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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`FUJITSU NETWORK COMMUNICATIONS, INC.
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`Inter Partes Review Case No. IPR2015-00726
`Patent No. RE42,368
`
`CORRECTED PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. RE42,368 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
`
`

`

`
`
`I.
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`TABLE OF CONTENTS
`
`INTRODUCTION ......................................................................................... 1
`
`II. MANDATORY NOTICES AND FEES ....................................................... 2
`
`III. CERTIFICATION OF GROUNDS FOR STANDING ................................ 3
`
`IV. BACKGROUND ........................................................................................... 4
`
`V.
`
`CLAIM CONSTRUCTION ........................................................................... 8
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART .........................................13
`
`VII. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ................13
`
`A.
`
`B.
`
`C.
`
` Summary of Grounds for Challenge.................................................14
`
` Motivation to Combine References ..................................................15
`
` Ground 1: Claims 1-6, 9-12 and 15-22 Are Anticipated by Smith ..16
`
`D. Ground 2: Claims 1, 2, 5, 6, 9-12 and 15-21 would have been
`obvious by the combination of Bouevitch and Carr ..........................24
`
`E.
`
`F.
`
`Ground 3: Claims 1-4, 17 and 22 would have been obvious by the
`combination of Bouevitch and Sparks ...............................................47
`
`Ground 4: Claims 1-6, 9-12 and 15-22 would have been obvious by
`the combination of Smith and Tew ...................................................57
`
`G. Ground 5: Claims 1, 2, 5, 6, 9-12 and 15-21 would have been
`obvious by the combination of Bouevitch, Carr and Tew .................59
`
`H. Ground 6: Claims 1-4, 17 and 22 would have been obvious by the
`combination of Bouevitch, Sparks and Tew .....................................59
`
`VIII. CONCLUSION ............................................................................................60
`
`ATTACHMENT A: ...............................................................................................61
`
`ATTACHMENT B: APPENDIX OF EXHIBITS .................................................62
`
`
`
`
`i
`
`

`

`
`
`
`
`
`I.
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`
`INTRODUCTION
`Petitioner Fujitsu Network Communications, Inc. (“FNC” or “Petitioner”)
`
`requests inter partes review of claims 1-6, 9-12, and 15-22 (“Petitioned Claims”)
`
`of U.S. Patent No. RE42,368 (“the ‘368 patent”) (Ex. 1001), assigned on its face to
`
`Capella Photonics, Inc. (“Capella”).
`
`This Petition relies on two primary references: U.S. Patent No. 6,798,941
`
`(“Smith”) (Ex. 1009) and U.S. Patent No. 6,498,872 (“Bouevitch”) (Ex. 1002).
`
`Smith, which was not before the Patent Office, renders all of the Petitioned
`
`Claims anticipated or obvious in combination with U.S. Patent Publication No.
`
`2002/0081070 (“Tew”) (Ex. 1007). Notably, Smith discloses the precise features
`
`that Capella relied upon to distinguish over the prior art it identified in its reissue
`
`application.
`
`Bouevitch was before the Patent Office during the reissue prosecution, but
`
`Capella admitted that its original claims were overbroad and invalid over
`
`Bouevitch in view of one or more of three additional references. Although Capella
`
`amended its claims to purportedly overcome their deficiency, the amended claims
`
`fail to distinguish over the prior art references identified herein as Bouevitch in
`
`combination with U.S. Patent No. 6,442,307 (“Carr”) (Ex. 1005) or U.S. Patent
`
`No. 6,625,340 (“Sparks”) (Ex. 1006) and optionally Tew render all of the
`
`Petitioned Claims obvious.
`
`
`
`1
`
`

`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`The Petitioned Claims are currently being challenged in view of the
`
`combination of Bouevitch and Smith in IPR2014-01166. This Petition presents
`
`different grounds and prior art references than those addressed in that challenge.
`
`Inter partes review of the Petitioned Claims should be instituted because this
`
`petition shows that there is a reasonable likelihood that Petitioner will prevail on
`
`the Petitioned Claims. Each limitation of each Petitioned Claim is disclosed by
`
`and/or obvious to a person having ordinary skill in the art (“PHOSITA”) in light of
`
`the prior art discussed herein. Claims 1-6, 9-12, and 15-22 of the ‘368 patent
`
`should be found unpatentable and canceled.
`
`
`
`II. MANDATORY NOTICES AND FEES
`Real Parties-in-Interest: Petitioner Fujitsu Network Communications, Inc.
`
`and Fujitsu Limited are the real parties-in-interest in this petition.
`
`Related Matters: Capella has asserted the ‘368 patent in the following
`
`actions: Capella Photonics, Inc. v. Cisco Systems, Inc., No. 3:14-cv-03348;
`
`Capella Photonics, Inc. v. Fujitsu Network Communications, Inc., No. 3:14-cv-
`
`03349; Capella Photonics, Inc. v. Tellabs Operations, Inc., No. 3:14-cv-03350;
`
`Capella Photonics, Inc. v. Ciena Corporation, No. 3:14-cv-03351 (collectively,
`
`“Capella Litigation”). Claims 1-6, 9-12, and 15-22 of the ‘368 patent are asserted
`
`in the Capella Litigation. Petitioner is also filing a petition for inter partes review
`
`against U.S. Patent No. RE42,678, which is the other patent asserted in the Capella
`
`
`
`2
`
`

`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`Litigation and is related to the ‘368 patent. Inter partes review No. 2014-01166 is
`
`directed to the ‘368 Patent, and inter partes review No. 2014–01276 is directed to
`
`U.S. Patent No. RE42,678.
`
`Counsel: Lead counsel in this case is Christopher E. Chalsen (PTO Reg. No.
`
`30,936); backup counsel is Lawrence T. Kass (PTO Reg. No. 40,671), Nathaniel T.
`
`Browand (PTO Reg. No. 59,683) and Suraj K. Balusu (PTO Reg. No. 65,519). A
`
`power of attorney accompanies this Petition.
`
`Service Information: Christopher E. Chalsen, cchalsen@milbank.com;
`
`Lawrence T. Kass, lkass@milbank.com; Nathaniel T. Browand,
`
`nbrowand@milbank.com; Suraj K. 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,
`
`lkass@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
`
`
`
`3
`
`

`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`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.
`
`IV. BACKGROUND
`Summary: Fiber-optic communication uses light to carry information over
`
`optical fibers. Originally, fiber-optic systems used one data channel per fiber. To
`
`increase the number of channels carried by a single fiber, wavelength division
`
`multiplexing (“WDM”) was developed. WDM is a type of optical communication
`
`that uses different wavelengths of light to carry different channels of data. WDM
`
`combines (multiplexes) multiple individual channels onto a single fiber of an
`
`optical network. WDM was known before the ‘368 patent’s priority date. E.g., Ex.
`
`1002 at 1:18-21.
`
`At different points in a fiber network, some of the individual channels may
`
`be dropped from the fiber, for example when those channels are directed locally
`
`and need not be passed further down the fiber network. At these network points,
`
`other channels may also be added into the fiber for transmission onward to other
`
`portions of the network. To handle this add/drop process, optical add-drop
`
`multiplexers (OADMs) were developed. OADMs are used to insert channels onto,
`
`pass along, and drop channels from an optical fiber without disrupting the overall
`
`traffic flow on the fiber. Ex. 1001 at 1:51-58. OADMs were known before the
`
`
`
`4
`
`

`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`‘368 patent’s priority date. E.g., Ex. 1002 at 1:25-30.
`
`Configurable OADMs (“COADMS”) and reconfigurable OADMs
`
`(“ROADMs”) are controllable to dynamically select which wavelengths to add,
`
`drop, or pass through. E.g., Ex. 1004 at 904-05. These types of devices were
`
`known in the art prior to the ‘368 patent’s priority date. E.g., id.; Ex. 1002 at
`
`Abstract, 5:15-20.
`
`ROADMs operate by separating an input light beam (comprised of multiple
`
`wavelengths) into constituent beams called channels. Each of these channels is
`
`comprised of a wavelength or range of wavelengths from the input light beam, and
`
`is individually routed by a beam-steering system to a chosen output port of the
`
`ROADM. For example, a first channel can be steered so that it is switched from an
`
`“input” port to an “output” port. Channels switched to the “output” port are passed
`
`along the network. At the same time, a second channel can be switched to a “drop”
`
`port and removed from the main fiber. The ROADM could also add a new channel
`
`to the main fiber through the “add” port to replace the dropped channel. These
`
`add/drop techniques were known prior to the ‘368 patent’s priority date. E.g., Ex.
`
`1004 at 904-05; Ex. 1002 at 14:14-15:18.
`
`In addition to routing channels, ROADMs may also be used to control the
`
`power of the individual channels. Power control which may be referred to as
`
`attenuation is often performed by steering individual beams slightly away from the
`
`
`
`5
`
`

`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`target port such that the misalignment reduces the amount of the channel’s power
`
`that enters the port. Power control (i.e., attenuation) by intentional misalignment in
`
`add/drop switches was known prior to the ‘368 priority date. See, e.g., U.S. Patent
`
`No. 6,442,307 (“Carr”) (Ex. 1005) at 11:13-33.
`
`ROADMs use wavelength selective routers (WSRs), also called wavelength
`
`selective switches (WSSs), to perform switching and power control. See, e.g., id.
`
`at 11:13-20; U.S. Patent No. 6,625,340 (“Sparks”) (Ex. 1006) at Fig. 2b, 5:4-11.
`
`As of the ‘368 patent’s priority date, WSRs/WSSs were known. See, e.g., Ex. 1002
`
`at 14:52-65; Ex. 1004 at 904-05; Ex 1005 at 11:26-33; Ex. 1006 at claim 1.
`
`Different technology may be used to perform the switching and attenuation
`
`functions in WSSs. In one embodiment, WSSs may use small tilting mirrors,
`
`called Micro Electro Mechanical Systems (MEMS) mirrors, which can control the
`
`direction of light beams. Ex. 1005 at 1:13-38; see also Ex. 1001 at 3:54-58. Prior-
`
`art WSSs could tilt the individual mirrors using analog voltage control. Ex. 1005
`
`at 1:13-38; Ex. 1007 at [0030] & [0031]; Ex. 1008 at 9:10-10:3. The orientation of
`
`the MEMS mirrors allows each reflected beam to be directed towards a selected
`
`port. Id. Prior-art MEMS mirrors could be tilted in one or two axes. Id.
`
`Cited Art: Except for Bouevitch, none of the references listed in Section VII
`
`were cited on the face of the ‘368 patent.
`
`Reissue Prosecution and Overview of the Claims: The ‘368 patent originally
`
`
`
`6
`
`

`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`issued as U.S. Patent No. 6,879,750 (“the ‘750 patent”). According to Capella, the
`
`original patent’s claims were invalid over Bouevitch and in further view of three
`
`additional references. Capella expressly acknowledged its error and identified the
`
`two elements that it alleged needed to be added to its claims to support
`
`patentability, namely (1) control in two-dimensions, and (2) use of beam-deflecting
`
`elements for power control:
`
`At least one error upon which reissue is based is
`described as follows: Claim 1 is deemed to be too broad
`and invalid in view of U.S. Patent No. 6,498,872 to
`Bouevitch and further in view of one or more of U.S.
`Patent No. 6,567,574 to Ma [Ex. 1019], U.S. Patent No.
`6,256,430 to Jin [Ex. 1020], or U.S. Patent No. 6,631,222
`to Wagener [Ex. 1021] by failing to include limitations
`regarding the spatial array of beam deflecting elements
`being individually and continuously controllable in two
`dimensions to control the power of the spectral channels
`reflected to selected output ports, as indicated by the
`amendments to Claim 1 in the Preliminary Amendment.
`
`Ex. 1003 at 81-82 (emphases added).
`
`In its efforts to distinguish over Bouevitch, Capella’s first amendment
`
`specified that the beam-deflecting elements must be controllable in two
`
`dimensions. This amendment corresponds to a mirror tilting in two axes rather
`
`than one. As for the second amendment, Patent Owner specified that the beam-
`
`
`
`7
`
`

`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`deflecting elements are used to control the power of the channel reflected to a port.
`
`Capella made almost identical amendments to each of the independent claims.
`
`
`
`V. CLAIM CONSTRUCTION
`This Petition shows that the Petitioned Claims of the ‘368 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.
`
`The Board previously concluded that no express construction was necessary
`
`for the claim terms “in two dimensions,” “continuously controllable,” and “servo-
`
`control assembly,” among other terms. IPR2014-01166, Paper No. 8 at 11-12.
`
`Petitioner agrees that no express construction is required for purposes of this inter
`
`partes review but offers the constructions set forth below only for purposes of this
`
`inter partes review to the extent that the Board finds that an express construction is
`
`required. The challenges presented herein do not change based on whether there
`
`are no express constructions or the constructions set forth below are adopted.
`
` “In two dimensions” (all claims)
`
`A.
`
`In the Capella Litigation, Capella asserted that “in two dimensions” should
`
`be given its plain and ordinary meaning or construed to mean “in two dimensions
`
`(e.g., x and y dimensions).” Ex. 1012 at 15, Joint Claim Construction and
`
`Prehearing Statement. Petitioner disagrees with Capella’s position. In the Capella
`
`Litigation, FNC proposed that “in two dimensions” means “in two axes.” Id.
`
`
`
`8
`
`

`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`The broadest reasonable interpretation (“BRI”) for the phrase “in two
`
`dimensions” in light of the specification is “in two axes.” As claim 1 states the
`
`“beam-deflecting elements” are “controllable in two dimensions.” The ‘368 patent
`
`consistently describes these beam-deflecting elements as various types of mirrors
`
`which are rotated around the two axes in which the mirrors tilt to deflect light. The
`
`specification states, for example, that the beam-deflecting elements “may be
`
`pivoted about one or two axes.” Ex. 1001 at 4:25-26, 9:8-9. The specification also
`
`describes certain embodiments that use two-dimensional arrays of input and output
`
`ports. For these embodiments, the specification describes that the mirrors are
`
`required to tilt along two axes (“biaxially”) to switch the beams between the ports.
`
`Id. at 4:25-29. And further, the ‘368 patent explains how to control power by
`
`tilting the mirrors in two axes. Id. at 4:45-56, 11:5-36.
`
`B.
`
`“Continuously controllable”/“Controlling … continuously” (all
`claims)
`
`In the Capella Litigation, Capella asserted that “continuously” should be
`
`
`
`given its plain and ordinary meaning or construed to mean “actively.” Ex. 1012 at
`
`10. Petitioner disagrees with Capella’s position. In the Capella Litigation, FNC
`
`proposed that “continuously controllable” should be construed as “by analog and
`
`not step-wise control.” Id.
`
`The BRI for “continuously controllable”/“controlling … continuously” in
`
`light of the specification is “under analog control.” This definition is consistent
`
`
`
`9
`
`

`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`with the use of the term in the specification, which describes how “analog” means
`
`are used to effect continuous control of the mirrors. The patent explains that “[a]
`
`distinct feature of the channel micromirrors in the present invention, in contrast to
`
`those used in the prior art, is that the motion…of each channel micromirror is under
`
`analog control such that its pivoting angle can be continuously adjusted.” Ex.
`
`1001 at 4:7-11 (emphasis added). Another passage in the specification states that
`
`“[w]hat is important is that the pivoting (or rotational) motion of each channel
`
`micromirror be individually controllable in an analog manner, whereby the
`
`pivoting angle can be continuously adjusted so as to enable the channel
`
`micromirror to scan a spectral channel across all possible output ports.” Id. at 9:9-
`
`14 (emphasis added). Yet another passage states that “channel micromirrors 103
`
`are individually controllable and movable, e.g., pivotable (or rotatable) under
`
`analog (or continuous) control.” Id. at 7:6-8.
`
`“Beam-deflecting elements” (all claims)
`
`C.
`In the Capella Litigation, Capella asserted that the term “beam-deflecting
`
`elements” should be given its plain and ordinary meaning or construed to mean
`
`“components of a switching array that can be controlled to cause a change in the
`
`path of a light beam.” Ex. 1012 at 38-39. Petitioner disagrees with Capella’s
`
`position. In the Capella Litigation, FNC proposed that the term “beam-deflecting
`
`elements” is indefinite, or alternatively should be construed under § 112(6), or
`
`
`
`10
`
`

`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`alternatively should be construed to mean “moveable mirrors.” Id.
`
`The BRI for the term “beam-deflecting elements” in light of the specification
`
`is “moveable mirrors.” This definition is consistent with the use of the term in the
`
`specification, which describes “micromachined mirrors” and “reflective ribbons (or
`
`membranes)” as types of beam-deflecting elements. Ex. 1001 at 4:22-25.
`
`Specifically, the ‘368 patent states that the “channel micromirrors may be provided
`
`by silicon micromachined mirrors, reflective ribbons (or membranes), or other
`
`types of beam-deflecting elements known in the art. And each micromirror may
`
`be pivoted about one or two axes.” Id. at 9:5-9 (emphasis added). As additional
`
`support for this construction, claims 13 and 14 of the ‘368 patent respectively state
`
`that beam-deflecting elements comprise “micromachined mirrors” and “reflective
`
`membranes.” Id. at 15:1-4. The specification also explains that “[w]hat is
`
`important is that the pivoting (or rotational) motion of each channel micromirror be
`
`individually controllable in an analog manner, whereby the pivoting angle can be
`
`continuously adjusted so as to enable the channel micro-mirror to scan a spectral
`
`channel across all possible output ports.” Id. at 9:9-14.
`
`“Servo-control assembly” (Claims 3 & 4)
`
`D.
`In the Capella Litigation, Capella asserted that “servo-control assembly”
`
`should be given its plain and ordinary meaning or construed to mean “assembly
`
`that controls a device in response to a control signal.” Ex. 1012 at 93. Petitioner
`
`
`
`11
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`

`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`disagrees with Capella’s position. In the Capella Litigation, FNC proposed that
`
`“servo-control assembly” should be construed as “assembly that automatically
`
`takes measurements, and controls a mechanical device on response to those
`
`measurements.” Id.
`
`The BRI for the term “servo control assembly” in light of the specification is
`
`“assembly that uses automatic feedback to control a device in response to a control
`
`signal.” This definition is consistent with the use of the term in the specification,
`
`which equates servo control with use of an automatic feedback loop. For example,
`
`when describing its “servo control,” the ‘368 patent teaches a spectral monitor that
`
`provides “feedback” control for the mirrors. Ex. 1001 at 11:21-24. The ‘368
`
`patent states that “servo-control assembly 440 further includes a processing unit
`
`470, in communication with the spectral monitor 460 and the channel micromirrors
`
`430 of the WSR apparatus 410. The processing unit 470 uses the power
`
`measurements from the spectral monitor 460 to provide feedback control of the
`
`channel micromirrors 430.” Id. at 11:18-24 (emphasis added). In another passage,
`
`the ‘368 patent states that the servo-control assembly “serves to monitor the power
`
`levels of the spectral channels coupled into the output ports and further provide
`
`control of the channel micro mirrors on an individual basis, so as to maintain a
`
`predetermined coupling efficiency of each spectral channel.” Id. at 4:45-52; see
`
`also id. at 11:24-36.
`
`
`
`12
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`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`Moreover, the ‘368 patent figures depicting the “servo-control assembly,”
`
`show a controller which takes measurements of the output power and moves the
`
`mirrors to further adjust that power—a typical feedback loop. Id. at Figs. 4a, 4b.
`
`Also confirming this BRI, the feedback-based control described in the ‘368 patent
`
`achieves the same goals that the patent ascribes to its “servo-control assembly”—
`
`automatic adjustment to account for changing conditions, such as the possible
`
`changes in alignment of the parts within the device. Ex. 1001 at 4:56-67. Extrinsic
`
`evidence confirms that a servo involves an automatic feedback. Ex. 1013 at 617,
`
`Newton’s Telecom Dictionary (17th ed. 2001); Ex. 1014 at 908, Fiber Optics
`
`Standard Dictionary (3rd ed. 1997); Ex. 1015 at 1227, Webster’s New World
`
`College Dictionary (3rd ed. 1997).
`
`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 PHOSITA at the time of the
`
`‘368 patent would have been an engineer or physicist with at least a Master’s
`
`degree, or equivalent experience, in optics, physics, electrical engineering, or a
`
`related field, and at least three years of additional experience designing,
`
`constructing, and/or testing optical systems. Ex. 1016 at ¶¶ 60-62, Drabik Decl.
`
`VII. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Under 37 C.F.R §§ 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner challenges
`
`13
`
`
`
`
`
`

`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`claims 1-6, 9-12, and 15-22 of the ‘368 patent. Petitioner requests this relief in
`
`view of the following references:
`
`
`Exhibit
`
`Description
`
`Filing Date
`
`Ex. 1009 U.S. Patent No. 6,798,941 to Smith
`et al. (“Smith”)
`
`Ex. 1002 U.S. Patent No. 6,498,872 to
`Bouevitch et al. (“Bouevitch”)
`Ex. 1005 U.S. Patent No. 6,442,307 to
`Carr et al. (“Carr”)
`Ex. 1006 U.S. Patent No. 6,625,340 to
`Sparks et al. (“Sparks”)
`Ex. 1007 U.S. Patent Application Publication
`No. 2002/0081070 to Tew (“Tew”)
`
`Type of
`Prior Art
`§ 102(e)
`(Pre-AIA)
`
`September 20, 2001
`– Prior art date of
`September 22, 2000
`December 5, 2000
`
`§ 102(e)
`(Pre-AIA)
`November 3, 2000 § 102(e)
`(Pre-AIA)
`December 29, 1999 § 102(e)
`(Pre-AIA)
`§ 102(e)
`(Pre-AIA)
`
`November 13, 2001
`- Prior art date of
`November 30, 2000
`
`
`
`
`
`A full list of exhibits relied on in this petition is included as Attachment B.
`A.
`Inter partes review is requested on the grounds for unpatentability listed in
`
`Summary of Grounds for Challenge
`
`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. 1016), which explains what the art would have conveyed to a PHOSITA.
`
`
`Ground
`1
`
`35 USC
`§ 102
`
`Smith
`
`Index of References
`
`Claims
`1-6, 9-12 and
`15-22
`1, 2, 5, 6, 9-12
`and 15-21
`
`2
`
`§ 103
`
`Bouevitch in view of Carr
`
`
`
`14
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`

`

`
`
`
`
`Ground
`3
`
`35 USC
`§ 103
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`Index of References
`Claims
`Bouevitch in view of Sparks
`1-4, 17 and 22
`
`4
`
`5
`
`6
`
`§ 103
`
`Smith in view of Tew
`
`§ 103
`
`Bouevitch in view of Carr and Tew
`
`§ 103
`
`Bouevitch in view of Sparks and Tew
`
`1-6, 9-12 and
`15-22
`1, 2, 5, 6, 9-12
`and 15-21
`1-4, 17 and 22
`
`Claims 1-6, 9-12, and 15-22 of the ‘368 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
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`art at the time of this alleged “invention.” Ex. 1016 at ¶¶ 24-59, Drabik Decl. His
`
`declaration makes clear that all the elements of all the Petitioned Claims lack
`
`invention. Ex. 1016 at ¶¶ 96-175, Drabik Decl.
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`
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`B. Motivation to Combine References
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`Petitioner submits that no showing of specific motivations to combine the
`
`respective references in Grounds 2-6 (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.
`
`
`
`15
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`

`

`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`Nevertheless, specific motivations and reasons to combine the references are
`
`identified below.
`
`
`
`C. Ground 1: Claims 1-6, 9-12 and 15-22 Are Anticipated by Smith
`Claims 1-6, 9-12 and 15-22 are anticipated by Smith. See Ex. 1016 at ¶¶ 98-
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`107, Drabik Decl.
`
`Smith is a prior art reference to the ‘368 patent under § 102(e). Smith is
`
`entitled to a prior art date of September 22, 2000, the filing date of its earliest
`
`provisional application (“Smith Provisional”), because the portions of Smith relied
`
`upon are fully supported by the Smith Provisional. See, e.g., In re Giacomini, 612
`
`F.3d 1380 (Fed. Cir. 2010). The analysis below includes citations to both Smith
`
`and the Smith Provisional.
`
`(i)
`
`Claim 1 preamble
`
`The preamble of claim 1 recites an “optical add-drop apparatus comprising.”
`
`Smith discloses an optical add-drop multiplexer. Ex. 1009 at 8:53-59, 12:4-12,
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`Figs. 8-13; Ex. 1010 at 2:9-13, 4:9-17, 7:6-18, Figs. 1-6; Ex. 1016 at ¶ 108.
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`(ii) Claim 1 – input port
`
`The first limitation of claim requires “an input port for an input multi-
`
`wavelength optical signal having first spectral channels.” Smith discloses an input
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`port for a multi-wavelength WDM optical signal. Ex. 1009 at 8:40-59, Figs. 8-13;
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`Ex. 1010 at 4:9-17, 7:6-18, Figs. 1-6; Ex. 1016 at ¶ 109.
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`
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`16
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`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`(iii) Claim 1 – output and other ports
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`The second limitation of claim 1 requires “one or more other ports for
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`second spectral channels; an output port for an output multi-wavelength optical
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`signal.” Smith discloses other ports, such as an add port and a drop port, and an
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`output port. Ex. 1009 at 8:40-59, Figs. 8-13; Ex. 1010 at 4:9-17, 7:6-18, Figs. 1-6;
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`Ex. 1016 at ¶ 110.
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`(iv) Claim 1 – wavelength selective device
`
`The third element of claim 1 requires “a wavelength-selective device for
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`spatially separating said spectral channels.” Smith discloses a diffraction grating
`
`for spatially separating wavelength channels. Ex. 1009 at 4:16-29, 5:38-43, 12:29-
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`42, Figs. 5, 6, 9, 11, 13; Ex. 1010 at 3:18-22, 4:18-21, 7:25-8:1, Figs. 1, 6, 8-10;
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`Ex. 1016 at ¶ 111.
`
`(v) Claim 1 – beam-deflecting elements
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`The final element of claim 1 requires “a spatial array of beam-deflecting
`
`elements positioned such that each element receives a corresponding one of said
`
`spectral channels, each of said elements being individually and continuously
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`controllable in two dimensions to reflect its corresponding spectral channel to a
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`selected one of said ports and to control the power of the spectral channel reflected
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`to said selected port.” Smith discloses a MEMS mirror array where each mirror
`
`receives a wavelength channel. Ex. 1009 at 3:66-4:12, 4:40-42, 4:56-60, 5:27-32,
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`12:39-50; 16:9-13, Figs. 5, 6, 16; Ex. 1010 at 3:16-24, 7:29-8:2, 8:5-11, 9:14-16,
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`
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`17
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`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`Figs. 1-3, 6. Smith also discloses that each MEMS mirror is individually and
`
`continuously controllable in two dimensions to reflect a channel to a port. Ex.
`
`1009 at Abstract, 7:1-3, 7:32-44, 8:19-20, 14:49-65, 15:35-54, 19:51-55, Figs. 14
`
`and 16; Ex. 1010 at 6:3-7, 9:4-23, Fig. 7. Smith further discloses controlling the
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`MEMS mirrors to control the power of the channel reflected to the port. Ex. 1009
`
`at 7:32-45, 16:9-11, 16:34-51; Ex. 1010 at 6:3-7, 9:4-13, 10:1-20, Fig. 7. Thus,
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`Smith discloses all of the requirements of this beam-deflecting elements limitation.
`
`See Ex. 1016 at ¶ 112.
`
`(vi) Claim 2
`
`Claim 2 recites “the optical add-drop apparatus of claim 1 further
`
`comprising a control unit for controlling each of said beam-deflecting elements.”
`
`Smith discloses a controller for adjusting the positions of the micromirrors. Ex.
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`1009 at 9:20-33, 11:13-35, 13:21-24, 18:42-53, Figs. 11-13; Ex. 1010 at 7:3-4,
`
`11:2-11, Figs. 4 and 11; see Ex. 1016 at ¶ 113.
`
`(vii) Claim 3
`
`Claim 3 recites the “optical add-drop apparatus of claim 2, wherein the
`
`control unit further comprises a servo-control assembly, including a spectral
`
`monitor for monitoring power levels of selected ones of said spectral channels, and
`
`a processing unit responsive to said power levels for controlling said beam-
`
`deflecting elements.” Smith discloses a servo-control assembly comprising a
`
`
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`18
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`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`controller that receives feedback for controlling the micromirrors from an optical
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`power monitor that measures the power of optical signals. Ex. 1009 at 7:24-31,
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`8:2-4, 9:29-33, 13:20-14:15, 18:42-53, Figs. 8 and 12; Ex. 1010 at 6:10-14, 11:4-
`
`23, Fig. 4; see Ex. 1016 at ¶ 114.
`
`(viii) Claim 4
`
`Claim 4 recites “wherein said servo-control assembly maintains said power
`
`levels at predetermined values.” Smith discloses adjusting mirrors to
`
`predetermined criteria, which includes power levels. Ex. 1009 at 9:59-10:13,
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`11:48-51; Ex. 1010 at 6:10-14, 11:4-23, Fig. 4; see Ex. 1016 at ¶ 115.
`
`(ix) Claim 5
`
`Claim 5 requires the “optical add-drop apparatus of claim 2, wherein the
`
`control unit controls said beam-deflecting elements to direct selected ones of said
`
`first spectral channels to one or more of said second ports to be dropped as second
`
`spectral channels from said output multi-wavelength optical signal.” Smith
`
`discloses an add-drop apparatus that includes a control unit for directing channels
`
`to a drop port. See supra Sections VII.C.(i), (iii) & (vi); Ex. 1016 at ¶ 116.
`
`(x) Claim 6
`
`Claim 6 requires the “optical add-drop apparatus of claim 2, wherein the
`
`control unit controls said beam-deflecting elements to direct selected ones of said
`
`second spectral channels to said output port to be added to said output multi-
`
`wavelength optical signal.” Smith discloses an add-drop apparatus that includes a
`
`
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`19
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`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,368
`control unit for directing channels to an output port to be added. See supra
`
`Sections VII.C.(i), (iii) & (vi); Ex. 1016 at ¶ 117.
`
`(xi) Claim 9
`
`Claim 9 recites the “optical add-drop apparatus of claim 1, wherein said
`
`wavelength selective device further combines selected ones of said spectral
`
`cha