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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FUJITSU NETWORK COMMUNICATIONS, INC.
`Petitioner
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`v.
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`THOMAS SWAN & CO. LTD.
`Patent Owner
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`Inter Partes Review Case No. Unassigned
`Patent 8,335,033
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`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,335,033 UNDER 35 U.S.C. §§ 311-319 AND
`37 C.F.R. §§ 42.1-.80, 42.100-.123
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Inter Partes Review of USPN 8,335,033
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`TABLE OF CONTENTS
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`INTRODUCTION ......................................................................................... 1
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`I.
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`II. MANDATORY NOTICES AND FEES ....................................................... 4
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`III. CERTIFICATION OF GROUNDS FOR STANDING ................................ 6
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`IV. BACKGROUND ........................................................................................... 6
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`A. Overview of the ‘033 Patent ................................................................ 6
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`V.
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`CLAIM CONSTRUCTION ........................................................................... 8
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`VI. LEVEL OF ORDINARY SKILL IN THE ART .........................................13
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`VII. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ................14
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`A.
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`Summary of Grounds for Challenge ..................................................15
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`B. Motivation to Combine References ...................................................16
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`C.
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`Ground 1: Claims 1, 22, 24, 26, 29, 39, 43, 45, 58, 64, 65, 76, 79, 80,
`81, 89 and 90 would have been obvious by the combination of Parker
`Thesis and Warr Thesis .....................................................................17
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`D. Ground 2: Claim 27 would have been obvious by the combination of
`Parker Thesis, Warr Thesis and Tan Thesis ......................................48
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`E.
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`F.
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`Ground 3: Claims 47, 48 and 51 would have been obvious by the
`combination of Parker Thesis, Warr Thesis and Cohen ....................51
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`Ground 4: Claim 57 would have been obvious by the combination of
`Parker Thesis, Warr Thesis and Crossland Patent .............................57
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`VIII. CONCLUSION ............................................................................................60
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`ATTACHMENT A: ...............................................................................................61
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`ATTACHMENT B: APPENDIX OF EXHIBITS .................................................62
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`i
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`I.
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`Inter Partes Review of USPN 8,335,033
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`INTRODUCTION
`Petitioner Fujitsu Network Communications, Inc. (“FNC”) requests inter
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`partes review of Claims 1, 22, 24, 26, 27, 29, 39, 43, 45, 47, 48, 51, 57, 58, 64, 65,
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`76, 79, 80, 81, 89 and 90 (“Petitioned Claims”) of U.S. Patent No. 8,335,033 (“the
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`‘033 patent”) (Ex. 1001), assigned on the face of the patent to Thomas Swan &
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`Co. Ltd. (“Thomas Swan”). The Petitioned Claims of the ‘033 patent are generally
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`directed to “optical processors” that use a “dispersion device” to disperse light
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`beams of multiple frequencies into channels and a “focussing device” to focus the
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`light onto a two-dimensional spatial light modulator (“SLM”) having an “array of
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`controllable elements.” The optical processor includes circuitry that displays
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`“holograms” on the SLM in order to control the direction of light emerging from
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`the SLM. The technology claimed in the ’033 patent has applications in fiber optic
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`communications. The original patent application that led to the issuance of the
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`‘033 patent was filed in the United Kingdom on September 3, 2001.
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`Melanie Holmes (“Holmes”) is listed as the sole purported inventor for the
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`‘033 patent and the priority application. As explained further below, the subject
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`matter claimed in the ‘033 patent was developed and published by researchers at
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`the University of Cambridge (“Cambridge”) prior to the filing of the 2001 priority
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`application. For about a decade prior to the filing of the priority application,
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`researchers at Cambridge, working in Professor William Crossland’s Photonics &
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`Sensors group, investigated and published research relating to the use of liquid
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`crystal SLMs in optical communication and other applications. This work is well
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`documented and described in numerous publications emanating from Dr.
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`Crossland’s group in the 1990s. See Ex. 1002, http://www-g.eng.cam.ac.uk/
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`photonics_sensors/people/bill-crossland.htm (biography of Prof. Crossland: “Bill
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`Crossland held the position of Group Leader of the Photonics & Sensors Group . . .
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`from 1992 . . . until his retirement at the end of September 2009. . . He is generally
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`regarded as the founding father of liquid crystal over silicon (LCOS)
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`technologies.”) and Ex. 1003, http://www-g.eng.cam.ac.uk/photonics_sensors/
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`publications/index.htm (providing an exemplary listing of publications from the
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`Photonics & Sensors group).
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`In the years prior to the filing of the U.K. priority application, Holmes
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`collaborated with Cambridge on the development and use of liquid crystal SLMs
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`for optical beam routing and other applications. Holmes completed her Ph.D.
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`requirements in 1992 and shortly thereafter began collaborating with Dr.
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`Crossland who was working with three of his doctoral candidates on research
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`relating to liquid crystal SLMs for use in optical routing (Ex. 1004) (article entitled
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`“Low Crosstalk Devices for Wavelength-Routed Networks,” by M. J. Holmes, W.
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`Crossland et al., IEE Colloquium on Guided Wave Optical Signal Processing, IEE
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`Dig. No. 95-128 London, UK, indicating collaboration with the Crossland group in
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`at least 1995); (Ex. 1005) (article entitled “Holographic Optical Switching: The
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`‘ROSES’ Demonstrator,” by W. A. Crossland, K.L. Tan, M.J. Holmes et al.,
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`Journal of Lightwave Technology, Vol. 18, No. 12, Dec. 2000, at 1845-54,
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`indicating collaboration with the Crossland group continued through at least
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`2001). Those three doctoral candidates were Michael C. Parker, Stephen T. Warr
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`and Kim L. Tan. These doctoral candidates focused on research relating to liquid
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`crystal SLMs for use in optical routing that culminated in Ph.D. dissertations
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`published by Cambridge.
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`As explained further below, it is apparent that the claimed invention of the
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`‘033 patent was discovered and disclosed, prior to the filing of Holmes’s U.K.
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`priority application, through the research and publications of Drs. Parker, Warr
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`and Tan and Prof. Crossland. A review of the publication history of the
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`Cambridge group preceding the priority application makes clear that Holmes
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`worked closely with the Cambridge researchers—sometimes even in the same
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`laboratory using the same devices—and the researchers openly shared their ideas
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`with her. In addition, they frequently cite each other’s work in their publications.
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`Thus, by the time Holmes filed her U.K. priority application, a person having
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`ordinary skill in the art (“PHOSITA”) would have understood that the alleged
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`inventions claimed in the ‘033 patent were rendered obvious by the prior work of
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`the Cambridge researchers. Particularly in view of the working environment at
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`Cambridge and the long history of cross-cited publications, express suggestions in
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`the Cambridge researchers’ publications would have strongly motivated a
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`PHOSITA to combine the Cambridge publications relied upon in this Petition.
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`Moreover, the Petitioned Claims do not represent innovation over the prior art, but
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`instead would be no more than the result of the ordinary skill and common sense
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`of a PHOSITA. FNC believes that no showing of a specific motivation to
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`combine prior art is required to combine the references disclosed herein, as each
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`combination of art would have no unexpected results, and at most would simply
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`represent a known alternative to one of skill in the art. See KSR Int’l Co. v.
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`Teleflex, Inc., 127 S.Ct. 1727, 1739-40 (2007).
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`Inter partes review of the Petitioned Claims should be instituted because
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`this petition shows that there is a reasonable likelihood that Petitioners will prevail
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`on the Petitioned Claims. Each limitation of each Petitioned Claim is disclosed by
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`and/or obvious to one of ordinary skill in the art in light of the prior art discussed
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`herein. Claims 1, 22, 24, 26, 27, 29, 39, 43, 45, 47, 48, 51, 57, 58, 64, 65, 76, 79,
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`80, 81, 89 and 90 of the ‘033 patent should be found unpatentable and canceled.
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`
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`II. MANDATORY NOTICES AND FEES
`Real Parties-in-Interest: Fujitsu Network Communications, Inc. is the real
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`party-in-interest in this petition.
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`Related Matters: The following matters may affect or be affected by a
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`Inter Partes Review of USPN 8,335,033
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`decision in this proceeding: Thomas Swan & Co. Ltd. v. Finisar Corp. & Fujitsu
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`Network Communications, Inc., No. 2:13-cv-178 (E.D. Texas); and Inter Partes
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`Review Case No. IPR2014-00465 (directed to the ‘033 patent). Additionally,
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`Petitioner is filing additional petitions for inter partes review against three other
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`patents asserted in the above litigation, U.S. Pat. Nos. 7,145,710; 7,664,395; and
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`8,089,683. Moreover, each of the following Inter Partes Review Case Nos. are
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`directed to patents within the same family as the ‘033 patent: IPR2014-00460;
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`IPR2014-00461; IPR2014-00462.
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`Counsel: Lead counsel in this case is Christopher Chalsen (PTO Reg. No.
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`30,936); backup counsel is Nathaniel Browand (PTO Reg. No. 59,683) and Suraj
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`Balusu (PTO Reg. No. 65,519). A power of attorney accompanies this Petition.
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`Service Information: Christopher E. Chalsen, cchalsen@milbank.com;
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`Nathaniel T. Browand, nbrowand@milbank.com; Suraj Balusu,
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`sbalusu@milbank.com MILBANK, TWEED, HADLEY & McCLOY LLP,
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`1 Chase Manhattan Plaza, New York, New York 10005
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`Tel: (212) 530-5380
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`Fax: (212) 822-5380
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`Please direct all correspondence to lead counsel at the above address.
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`Petitioner consents to email service at: cchalsen@milbank.com,
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`nbrowand@milbank.com, and sbalusu@milbank.com.
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`Payment: Under 37 C.F.R § 42.103(a), the Office is authorized to charge the
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`fee set forth in 37 C.F.R. § 42.15(a) to Deposit Account No. 133250 as well as any
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`additional fees that might be due in connection with this Petition.
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`III. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies under 37 C.F.R § 42.104(a) that the patent for which
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`review is sought is available for inter partes review and that Petitioner is not
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`barred or estopped from requesting an inter partes review challenging the patent
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`claims on the grounds identified in this Petition.
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`IV. BACKGROUND
`A. Overview of the ‘033 Patent
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`Summary: The ‘033 patent is “relate[d] to the general field of controlling
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`one or more light beams by the use of electronically controlled devices.” (Ex.
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`1001 at 1:22-25). The patent claims recite a “spatial light modulator” or “SLM”
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`that may include a two-dimensional array of “controllable elements” or “phase
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`modulating elements” – e.g. liquid crystal pixels. (Ex. 1001 at 2:55-56; 3:36-37;
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`6:11-13). The specification describes grouping the controllable elements such that
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`input light beams travel through a “dispersion device” or grating and are incident
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`on particular groups which are controllable independently of each other. (Ex. 1001
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`at 2:57-68; 5:10-25). The ‘033 patent further describes the use of a “focussing
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`device” or lens to focus the light. (E.g., Ex. 1001 at claim 1).
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`The specification states that the SLM is able to modify, in a controlled
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`manner, the direction, power, focus, aberration, or beam shape of a light beam.
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`(Ex. 1001 at 11:43-47). That modification is achieved through the display of a
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`“hologram” at each group of pixels. (Ex. 1001 at 11:33-38). A “hologram” is
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`displayed by applying certain voltages to each pixel of the group. (Ex. 1001 at
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`22:7-9). The applied voltage affects the orientation of the liquid crystal. (Ex. 1001
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`at 12:6-10). When the light strikes the liquid crystal, the phase of the light at each
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`pixel is “modulated” or modified based on the orientation of the liquid crystal.
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`(Ex. 1001 at 12:18-21).
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`Cited Art: Except for Crossland Patent (defined below), none of the
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`references listed in Section VII were part of the original prosecution record of the
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`‘033 patent.
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`Prosecution History: The ’033 patent is part of a family of patents that
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`originated from UK Patent Application No. 0121308.1, filed on September 3,
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`2001. PCT Application No. PCT/GB02/04011 was filed on September 2, 2002.
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`U.S. Patent Application No. 12/710,913, filed February 23, 2010, issued as the
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`’033 patent and is a continuation of application No.11/978,258, filed October 29,
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`2007, now U.S. Patent 8,089,683, which is a continuation of application No.
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`11/515,389, filed on Sep. 1, 2006, now U.S. Patent No. 7,612,930, which is a
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`division of application No. 10/487,810 filed on September 10, 2004, now U.S.
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`Patent No. 7,145,710, upon attaining national stage in the United States. The face
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`of the ‘033 patent lists Thomas Swan as the assignee.
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`Claims of the ’033 Patent: Independent Claim 1 is exemplary and reads:
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`1. An optical processor having a reflective SLM, a dispersion device
`and a focussing device,
`wherein the SLM has an array of controllable elements,
`wherein the processor is configured such that light from a
`common point on the dispersion device is spatially distributed over at
`least part of the SLM, and
`wherein the processor is configured such that the controllable
`elements display different holograms at chosen locations of the SLM
`where said light is incident, for controlling directions at which light
`from respective said locations emerges.
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`V. CLAIM CONSTRUCTION
`This Petition shows that the Petitioned Claims of the ‘033 patent (Ex. 1001)
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`are unpatentable when the claims are given their broadest reasonable interpretation
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`in light of the specification, which is further supported by patentee’s allegations in
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`the co-pending litigation.1 The constructions set forth below are provided for
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`purposes of this inter partes review only.
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`1 District Courts employ different standards of proof and approaches to claim
`interpretation that are not applied by the USPTO for inter partes review.
`Accordingly, any interpretation or construction of the challenged claims in this
`Petition, either implicitly or explicitly, should not be viewed as constituting, in
`whole or in part, Petitioner’s own interpretation or construction, except as regards
`the broadest reasonable construction of the claims presented. Petitioner reserves
`the right to seek different constructions of these claim terms in a different forum.
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`Because the named inventor Holmes was a former collaborator of Drs.
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`Warr, Parker, Tan, and Crossland and a member of the Crossland group at
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`Cambridge, and in fact learned all about their work through her many interactions
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`with them at Cambridge, the ‘033 patent shares with the asserted prior art
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`references vastly common terminology concerning the same subject matter. As a
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`result, there are few terms in the Petitioned Claims that require construction, as
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`most of the claim terms can be found verbatim in the asserted prior art in the very
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`same context.
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`The district court has construed the term “SLM” or “spatial light
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`modulator” to mean “a device that modifies a property of light as a function of
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`time and position across the device.” Ex. 1006 at 14. The broadest reasonable
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`construction for the term “SLM” or “spatial light modulator” in light of the
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`specification is “a device that modifies a property of light as a function of time and
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`position across the device, and is at least somewhat polarisation-independent.”
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`See, e.g., Ex. 1001 at Fig. 1, 11:43-47 (“Devices embodying the invention act on
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`light beams incident on the device to provide emerging light beams which are
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`controlled independently of one another. Possible types of control include control
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`of direction, control of power, focussing, aberration compensation, sampling and
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`beam shaping.”); 11:27-29 (“the problems of the prior art can be solved by using a
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`reflective SLM having a two-dimensional array of phase-modulating elements that
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`is large in number, and applying a number of light beams to groups of those
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`phase-modulating elements”). The specification makes clear that the spatial light
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`modulator of the alleged invention must be polarization insensitive or independent
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`for the device to work. See, e.g., Ex. 1001 at 11:48-50 (“polarisation-independent
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`multiple phase liquid crystal over silicon spatial light modulators (SLMs)”).
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`Indeed, the ‘033 patent apparently disclaims any devices that are not polarisation
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`insensitive/independent. See, e.g., Ex. 1001 at 12:45-47 (“The invention may be
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`applied to other devices, provided they are capable of multiphase operation and
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`are at least somewhat polarisation independent at the wavelengths of concern.”).
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`The specification describes several ways of achieving polarisation independence
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`of the SLM. One disclosed way is use of ferroelectric liquid crystal (“FLC”)
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`operating in a polarization independent modality. See, e.g., Ex. 1001 at 12:51-54.
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`Another disclosed way is use of a quarter-wave plate that creates polarisation
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`independence. See, e.g., Ex. 1001 at 4:6-8; 7:6-8.
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`The broadest reasonable construction for the term “dispersion device” in
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`light of the specification is “a device that separates a light beam having different
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`wavelengths into its constituent spectral components based on wavelength.” See,
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`e.g., Ex. 1001 at 38:33-36 (“As a result of the grating 300 the beam 301 is split
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`into separate beams 301a, 301b, 301c for each wavelength channel, each travelling
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`in a different direction governed by the grating equation.”).
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`The broadest reasonable construction for the term “focusing device” in light
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`of the specification is “a device that focuses light.” See, e.g., Ex. 1001 at 38:22-24
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`(“The optics used to focus the beams can be based on refractive elements such as
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`lenses or reflective elements such as mirrors or a combination of the two.”).
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`The broadest reasonable construction for the term “focus” in light of the
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`specification is “to define an optical image.” See, e.g., Ex. 1001 at Fig. 28, 16:26-
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`28 (“A single variable focus action at a fixed position changes both the position
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`and the width of the beam waist”). The specification states that focusing is a type
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`of control and that a lens alters the focus of a light beam. Ex. 1001 at 8:1-6,
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`11:45-47, 42:20-24.
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`The broadest reasonable construction for the term “controllable elements”
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`in light of the specification is “components, such as pixels, which can change the
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`phase of incident light under certain conditions, such as application of voltage.”
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`This definition is consistent with the use of the term “phase-modulating elements”
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`in the specification of the ‘033 patent. In particular, the specification makes clear
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`that there needs to be a large number of phase-modulating elements for the
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`contemplated optical device to operate. See, e.g., Ex. 1001 at 11:28-29 (“array of
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`phase-modulating elements that is large in number”). The specification discloses
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`embodiments where the phase-modulating elements are pixels. See, e.g., Ex. 1001
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`at 38:56-58 (“the SIM [sic] 320 is a continuous pixel array of phase-modulating
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`elements and is polarisation independent”). The specification provides details of
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`the operation and function of the controllable phase modulating elements,
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`consistent with the proposed construction. See, e.g., Ex. 1001 at 13:31-57.
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`The district court has construed the term “hologram” to mean “a phase
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`modulation pattern used to control light incident upon the SLM.” Ex. 1006 at 18.
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`The broadest reasonable construction for the term “hologram” in light of the
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`specification is that the term is indefinite because it is not clear in the specification
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`and is context dependent in the industry. See, e.g., Ex. 1001 at 14:64-68 (“The
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`signal processing effects are usually realised by a method equivalent
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`to ‘multiplying’ the initial routing and/or hologram exp j (φ0(u)+ φ1(u)) by a
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`further hologram exp j φ2(u) in which φ2(u) is non-linear and oscillatory.”);
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`15:44-46 (“Referring to FIG. 3, a routing device 25 includes two SLMs 20, 21
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`which display holograms for routing light 1, 2 from an input fibre array 3,4 to an
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`output fibre array 5, 6.”); 7:13-18 (“In many routing applications, two SLMs are
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`used in series, and the displayed information on the one has the inverse effect to
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`the information displayed on the other. Since the information represents phase
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`change data, it may be regarded as a hologram.”); Ex. 1016, Timothy J. Drabik,
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`“Optoelectronic Integrated Systems Based on Free-Space Interconnects with an
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`Arbitrary Degree of Space Variance,” PROCEEDINGS OF THE IEEE, Vol. 82, No. 11,
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`November 1994, p. 1597 (“For convenience, all elements causing beam deviation
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`or splitting will be referred to as holograms, in the spirit of [31].”).
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`To the extent that the term “hologram” is not found indefinite, the broadest
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`reasonable construction of the term is “a set of modulation values for achieving the
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`desired change in incident light.” See, e.g., Ex. 1001 at 13:50-57 (“In one example
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`of this operation, the desired phase modulation is expressed modulo 2pi across the
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`array extent, and the value of the desired modulo-2pi modulation is established at
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`the centre of each pixel. Then for each pixel, the available level nearest the desired
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`modulation is ascertained and used to provide the actual pixel voltage. This
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`voltage is applied to the pixel electrode for the pixel of concern.”); 14:51-55
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`(“Therefore the routing phase modulation results in a set of equally spaced
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`diffraction orders. The greater the number of available phase levels the closer the
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`actual phase modulation to the ideal value and the stronger the selected diffraction
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`order used for routing.”).
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`The broadest reasonable interpretation of the remaining terms of the
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`challenged claims should be presumed to take on their ordinary and customary
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`meanings for purposes of the IPR.
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
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`The level of ordinary skill in the art is evidenced by the references. See In re
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`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). A person of ordinary skill in the
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`art (“PHOSITA”) for this patent would have at least a Ph.D., or equivalent
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`experience, in optics, physics, electrical engineering, or a related field, including at
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`least three years of experience designing, constructing, and/or testing optical
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`systems. Ex. 1007 (hereinafter “Drabik Decl.”) at ¶ 72. For purposes of this
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`petition, FNC relies on the September 3, 2001 priority date listed on the face of the
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`‘033 patent for the person of ordinary skill in the art analysis.2
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`VII. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Under 37 C.F.R §§ 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner challenges
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`claims 1, 22, 24, 26, 27, 29, 39, 43, 45, 47, 48, 51, 57, 58, 64, 65, 76, 79, 80, 81,
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`89 and 90 of the ‘033 patent. Petitioner requests this relief in view of the following
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`references:
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`Exhibit
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`Description
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`Ex. 1008 “Dynamic Holograms for Wavelength
`Division Multiplexing,” Michael Charles
`Parker (“Parker Thesis”)
`Ex. 1009 “Free Space Switching for Optical Fibre
`Networks,” Stephen Thomas
`Warr (“Warr Thesis”)
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`Publication or
`Filing Date
`
`Type of
`Prior
`Art3
`November 1996 § 102(b)
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`July 1996
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`§ 102(b)
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`2 FNC reserves the right to contest this date in this proceeding and in the
`companion district court case, Thomas Swan & Co. Ltd. v. Finisar Corp. & Fujitsu
`Network Communications, Inc., No. 2:13-cv-178 (E.D. Texas), for any alleged
`conception date that Thomas Swan should submit during this proceeding, whether
`earlier or later than the filing of the U.K. application in September 2001.
`3 The application that issued as the ’033 patent was filed prior to the America Invents
`Act (the “AIA”). Accordingly, Petitioner has used the pre-AIA statutory framework
`to refer to the prior art.
`
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`14
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`Inter Partes Review of USPN 8,335,033
`
`Ex. 1010 “Dynamic Holography Using
`Ferroelectric Liquid Crystal On Silicon
`Spatial Light Modulators,” Kim Leong
`Tan (“Tan Thesis”)
`Ex. 1011 Cohen, A.D. et al., “100-GHz-Resolution
`Dynamic Holographic Channel
`Management for WDM,” IEEE Photonics
`Technology Letters, Vol. 11, No. 7, pp.
`851-853, July 1999 (“Cohen”)
`Ex. 1012 U.S. Patent Application Publication No.
`2001/0050787 (“Crossland Patent”)
`
`February 1999
`
`§ 102(b)
`
`July 1999
`
`§ 102(b)
`
`May 18, 2001
`
`§ 102(e)
`
`A full list of exhibits relied on in this petition is included as Attachment B.
`
`The Parker Thesis, Warr Thesis and Tan Thesis are printed publications under 35
`
`U.S.C. § 102(b) and were indexed and shelved in the Cambridge University library
`at least one year prior to September 3, 2001. See Drabik Decl. at ¶ 106; see
`
`generally Ex. 1015, Clarke Decl.
`
`
`
`A.
`
`Summary of Grounds for Challenge
`
`Inter partes review is requested on the grounds for unpatentability listed in
`
`the index below. In support of the proposed grounds for unpatentability, this
`
`Petition is accompanied by a declaration of a technical expert, Dr. Timothy Drabik
`
`(Ex. 1007), which explains what the art would have conveyed to a PHOSITA.
`
`
`Ground
`1
`
`35 USC
`§ 103
`
`Index of References
`Parker Thesis in view of Warr Thesis
`
`Claims
`1, 22, 24, 26,
`27, 29, 39, 43,
`45, 58, 64, 65,
`76, 79, 80, 81,
`
`
`27
`
`2
`
`§ 103
`
`Parker Thesis in view of Warr Thesis
`and Tan Thesis
`
`
`
`15
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`Inter Partes Review of USPN 8,335,033
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`3
`
`4
`
`§ 103
`
`§ 103
`
`Parker Thesis in view of Warr Thesis
`and Cohen
`Parker Thesis in view of Warr Thesis
`and Crossland Patent
`
`47, 48 and 51
`
`57
`
`Claims 1, 22, 24, 26, 27, 29, 39, 43, 45, 47, 48, 51, 57, 58, 64, 65, 76, 79, 80,
`
`81, 89 and 90 of the ‘033 patent would have been obvious to a PHOSITA by the
`
`art cited in the grounds of unpatentability described above. In the attached
`
`declaration, Dr. Drabik provides a thorough discussion of the state of the art at the
`
`time of this alleged “invention.” Drabik Decl. at ¶¶ 24-69. His declaration makes
`
`clear that all the elements of all the Petitioned Claims lack invention. Drabik Decl.
`
`at ¶¶ 107-147.
`
`
`
`B. Motivation to Combine References
`
`FNC submits that no showing of specific motivations to combine the
`
`respective references in Grounds 1-4 (set forth below) is required, as the respective
`
`combinations would have no unexpected results, and at most would simply
`
`represent known alternatives to one of skill in the art. See KSR Int’l Co. v.
`
`Teleflex, Inc., 127 S.Ct. 1727, 1739-40 (2007). Indeed, the Supreme Court held
`
`that a person of ordinary skill in the art is “a person of ordinary creativity, not an
`
`automaton” and “in many cases a person of ordinary skill in the art will be able to
`
`fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 1742.
`
`Nevertheless, specific motivations and reasons to combine the references are
`
`
`
`16
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`
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`identified below.
`
`Inter Partes Review of USPN 8,335,033
`
`C. Ground 1: Claims 1, 22, 24, 26, 29, 39, 43, 45, 58, 64, 65, 76, 79, 80,
`81, 89 and 90 would have been obvious by the combination of
`Parker Thesis and Warr Thesis
`
`Claims 1, 22, 24, 26, 29, 39, 43, 45, 58, 64, 65, 76, 79, 80, 81, 89 and 90 of
`
`
`
`the ‘033 patent would have been obvious over Parker Thesis in view of Warr
`
`Thesis. Every element of each of these claims is either disclosed or would be an
`
`obvious variant on the teachings of Parker Thesis and Warr Thesis.
`
`Parker Thesis is a prior art reference to the ‘033 patent under § 102(b).
`
`Parker Thesis is a Ph.D. dissertation submitted by Michael Parker at the conclusion
`
`of his studies at the University of Cambridge, in November 1996. Dr. Parker
`
`worked in Prof. Crossland’s group at Cambridge under the supervision of Dr.
`
`Robert Mears. Parker Thesis at iii. The thesis discusses the use of a polarization
`
`insensitive ferroelectric liquid crystal SLM to make a tunable wavelength filter, a
`
`tunable fibre laser, and a design for a space-wavelength switch. The space-
`
`wavelength switch disclosed in Parker Thesis shares the basic optical geometry
`
`found in the claims of the ‘033 patent (shown in the chart below).
`
`Warr Thesis is a prior art reference to the ‘033 patent under § 102(b). Warr
`
`Thesis is a Ph.D. dissertation submitted by Stephen Warr at the conclusion of his
`
`studies at the University of Cambridge, in July 1996. Dr. Warr worked in Prof.
`
`Crossland’s group at Cambridge under the supervision of Dr. Robert Mears. Warr
`
`
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`17
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`Inter Partes Review of USPN 8,335,033
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`Thesis at x. Chapter 5 of Warr Thesis discloses “a single-mode FLC- SLM
`
`crossbar architecture for interconnecting large arrays of input and output fibres. An
`
`array of dynamic holograms can be used to achieve an arbitrary routeing pattern
`
`between N inputs and M outputs, and two methods of re-entering the fibre network
`
`are considered.” Warr Thesis at 4.
`
`A PHOSITA would have been motivated to combine the Parker Thesis with
`
`the Warr Thesis for a number of independent reasons. Fundamentally, the two
`
`theses cover highly related subject matter. Each discloses the use of an adaptive
`
`optical routing module that uses a holographic liquid crystal spatial light
`
`modulator to switch, route, filter, and analyze light signals. Parker Thesis at 2, 8-9,
`
`11-12, 95-97; Warr Thesis at 2-4, 36, 42, 83-84, 95. As a result, any element,
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`technique or other solution implemented by the routing modules described in one
`
`thesis would be expected to yield the same predictable result if transplanted to the
`
`routing modules described in the other thesis. For example, each thesis describes
`
`techniques that were well known to a PHOSITA for designing holograms,
`
`minimizing crosstalk, and dealing with device misalignment. Compare Parker
`
`Thesis at 24-46, 98, with Warr Thesis at 43-44, 58, 118. Because of the similarity
`
`between the devices disclosed in each thesis, a PHOSITA would expect each of
`
`these well-known techniques could be applied to the devices of the other thesis.
`
`With respect to independent claims 1 and 76 for example, a PHOSITA
`
`
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`18
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`Inter Partes Review of USPN 8,335,033
`
`would have been motivated to combine the sub-hologram switch of Warr Thesis
`
`with the reflective SLM space-wavelength switch of the Parker Thesis based on
`
`the teachings of the references, common sense and knowledge generally available
`
`to a PHOSITA, as the proposed combination would merely be substituting known
`
`elements to yield predictable results. See, e.g., [1c]4. Parker Thesis proposed a
`
`system for routing multiple wavelengths with multiple spatial periods. Parker
`
`Thesis at 62, 64. Warr Thesis disclosed a sub-hologram switch and disclosed
`
`using these principles with a grating in a space-wavelength switch. Warr Thesis at
`
`89, 107, 109. Thus, a PHOSITA would have been motivated to the sub-hologram
`
`routing system disclosed in Warr Thesis in the reflective SLM routing system
`
`disclosed in Parker Thesis with, in order to more efficiently and effectively route
`
`multiple wavelengths. Additionally, Parker Thesis describes that a space-
`
`wavelength switch may be constructed with a reflective LCOS SLM. Parker
`
`Thesis at 97. Warr Thesis states at the end of Chapter 5 that it may be desirable to
`
`modify the crossbar architecture “to introduce wavelength dependence in order to
`
`create a combined space-wavelength router.” Warr Thesis at 107. Warr Thesis
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