UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FUJITSU NETWORK COMMUNICATIONS, INC.
`Petitioner
`
`v.
`
`THOMAS SWAN & CO. LTD.
`Patent Owner
`
`Inter Partes Review Case No. IPR2014-01383
`
`Patent 7,145,710
`
`CORRECTED PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,145,710 UNDER 35 U.S.C. §§ 311-319 AND
`37 C.F.R. §§ 42.1-.80, 42.100-.123
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FUJITSU NETWORK COMMUNICATIONS, INC.
`Petitioner
`
`v.
`
`THOMAS SWAN & CO. LTD.
`Patent Owner
`
`Inter Partes Review Case No. IPR2014-01383
`
`Patent 7,145,710
`
`CORRECTED PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,145,710 UNDER 35 U.S.C. §§ 311-319 AND
`37 C.F.R. §§ 42.1-.80, 42.100-.123
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`INTRODUCTION ......................................................................................... 1
`
`II. MANDATORY NOTICES AND FEES ....................................................... 4
`
`III. CERTIFICATION OF GROUNDS FOR STANDING ................................ 5
`
`IV. BACKGROUND ........................................................................................... 6
`
`A. Overview of the ‘710 Patent ................................................................ 6
`
`V.
`
`CLAIM CONSTRUCTION ........................................................................... 8
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART .........................................14
`
`VII. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ................14
`
`A.
`
`Summary of Grounds for Challenge ..................................................16
`
`B. Motivation to Combine References ...................................................16
`
`C. Ground 1: Claims 1 and 11 are anticipated by Warr Thesis .............17
`
`D. Ground 2: Claim 3 would have been obvious by the combination
`Warr Thesis and Tan ..........................................................................28
`
`E.
`
`F.
`
`Ground 3: Claim 10 would have been obvious by the combination of
`Warr Thesis and Tan and Crossland Patent .......................................35
`
`Ground 4: Claims 3 and 10 would have been obvious by the
`combination of Warr Thesis and McManamon .................................40
`
`G. Ground 5: Claim 13 would have been obvious by the combination of
`Warr Thesis and Tomlinson ..............................................................51
`
`VIII. CONCLUSION ............................................................................................57
`
`ATTACHMENT A: ...............................................................................................59
`
`ATTACHMENT B: APPENDIX OF EXHIBITS .................................................60
`
`
`i
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Inter Partes Review of USPN 7,145,710
`
`Petitioner Fujitsu Network Communications, Inc. (“FNC”) requests inter
`
`partes review of Claims 1, 3, 10, 11 and 13 (“Petitioned Claims”) of U.S. Patent
`
`No. 7,145,710 (“the ‘710 patent”) (Ex. 1001), assigned on the face of the patent to
`
`Thomas Swan & Co. Ltd. (“Thomas Swan”). The Petitioned Claims of the ‘710
`
`patent are generally directed to “optical devices” that use a spatial light modulator
`
`(“SLM”) comprising a two-dimensional array of pixels or “phase modulating
`
`elements” to control the direction of incident light beams. The technology claimed
`
`in the ‘710 patent has applications in fiber optic communications. The original
`
`patent application that led to the issuance of the ‘710 patent was filed in the United
`
`Kingdom on September 3, 2001.
`
`Melanie Holmes (“Holmes”) is listed as the sole purported inventor for the
`
`‘710 patent and the priority application. As explained further below, the subject
`
`matter claimed in the ‘710 patent was developed and published by researchers at
`
`the University of Cambridge (“Cambridge”) prior to the filing of the 2001 priority
`
`application. For about a decade prior to the filing of the priority application,
`
`researchers at Cambridge, working in Professor William Crossland’s Photonics &
`
`Sensors group, investigated and published research relating to the use of liquid
`
`crystal SLMs in optical communication and other applications. This work is well
`
`documented and described in numerous publications emanating from Dr.
`
`
`
`1
`
`
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`Crossland’s group in the 1990s. See Ex. 1002, http://www-
`
`g.eng.cam.ac.uk/photonics_sensors/ people/bill-crossland.htm (biography of Prof.
`
`Crossland: “Bill Crossland held the position of Group Leader of the Photonics &
`
`Sensors Group . . . from 1992 . . . until his retirement at the end of September
`
`2009. . . He is generally regarded as the founding father of liquid crystal over
`
`silicon (LCOS) technologies.”) and Ex. 1003, http://www-
`
`g.eng.cam.ac.uk/photonics_sensors/publications/index.htm (providing an
`
`exemplary listing of publications from the Photonics & Sensors group).
`
`In the years prior to the filing of the U.K. priority application, Holmes
`
`collaborated with Cambridge on the development and use of liquid crystal SLMs
`
`for optical beam routing and other applications. Holmes completed her Ph.D.
`
`requirements in 1992 and shortly thereafter began collaborating with Dr. Crossland
`
`who was working with doctoral candidates on research relating to liquid crystal
`
`SLMs for use in optical routing (Ex. 1004) (article entitled “Low Crosstalk
`
`Devices for Wavelength-Routed Networks,” by M. J. Holmes, W. Crossland et al.,
`
`IEE Colloquium on Guided Wave Optical Signal Processing, IEE Dig. No. 95-128
`
`London, UK indicating collaboration with the Crossland group in at least 1995);
`
`(Ex. 1005) (article entitled “Holographic Optical Switching: The ‘ROSES’
`
`Demonstrator,” by W. A. Crossland, K.L. Tan, M.J. Holmes et al., Journal of
`
`Lightwave Technology, Vol. 18, No. 12, Dec. 2000, at 1845-54, indicating
`
`
`
`2
`
`
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`collaboration with the Crossland group continued through at least 2001). One of
`
`those doctoral candidates was Stephen T. Warr. This doctoral candidate focused on
`
`research relating to liquid crystal SLMs for use in optical routing that culminated
`
`in a Ph.D. dissertation published by Cambridge. This Ph.D. dissertation forms the
`
`basis of this petition.
`
`As explained further below, it is apparent that the claimed invention of the
`
`‘710 patent was discovered and disclosed, prior to the filing of Holmes’s U.K.
`
`priority application, through the research and publication of Dr. Warr. A review
`
`of the publication history of the Cambridge group preceding the priority
`
`application makes clear that Holmes worked closely with the Cambridge
`
`researchers—sometimes even in the same laboratory using the same devices—and
`
`the researchers openly shared their ideas with her. In addition, they frequently cite
`
`each other’s work in their publications. Thus, by the time Holmes filed her U.K.
`
`priority application, a person having ordinary skill in the art (“PHOSITA”) would
`
`have understood that the alleged inventions claimed in the ‘710 patent were
`
`rendered obvious by the prior work of the Cambridge researchers. Particularly in
`
`view of the working environment at Cambridge and the long history of cross-cited
`
`publications, express suggestions in the Cambridge researchers’ publications
`
`would have strongly motivated a PHOSITA to combine the Cambridge
`
`publications relied upon in this petition. Moreover, the Petitioned Claims do not
`
`
`
`3
`
`
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`represent innovation over the prior art, but instead would be no more than the
`
`result of the ordinary skill and common sense of a PHOSITA.
`
`Inter partes review of the Petitioned Claims should be instituted because
`
`this petition shows that there is a reasonable likelihood that Petitioners will prevail
`
`on the Petitioned Claims. Each limitation of each Petitioned Claim is disclosed by
`
`and/or obvious to one of ordinary skill in the art in light of the prior art discussed
`
`herein. Claims 1, 3, 10, 11 and 13 of the ‘710 patent should be found unpatentable
`
`and canceled.
`
`II. MANDATORY NOTICES AND FEES
`
`
`
`Real Parties-in-Interest: Fujitsu Network Communications, Inc. is the real
`
`party-in-interest in this petition.
`
`Related Matters: The following matters may affect or be affected by a
`
`decision in this proceeding: Thomas Swan & Co. Ltd. v. Finisar Corp. & Fujitsu
`
`Network Communications, Inc., No. 2:13-cv-178 (E.D. Texas); and Inter Partes
`
`Review Case No. IPR2014-00460 (directed to the ‘710 patent). Additionally,
`
`Petitioner is filing additional petitions for inter partes review against three other
`
`patents asserted in the above litigation, all of which are related to the ‘710 patent,
`
`U.S. Pat. Nos. 8,335,033; 7,664,395; and 8,089,683. Moreover, each of the
`
`following Inter Partes Review Case Nos. are directed to patents within the same
`
`family as the ‘710 patent: IPR2014-00461; IPR2014-00462, IPR2014-00465.
`
`
`
`4
`
`
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`Counsel: Lead counsel in this case is Christopher Chalsen (PTO Reg. No.
`
`30,936); backup counsel is Nathaniel Browand (PTO Reg. No. 59,683) and Suraj
`
`Balusu (PTO Reg. No. 65,519). A power of attorney accompanies this Petition.
`
`Service Information: Christopher E. Chalsen, cchalsen@milbank.com;
`
`Nathaniel T. Browand, nbrowand@milbank.com; Suraj Balusu,
`
`sbalusu@milbank.com MILBANK, TWEED, HADLEY & McCLOY LLP,
`
`1 Chase Manhattan Plaza, New York, New York 10005
`
`Tel: (212) 530-5380
`
`Fax: (212) 822-5380
`
`Please direct all correspondence to lead counsel at the above address.
`
`Petitioner consents to email service at: cchalsen@milbank.com,
`
`nbrowand@milbank.com, and sbalusu@milbank.com.
`
`Payment: Under 37 C.F.R § 42.103(a), the Office is authorized to charge the
`
`fee set forth in 37 C.F.R. § 42.15(a) to Deposit Account No. 133250 as well as any
`
`additional fees that might be due in connection with this Petition.
`
`III. CERTIFICATION OF GROUNDS FOR STANDING
`
`Petitioner certifies under 37 C.F.R § 42.104(a) that the patent for which
`
`review is sought is available for inter partes review and that Petitioner is not
`
`barred or estopped from requesting an inter partes review challenging the patent
`
`claims on the grounds identified in this Petition.
`
`5
`
`
`
`
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`IV. BACKGROUND
`
`A. Overview of the ‘710 Patent
`
`
`
`
`
`Summary: The ‘710 patent is “relate[d] to the general field of controlling
`
`one or more light beams by the use of electronically controlled devices.” (Ex.
`
`1001 at 1:18-20). The central element of the claimed devices is a particular type of
`
`“spatial light modulator” or “SLM.” The SLM is made up of a two-dimensional
`
`array of “phase modulating elements” – e.g. liquid crystal pixels. (Ex. 1001 at
`
`Abstract; 2:53-55; 3:35-36; 6:15-16). The specification describes grouping the
`
`phase modulating elements such that light beams that are incident on particular
`
`groups are controllable independently of each other. (Ex. 1001 at 2:56-68). The
`
`specification further suggests that the size, shape and position of groups of those
`
`phase- modulating elements need not be fixed and can, if need be, be varied. (Ex.
`
`1001 at 11:48-50).
`
`The specification states that the SLM is able to modify, in a controlled
`
`manner, the direction, power, focus, aberration, or beam shape of a light beam.
`
`(Ex. 1001 at 11:60-65). That modification is achieved through the display of a
`
`“hologram” at each group of pixels. (Ex. 1001 at 11:51-55). A “hologram” is
`
`displayed by applying voltages to each pixel of the group. (Ex. 1001 at 22:44-46).
`
`The applied voltage affects the orientation of the liquid crystal. (Ex. 1001 at 12:25-
`
`29). When the light strikes the liquid crystal, the phase of the light at each pixel is
`
`
`
`6
`
`
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`“modulated” or modified based on the orientation of the liquid crystal. (Ex. 1001 at
`
`12:38-41).
`
`Cited Art: Except for a counterpart of the Crossland Patent (defined below),
`
`none of the references relied on in this Petition were considered during the original
`
`prosecution of the ’710 patent.
`
`Prosecution History: The ’710 patent is part of a family of patents that
`
`originated from UK Patent Application No. 0121308.1, filed on September 3,
`
`2001. That family includes U.S. Patent Nos. 7,664,395; 8,089,683; and 8,335,033.
`
`PCT Application No. PCT/GB02/04011 was then filed on September 2, 2002.
`
`Upon attaining national stage in the United States on September 10, 2004, U.S.
`
`Patent Application No. 10/487,810 was prosecuted. The first office action on
`
`March 7, 2006 rejected no claims on the basis of prior art, but instead issued a
`
`restriction requirement. (Ex. 1013, March 7, 2006 Office Action at 2-3). The
`
`applicant elected claims 1-14 of the original application, which were allowed by
`
`the PTO without modification on May 11, 2006. (Ex. 1013, May 11, 2006 Notice
`
`of Allowability).
`
`Claims of the ’710 Patent: Claim 1 of the ’710 patent is exemplary and
`
`reads:
`
`1. A method of operating an optical device comprising an SLM
`
`having a two-dimensional array of controllable phase-modulating
`
`elements, the method comprising
`
`
`
`7
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`
`
`delineating groups of individual phase-modulating elements;
`
`selecting, from stored control data, control data for each group of
`
`phase-modulating elements;
`
`generating from the respective selected control data a respective
`
`hologram at each group of phase-modulating elements; and
`
`varying the delineation of the groups and/or the selection of
`
`control data whereby upon illumination of said groups by respective
`
`light beams, respective emergent light beams from the groups are
`
`controllable independently of each other.
`
`V. CLAIM CONSTRUCTION
`
`
`
`
`
`
`
`This Petition shows that the Petitioned Claims of the ‘710 patent (Ex. 1001)
`
`are unpatentable when the claims are given their broadest reasonable interpretation
`
`in light of the specification, which is further supported by patentee’s allegations in
`
`the co-pending litigation.1 The constructions set forth below are provided for
`
`purposes of this inter partes review only.
`
`
`
`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.
`
`
`
`8
`
`
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`Because the named inventor Holmes was a former collaborator of Dr. Warr
`
`and a member of the Crossland group at Cambridge, and in fact learned about his
`
`work through her many interactions with him at Cambridge, the ‘710 patent shares
`
`with the asserted prior art references vastly common terminology concerning the
`
`same subject matter. As a result, there are few terms in the Petitioned Claims that
`
`require construction, as most of the claim terms can be found verbatim in the
`
`asserted prior art in the very same context.
`
`The broadest reasonable construction for the term “controllable phase-
`
`modulating elements” in light of the specification is “components, such as pixels,
`
`which can change the phase of incident light under certain conditions created by
`
`circuitry, such as application of voltage.” This definition is consistent with the use
`
`of the term “controllable phase-modulating elements” in the specification of the
`
`‘710 patent. In particular, the specification makes clear that there needs to be a
`
`large number of phase-modulating elements for the contemplated optical device to
`
`operate. See, e.g., Ex. 1001 at 11:43-48. The specification also discloses
`
`embodiments where the phase-modulating elements are pixels. See, e.g., Ex. 1001
`
`at 40:12-14. The specification also provides details of the operation and function of
`
`the controllable phase modulating elements, consistent with the proposed
`
`construction. See, e.g., Ex. 1001 at 13:54-14:13.
`
`The district court has construed the term “control data” to mean “data used
`
`
`
`9
`
`
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`to control an element.” Ex. 1006 at 31. The broadest reasonable construction for
`
`the term “control data” in light of the specification is “data used to control an
`
`element.” See, e.g., Ex. 1001 at 4:19-29. To the extent that the Patent Owner may
`
`contend that the term “control data” should be construed to mean “data from which
`
`a hologram is generated,” Petitioner disagrees because such a construction
`
`excludes any notion of “control.” The specification also makes clear that control
`
`data encompasses other functions. See, e.g., Ex. 1001 at 15:36-42. Furthermore,
`
`inserting this possible construction of “data from which a hologram is generated”
`
`into the language of claim 1 would render the claim element confusing:
`
`“generating from the respective selected [data from which a hologram is generated]
`
`a respective hologram at each group of phase-modulating elements.” See also Ex.
`
`1006 at 31. Petitioner submits that its proffered construction avoids this concern,
`
`as the claim element would read: “generating from the respective selected [data
`
`used to control an element] a respective hologram at each group of phase-
`
`modulating elements.”
`
`The district court has construed the term “hologram” to mean “a phase
`
`modulation pattern used to control light incident upon the SLM.” Ex. 1006 at 18.
`
`The broadest reasonable construction for the term “hologram” in light of the
`
`specification is that the term is indefinite because it is not clear in the specification
`
`and is context dependent in the industry. See, e.g., Ex. 1001 at 15:24-27 (“The
`
`
`
`10
`
`
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`signal processing effects are usually realised by a method equivalent to
`
`‘multiplying’ the initial routing and/or corrective hologram exp j (φ0(u)+ φ1(u))
`
`by a further hologram exp j φ2(u) in which φ2(u) is non-linear and oscillatory.”);
`
`16:6-8 (“Referring to FIG. 3, a routing device 25 includes two SLMs 20, 21 which
`
`display holograms for routing light 1, 2 from an input fibre array 3,4 to an output
`
`fibre array 5, 6.”); 7:19-24 (“In many routing applications, two SLMs are used in
`
`series, and the displayed information on the one has the inverse effect to the
`
`information displayed on the other. Since the information represents phase
`
`change data, it may be regarded as a hologram.”); Ex. 1016, Timothy J. Drabik,
`
`“Optoelectronic Integrated Systems Based on Free-Space Interconnects with an
`
`Arbitrary Degree of Space Variance,” PROCEEDINGS OF THE IEEE, Vol. 82, No. 11,
`
`November 1994, p. 1597 (“For convenience, all elements causing beam deviation
`
`or splitting will be referred to as holograms, in the spirit of [31]1.”).
`
`To the extent that the term “hologram” is not found indefinite, the broadest
`
`reasonable construction of the term is “a set of modulation values for achieving the
`
`desired change in incident light.” See, e.g., Ex. 1001 at 14:6-13 (“In one example
`
`of this operation, the desired phase modulation is expressed modulo 2pi across the
`
`array extent, and the value of the desired modulo-2pi modulation is established at
`
`the centre of each pixel. Then for each pixel, the available level nearest the desired
`
`modulation is ascertained and used to provide the actual pixel voltage. This voltage
`
`
`
`11
`
`
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`is applied to the pixel electrode for the pixel of concern.”); 15:11-15 (“Therefore
`
`the routing phase modulation results in a set of equally spaced diffraction orders.
`
`The greater the number of available phase levels the closer the actual phase
`
`modulation to the ideal value and the stronger the selected diffraction order used
`
`for routing.”).
`
`The district court has construed the term “SLM” or “spatial light
`
`modulator” to mean “a device that modifies a property of light as a function of
`
`time and position across the device.” Ex. 1006 at 14. The broadest reasonable
`
`construction for the term “SLM” or “spatial light modulator” in light of the
`
`specification is “a device that modifies a property of light as a function of time and
`
`position across the device, and is at least somewhat polarisation-independent.”
`
`See, e.g., Ex. 1001 at Fig. 1, 11:60-65 (“Devices embodying the invention act on
`
`light beams incident on the device to provide emerging light beams which are
`
`controlled independently of one another. Possible types of control include control
`
`of direction, control of power, focussing, aberration compensation, sampling and
`
`beam shaping.”); 11:44-48 (“the problems of the prior art can be solved by using a
`
`reflective SLM having a two-dimensional array of phase-modulating elements that
`
`is large in number, and applying a number of light beams to groups of those
`
`phase-modulating elements”). The specification makes clear that the spatial light
`
`modulator of the alleged invention must be polarization insensitive or independent
`
`
`
`12
`
`
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`for the device to work. See, e.g., Ex. 1001 at 11:66-12:1 (“polarisation-
`
`independent multiple phase liquid crystal over silicon spatial light modulators
`
`(SLMs)”). Indeed, the ‘710 patent apparently disclaims any devices that are not
`
`polarisation insensitive/independent. See, e.g., Ex. 1001 at 12:67-13:3 (“The
`
`invention may be applied to other devices, provided they are capable of
`
`multiphase operation and are at least somewhat polarisation independent at the
`
`wavelengths of concern.”). The specification describes several ways of achieving
`
`polarisation independence of the SLM. One disclosed way is use of ferroelectric
`
`liquid crystal (“FLC”) operating in a polarization independent modality. See, e.g.,
`
`Ex. 1001 at 13:6-9 (“Where liquid crystal materials other than ferroelectric are
`
`used, current practice indicates that the use of an integral quarter wave plate
`
`contributes to the usability of multiphase, polarisation-independent SLMs.”).
`
`Another disclosed way is use of a quarter-wave plate that creates polarisation
`
`independence. See, e.g., Ex. 1001 at 4:8-10 (“The SLM may be integrated on a
`
`substrate and have an integral quarter-wave plate whereby it is substantially
`
`polarisation insensitive.”).
`
`The broadest reasonable interpretation of the remaining terms of the
`
`challenged claims should be presumed to take on their ordinary and customary
`
`meanings for purposes of the IPR.
`
`
`
`
`
`13
`
`
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`The level of ordinary skill in the art is evidenced by the references. See In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). A person of ordinary skill in the
`
`art (“PHOSITA”) for this patent would have at least a Ph.D., or equivalent
`
`experience, in optics, physics, electrical engineering, or a related field, including at
`
`least three years of experience designing, constructing, and/or testing optical
`
`systems. Ex. 1007 (hereinafter “Drabik Decl.”) at ¶ 72. For purposes of this
`
`petition, FNC relies on the September 3, 2001 priority date listed on the face of the
`
`‘710 patent for the person of ordinary skill in the art analysis.2
`
`VII. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`
`
`
`Under 37 C.F.R §§ 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner challenges
`
`claims 1, 3, 10, 11 and 13 of the ‘710 patent. Petitioner requests this relief in view
`
`of the following references:
`
`
`
`
`
`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.
`
`
`
`14
`
`
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`Exhibit
`
`Description
`
`Ex. 1008 “Free Space Switching for Optical
`Fibre Networks,” Stephen Thomas
`Warr (“Warr Thesis”)
`Ex. 1009 “Dynamic holography for optical
`interconnections. II. Routing
`holograms with predictable location
`and intensity of each diffraction
`order,” J. Opt. Soc. Am. A, vol. 18,
`no. 1, p. 205 (“Tan”)
`Ex. 1010 U.S. Patent Application Publication
`No. 2001/0050787 (“Crossland
`Patent”)
`
`Ex. 1011 “Optical Phased Array Technology,”
`Paul F. McManamon, et al.,
`Proceedings of the IEEE, vol. 84, no.
`2, Feb. 1996 (“McManamon”)
`
`Ex. 1012 U.S. Patent No. 6,549,865 to
`Tomlinson (“Tomlinson”)
`
`
`
`
`Publication
`or Filing
`July 1996
`
`Type of
`Prior Art3
`§ 102(b)
`
`Jan. 2001
`
`§ 102(a)
`
`May 18, 2001 § 102(e)
`
`February 1996 § 102(b)
`
`Mar. 15, 2001 § 102(e)
`
`A full list of exhibits relied on in this petition is included as Attachment B.
`
`The Warr Thesis is a printed publication under 35 U.S.C. § 102(b). The Warr
`
`Thesis was indexed and shelved in the Cambridge University library by at least
`
`one year prior to the U.K. Priority Application date of September 3, 2001. See
`
`Drabik Decl. at ¶ 104; see generally Ex. 1015, Clarke Decl.
`
`
`
`
`
`3 The ’710 patent issued prior to the America Invents Act (the “AIA”).
`
`Accordingly, Petitioner has used the pre-AIA statutory framework to refer to the
`
`prior art.
`
`
`
`15
`
`
`
`A.
`
`Summary of Grounds for Challenge
`
`Inter Partes Review of USPN 7,145,710
`
`
`
`
`
`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
`§ 102
`
`Index of References
`Warr Thesis
`
`
`
`
`
`2
`
`3
`
`4
`5
`
`§ 103
`
`§ 103
`
`§ 103
`§ 103
`
`Claims
`1, 11
`
`3
`
`10
`
`Warr Thesis in view of Tan
`
`Warr Thesis in view of Tan and
`Crossland Patent
`
`Warr Thesis in view of McManamon
`Warr Thesis in view of Tomlinson
`
`3, 10
`13
`
`Claims 1, 3, 10, 11 and 13 of the ‘710 patent are rendered anticipated and/or
`
`obvious 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.” His declaration makes it clear that all the
`
`elements of all the challenged claims lack invention. Drabik Decl. at ¶¶ 105-159.
`
`B. Motivation to Combine References
`
`
`
`FNC submits that no showing of specific motivations to combine the
`
`respective references in Grounds 2-5 (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
`
`
`
`16
`
`
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`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
`
`identified below.
`
`C. Ground 1: Claims 1 and 11 are anticipated by Warr Thesis
`
`
`
`Claims 1 and 11 of the ‘710 patent are anticipated by Warr Thesis.
`
`Warr Thesis, is a printed publication under 35 U.S.C. § 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
`
`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.
`
`The following chart and discussion herein show, as supported by Dr.
`
`Drabik, that the claimed subject matter is anticipated by Warr Thesis. Drabik
`
`Decl. at ¶¶ 108-113.
`
`
`
`17
`
`
`
`
`
`Petitioned
`Claims of
`the ‘710
`Patent
`[1pre] A
`method of
`operating an
`optical
`device
`comprising
`an SLM
`having a two-
`dimensional
`array of
`controllable
`phase-
`modulating
`elements, the
`method
`comprising
`
`Inter Partes Review of USPN 7,145,710
`
`
`
`Warr Thesis discloses a method of operating an optical device
`comprising an SLM having a two-dimensional array of controllable
`phase-modulating elements.
`
`Warr Thesis discloses “the use of programmable computer
`generated holograms (CGHs) displayed on a ferroelectric liquid
`crystal (FLC) spatial light modulator (SLM). The SLM provides
`fast 2-dimensional binary modulation of coherent light and acts as
`a dynamically reconfigurable diffraction pattern.” Warr Thesis at
`viii.
`
`Warr Thesis discloses that “SLMs typically consist of an array of
`individually controllable pixels.” Warr Thesis at 7.
`
`Warr Thesis discloses that “[t]o obtain maximum light efficiency,
`the SLM pixels should only modulate the phase of the incident
`Gaussian beam and not the intensity.” Warr Thesis at 13.
`
`Warr Thesis discloses a SLM where the sub-holograms on the
`SLM are comprised of two-dimensional controllable elements.
`Warr Thesis states “[e]ach of the four beams was deflected by a
`separate 80x80 pixel region of the 2DX320IR SLM.” Warr Thesis
`at 103. Additionally, Figure 5.4 (shown below) illustrates that the
`sub-holograms comprised of pixels are two-dimensional. Warr
`Thesis at 89.
`
`
`
`18
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`
`
`
`
`Petitioned
`Claims of
`the ‘710
`Patent
`
`
`
`Warr Thesis at 89. See Drabik Decl. at ¶ 110[1pre].
`Warr Thesis discloses delineating groups of individual phase-
`modulating elements.
`
`Warr Thesis discloses that “[t]he SLM display area is then
`divided into distinct sub-holograms, such that every input source
`is deflected by a different CGH.” Warr Thesis at 89.
`
`[1a]
`delineating
`groups of
`individual
`phase-
`modulating
`elements;
`
`Warr Thesis at 89.
`
`Warr Thesis discloses that “[t]he use of an FLC-SLM as a
`
`
`
`
`
`19
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`
`
`
`
`Petitioned
`Claims of
`the ‘710
`Patent
`
`diffractive component in a crossbar switch was first suggested by
`O'Brien [38, 95]. The crossbar takes the form of figure 5.2, where
`an array of parallel single-mode input fibres are arranged in front
`of the SLM. Each Gaussian beam is separately collimated by a lens
`to illuminate some portion of the SLM plane. The SLM must be
`divided into N sub-hologram routeing areas, such that each region
`is filled with a distinct and independently controlled CGH.” Warr
`Thesis at 83-84.
`
`Warr Thesis discloses that “[e]ach of the four beams was deflected
`by a separate 80x80 pixel region of the 2DX320IR SLM....Figure
`5.11 is a camera image of the array of Gaussian beams that were
`incident upon the SLM. The figure also shows the four 80x80 pixel
`holograms that were displayed on the 2DX320IR device during the
`experiment.” Warr Thesis at 103.
`
`[1b]
`selecting,
`from stored
`control data,
`control data
`for each
`group of
`phase-
`modulating
`elements;
`
`Warr Thesis at 103. See Drabik Decl. at ¶ 110[1a].
`Warr Thesis discloses selecting, from stored control data, control
`data for each group of phase-modulating elements and generating
`from the respective selected control data a respective hologram at
`each group of phase-modulating elements.
`
`Warr Thesis discloses that “[e]ssentially backplane SLMs operate
`as optically-readable memory.…Two binary storage schemes are
`well known in conventional silicon memory technology, and these
`have been incorporated into EASLM designs. The dynamic RAM
`pixel circuitry [15], figure 2.7(a), has a single transistor per pixel
`and the 1-bit binary memory state is stored as a capacitive charge
`polarity on the actual mirror contact.” Warr Thesis at 19-20.
`
`
`
`20
`
`
`
`Inter Partes Review of USPN 7,145,710
`
`
`
`
`
`Petitioned
`Claims of
`the ‘710
`Patent
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
