`Telecommunications companies use optical fiber to transmit telephone
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`signals, Internet communications, and cable television signals. Various
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`wavelengths of light can travel along an optical fiber at the same time, each
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`wavelength carrying specific data intended for delivery to a specific location.
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`Networks using optical fiber span the United States. Networks on a continent or
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`within a country form a grid. Line segments of fiber optic cable intersect at hubs or
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`nodes, and at these hubs or nodes, there are switching devices.
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`Switching
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`1.
`In modern networks, switching is accomplished in the optical domain by
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`ROADMs. ROADMs are the backbone of advanced fiber optic networks because
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`they route, or switch, signals traveling along fiber optic cables in the directions
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`they need to go. The switching occurs on the wavelength level, which means that a
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`ROADM can separate all the wavelengths of light entering the device and route
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`them in different directions depending on the ROADM’s configuration. ROADMs
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`can drop certain wavelengths from a fiber altogether and can also add new
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`wavelengths onto fibers. ROADMs can also control flow across fiber optic cables.
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`If traffic along one cable is particularly heavy at certain times, a ROADM can
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`Case IPR2014-01276
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`manage the load by sending traffic along one fiber at certain times and another
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`fiber at other times.
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`Before ROADMs, service providers used Optical to Electrical to Optical
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`switches (“OEO switches”). In OEO switches, data carried along optical cables had
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`to be converted into electrical signals to be routed. OEO switches were big, slow,
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`and expensive. Internet service providers’ introduction of ROADMs into their
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`networks made all-optical networks possible. All-optical networks vastly increased
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`the speed at which signals could be transmitted, allowing for transmission of video
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`streams, while also significantly reducing cost and size of switching equipment.
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`Power control
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`2.
`In addition to their switching capabilities, ROADMs have the ability to
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`control the output power on the output ports of the optical switch. As a result,
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`ROADMs can provide high uniformity or equalization in the power level of the
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`channels across all-optical networks. One method by which ROADMs control
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`power output is through deliberate angular displacement or misalignment of the
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`light beam from the output waveguide, thereby controlling the coupling between
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`the light beam and the output waveguide.
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`3.
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`Switching and control with wavelength selective routers
`(WSRs)
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`ROADMs use wavelength selective routers (“WSRs”) to perform switching
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`and power control. Certain WSR embodiments perform their switching and power
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`Case IPR2014-01276
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`control functions by steering light beams using beam deflecting elements. Such
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`beam deflecting elements can include, but are not limited to, small tilting mirrors,
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`commonly referred to as Micro ElectroMechanical Systems or “MEMS.”
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`Switching is performed by steering the beam to the intended output port. Power
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`can be attenuated by steering the beam such that it is slightly misaligned with the
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`output port, thereby reducing coupling. As shown next, the ’678 patent improves
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`both switching and power characteristics.
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`Summary of ’678 patent
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`B.
`The ’678 patent describes a ROADM for optical switching and power
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`control in optical networks. The inventors recognized certain limitations in
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`conventional optical switches including, for example, 1) intrinsically static
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`wavelength routing, 2) add and/or drop channels that needed to be multiplexed or
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`demultiplexed, 3) the need for stringent fabrication tolerance and optical alignment
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`that was unable to be actively maintained, 4) the need for systematic power
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`maintenance of the spectral channels, and 5) high cost and heavy optical loss. (’678
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`patent, 3:20-46.)
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`To address these issues, the inventors recognized that continuous control of
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`micromirrors would enable scanning across all possible output ports, allowing any
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`individual spectral channel to be directed to any desired output port. (Id. at 4:7-14.)
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`The inventors further recognized that if the micromirrors were pivotal about two
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`Case IPR2014-01276
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`axes, the fiber collimators serving as the input and output ports could be arranged
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`in either a one dimensional or two dimensional array, and that dynamic control of
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`the coupling between the spectral channels and the output ports could be actively
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`managed to control power. (Id. at 4:26-56.) The inventors further recognized that
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`“the underlying OADM architecture thus presented is intrinsically scalable and can
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`be readily extended to any number of the WSR-S (or WSR) systems, if so desired
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`for performing intricate add and drop functions in a network environment.” (Id. at
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`5:50-58.)
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`In view of these principles, the ROADM described and claimed in the ’678
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`patent is capable of dynamic power management of optical signals, in addition to
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`its switching functions. The dynamic power management and switching functions
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`are enabled by a novel array of micromirrors that are individually and continuously
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`controllable for switching and power control.
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`Summary of the petition
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`C.
`The Petition proposes four redundant and cumulative grounds of
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`unpatentability as indicated in the following table. The Petition relies on a single
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`primary reference, U.S. Patent No. 6,498,872 (“Bouevitch”) and three secondary
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`references. The secondary references are U.S. Patent No. 6,798,941 (“Smith” or
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`“Smith patent”) and a provisional to which it dubiously claims benefit, U.S.
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`Provisional Patent Application 60/234,683 (“the ’683 provisional”). They also
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`include U.S. Patent No. 5,661,591 (“Lin”), and U.S. Patent No. 6,011,884
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`(“Dueck”).
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`Case IPR2014-01276
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`Ground
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`1
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`2
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`3
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`4
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`Type
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`Primary
`Reference
`Obviousness under §103 Bouevitch
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`’678 Patent
`Claims
`1-4, 9, 10, 13,
`17, 19-23, 27,
`29, 44-46, 53,
`and 61-65
`1-4, 9, 10, 13,
`17, 19-23, 27,
`29, 44-46, 53,
`and 61-65
`17, 29, and 53 Obviousness under §103 Bouevitch
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`Obviousness under §103 Bouevitch
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`17, 29, and 53 Obviousness under §103 Bouevitch
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`Secondary
`References
`Smith
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`Smith and
`Lin
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`Smith and
`Dueck
`Smith, Lin
`and Dueck
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`As is demonstrated herein, Petitioner has not met its burden of showing that
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`there exists a reasonable likelihood that any of the claims of the ’678 patent are
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`unpatentable.
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`Summary of Bouevitch
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`D.
`Bouevitch describes an optical device (as shown in its FIG. 1, reproduced
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`below) that is “capable of operating as a Dynamic Gain/Channel Equalizer (DGE)
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`and/or a Configurable Optical Add/Drop Multiplexer (COADM).” (Bouevitch,
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`5:18-20.) The device includes “modifying means 150 for modifying at least a
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`portion of the lighht incident thereon.” ((Id. at 5:355-36 (emphhasis addedd).) In one
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`Case IPPR2014-011276
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`embodimment, the mmodifying means of BBouevitchh includes aa MEMS aarray.
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`CCritically too the instannt Petition,, however,
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`the MEM
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`S array as
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`described
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`in
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`Bouevittch does noot, in eitherr its switchhing or powwer controol functionss, result in
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`deliberaate angularr displacemment or missalignmentt of the beaam from thhe output pport.
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`Indeed, in either itts power coontrol, or aadd/drop mmultiplexinng functionns, Bouevittch
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`consisteently teachhes directlyy away fromm deliberatte angular
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`displacemment or
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`misalignnment of thhe optical beams, expplicitly notting that anngular dispplacement
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`of
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`the beamm in relatioon to the o
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`utput port is disadvanantageous.
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`FFor examplle, with resspect to U.SS. Patent NNo. 5,414,5540 to Pateel et al.
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`(“Patel””), Bouevittch states thhat “the diisclosed deevice is limmited in thaat the add/ddrop
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`beams oof light aree angularlyy displaced relative too the input//output beaams of lighht.
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`This anggular displacement iis disadvanntageous wwith respec
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`add/drop and/or innput/outpuut beams off light into
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`parallel opptical waveeguides, inn
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`addition to the additional angular alignment required for the input beam of light.”
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`(Id. at 2:1-7 (emphasis added).)
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`As illustrated in FIGS. 3a and 3b of Bouevitch (reproduced below) the light
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`beam is not angularly displaced with respect to the output port during switching.
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`Instead, the light beam is reflected back to the output port on the same path (FIG.
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`3a) or on a parallel path (FIG. 3b). (Id. at 6:19-32.)
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`Similarly, Bouevitch does not rely on angular displacement of the beam in
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`relation to the output port to attenuate power.1 Again, as described and illustrated
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`in FIGS. 3a and 3b, even when used as a dynamic gain equalizer to control power
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`output, the light beam from modifying means 150 is always reflected back to the
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`output ports on either on the same path as the incoming light (102a) or on a parallel
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`1 Even though two parallel lines may be laterally displaced from each other,
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`there is no angular displacement between them.
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`path (102b). (Id. at 6:33-41 (referring to FIGS. 3a and 3b and describing how the
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`claimed device can attenuate power when acting as a DGE).)
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`Even when the modifying means of Bouevitch includes a MEMS array as
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`described at col. 7, lines 23-44 and shown in FIG. 5 (reproduced below), the beam
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`is always reflected either directly back at the output port or along a parallel path—
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`it is never angularly displaced or deliberately misaligned.
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`This concept is also illustrated in and described with regard to FIG. 8. In
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`discussing FIG. 8, Bouevitch specifically notes that the beam is reflected back
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`along the same optical path after power attenuation: “FIG. 8 illustrates a DGE
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`including a conventional three port optical circulator . . . [S]ub-beams of light . . .
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`are reflected and transmitted to the modifying means 850 in a direction parallel to
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`the optical axis . . . Once attenuated, the sub-beams of light are reflected back to
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`the spherical reflector 810, the diffraction grating 820, and the front-end unit 805
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`along the same optical path.” (Id. at 11:15-35 (emphasis added).)
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`Finally, as admitted by the Petitioner, the micro mirrors used in the MEMS
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`array as described in Bouevitch are not pivotal about two axes. (Petition, p. 31.)
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`Summary of Smith patent and the ’683 provisional
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`E.
`Petitioner contends that Smith patent is entitled to a § 102(e) prior art date of
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`September 22, 2000, the filing date of the ’683 provisional. Petitioner concedes
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`that to demonstrate proper written description support, the portions of the Smith
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`patent it relies upon must be fully supported by the ’683 provisional. As a result,
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`for purposes of this response, the majority of citations and references made herein
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`are made with regard to the ’683 provisional.
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`Like Bouevitch, the Smith patent is directed at ROADMs for optical
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`switching and power control. (’683 provisional, pp. 3, 4.) But unlike Bouevitch,
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`the Smith patent describes using misalignment or angular displacement of the
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`optical beams for power control. For example, specifically with regard to power
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`control, the ’683 provisional states:
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`• “the invention discloses the use of controlled misalignment in fiber
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`optical devices in order to introduce a controlled loss for the purposes
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`of enabling power equalization.” (Id. at 12 (emphasis added).)
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`• “[v]ertical misalignment is the preferred method of reducing power
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`coupling to the chosen output channel.” (Id. at 10 (emphasis added).)
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`• “misalignment further exacerbates this coupling degradation in a
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`dramatic manner well known to those skilled in the art. Angular
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`displacement off the waveguide axis is another, less preferred means
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`of reducing coupling.” (Id.)
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`Angular displacement of the optical beams in the Smith patent is achieved
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`by the rotation of MEMS mirrors. However, as admitted by the Petitioner, the
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`Smith patent uses one rotational axis for switching and a second axis for power
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`control. (Petition, p. 34 (“Smith switches with mirror rotation in one axis, and
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`control powers [sic] with mirror rotation in a second axis.”).) Specifically, as
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`described variously in the Smith patent and the ’683 provisional:
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`•
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`the “principal switching operations us[e] the one mirror tilt axis,”
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`while “[t]he other mirror tilt axis, the minor axis, can be used for
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`power adjustment.” (Smith patent, 16:34-51.)
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`• “[a]ngular displacement in a first, switching plane, is used to perform
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`an OXC, ADM or other switching function while angular
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`displacement about the orthogonal axis is used for power control.”
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`(’683 provisional, p. 6 (emphasis added).)
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`• “[i]n order to control the power of the beams leaving the switch via
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`the output and drop ports, the corresponding micro-mirror elements
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`are designed to tilt about a second, perpendicular axis in the plane of
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`the array.” (Id. at 9; see also FIG. 3.)
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`More critically, the Smith patent does not teach mirrors that are “pivotal
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`about two axes and being individually and continuously controllable.” Although
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`the Smith patent allegedly teaches mirrors that are rotatable about one or two
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`orthogonal axes, it does not disclose any such embodiment, working or otherwise.
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`The ’683 provisional states that a MEMS array “can be tilted about two orthogonal
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`axes” (’683 provisional, p. 10), and that such arrays are described in a paper by
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`Dewa et al.—but neither the Dewa paper nor its alleged embodiments were
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`incorporated by reference into the ’683 provisional. Moreover, the Smith patent
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`itself includes a complicated “gimbal” structure capable of rotation about two
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`orthogonal axes. But that structure was developed by others and set forth not in the
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`’683 provisional, but in the ’285 provisional, to which the Smith patent improperly
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`claims priority since there are no overlapping inventors.
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`Finally, the Petitioner fails to show that the Smith patent discloses channel
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`micromirrors being individually and continuously controllable for switching and
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`power control. Petitioner points to a section of the Smith patent for support, where
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`the term “linearly” is used, but that section is describing the voltage that is “applied
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`across opposed electrodes” to exert “a positive force acting to overcome the torsion
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`beams 266, 272 and to close the variable gap between the electrodes.” (Smith
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`patent, 15:38-42.) However, as can be seen, this is merely a description of the
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`magnitude of force needed to overcome the torsion beams 266, 272. It does not
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`speak to continuous control for switching and power control.
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`Moreover, the referenced discussion does not refer to any embodiments
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`carried over from the ’683 provisional. The discussion refers only to torsion beams
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`266, 272 of the gimbal structure that was lifted from the ’285 provisional to which
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`the Smith patent improperly claims priority. The ’683 provisional also provides no
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`support. The mere use of the word “analog” does not teach continuous control of
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`micromirrors in the manner set forth in the claims. As discussed herein, there is no
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`disclosure in the ’683 provisional of a micromirrors that are even capable of
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`rotation about two axes. As a result, the Smith patent fails to teach “channel
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`micromirrors being pivotal about two axes and being individually and continuously
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`controllable to reflect said corresponding received spectral channels into any
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`selected ones of said output ports and to control the power of said received spectral
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`channels coupled into said output ports” as required by the independent claims 1,
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`44, and 61 of the ’678 patent.
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`III. CLAIM CONSTRUCTION
`In an inter partes review, “[a] claim . . . shall be given its broadest
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`reasonable construction in light of the specification of the patent in which it
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`appears.” 37 C.F.R. § 42.100(b). Stated differently, claim terms should be
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`construed using “the broadest reasonable meaning of the words in their ordinary
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`usage as they would be understood by one of ordinary skill in the art, taking into
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`account whatever enlightenment by way of definitions or otherwise that may be
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`afforded by the written description contained in the applicant’s spec