IPR2015-00726, Paper No. 37
`IPR2015-00727, Paper No. 35
`June 21, 2016
`
`trials@uspto.gov
`
`571-272-7822
`
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`FUJITSU NETWORK COMMUNICATIONS, INC., CORIANT
`OPERATIONS, INC., CORIANT (USA) INC., CIENA CORPORATION
`Petitioner
`vs.
`CAPELLA PHOTONICS, INC.
`Patent Owner
`- - - - - -
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`Technology Center 2800
`Patents RE42,368E and RE42,678E
`- - - - - -
`Oral Hearing Held: May 24, 2016
`
`Before: JAMES A. TARTAL, JOSIAH C. COCKS,
`KALYAN K. DESHPANDE, Administrative Patent Judges
`
`The above-entitled matter came on for hearing on May 24,
`2016 at the U.S. Patent and Trademark Office, 600 Dulany Street,
`Alexandria, Virginia in Courtroom A, at 1:00 p.m.
`
`REPORTED BY: Karen Brynteson, RMR, CRR, FAPR
`
`
`IPR2015-00727, Paper No. 35
`June 21, 2016
`
`trials@uspto.gov
`
`571-272-7822
`
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`FUJITSU NETWORK COMMUNICATIONS, INC., CORIANT
`OPERATIONS, INC., CORIANT (USA) INC., CIENA CORPORATION
`Petitioner
`vs.
`CAPELLA PHOTONICS, INC.
`Patent Owner
`- - - - - -
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`Technology Center 2800
`Patents RE42,368E and RE42,678E
`- - - - - -
`Oral Hearing Held: May 24, 2016
`
`Before: JAMES A. TARTAL, JOSIAH C. COCKS,
`KALYAN K. DESHPANDE, Administrative Patent Judges
`
`The above-entitled matter came on for hearing on May 24,
`2016 at the U.S. Patent and Trademark Office, 600 Dulany Street,
`Alexandria, Virginia in Courtroom A, at 1:00 p.m.
`
`REPORTED BY: Karen Brynteson, RMR, CRR, FAPR
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`
`
`
`
`
`
`NATHANIEL T. BROWAND, ESQ.
`Milbank, Tweed, Hadley & McCloy LLP
`28 Liberty Street
`New York, New York 10005-1413
`212-530-5096
`nbrowand@milbank.com
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`
`
`
`ROBERT GREENE STERNE, ESQ.
`JASON D. EISENBERG, ESQ.
`JONATHAN TUMINARO, Ph.D., ESQ.
`Sterne Kessler Goldstein Fox
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`202-371-2600
`rsterne@skgf.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2
`
`
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`
`P R O C E E D I N G S
`
`(1:00 p.m.)
`JUDGE TARTAL: Good afternoon. Please take a
`
`seat.
`
`Good afternoon and welcome. We're here for the
`final hearing in two separate inter partes review cases, both
`are captioned Fujitsu Network Communications Incorporated,
`Coriant Operations, Incorporated, Coria nt (USA) Incorporated,
`and Ciena Corporation, Petitioner versus Capella Photonics,
`Incorporated, Patent Owner.
`The first case is IPR2015- 00726 concerning U.S.
`Patent RE42,368E, and the second case is IPR2015- 00727,
`concerning U.S. Patent RE42,678E.
`First let me begin by introducing the panel. I am
`joined by Judge Cocks to my right and Judge Deshpande. And
`I am Judge Tartal. Let's get the parties' appearances, please.
`Who do we have appearing today on behalf of Petitioner.
`MR. BROWAND: Good afternoon, Your Honor,
`Daniel Browand on behalf of Petitioner, Fujitsu Network
`Communications, Inc.
`JUDGE TARTAL: Good afternoon, counsel.
`And now for Patent Owner, who do we have
`appearing today?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`
`
`3
`
`
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`
`MR. STERNE: Good afternoon, Your Honor,
`Robert Sterne for Patent Owner. With me is Jason Eisenberg,
`lead counsel.
`JUDGE TARTAL: Thank you and welcome.
`And we set forth the procedures for today's hearing
`in the trial order. As a reminder, each party will have 40
`minutes of total time to present arguments in both cases.
`The Petitioner has the burden of proof and will go
`first. Petitioner will open jointly for both cases. Patent
`Owner will then present opposition arguments jointly for both
`cases. And then to the extent that Petitioner has reserved
`time, Petitioner will present reply arguments jointly for both
`cases.
`
`The parties must at all times make clear which case
`they are discussing, so that we can maintain an easier
`transcript. Also for clarity in the transcript, when you refer to
`an exhibit or demonstrative slide, please state for the record
`the exhibit and page number or, for demonstratives, the slide
`number to which you are referring.
`We will remind each party that under no
`circumstances are they to interrupt the other party during that
`party's presentation, its arguments or demonstratives. Both
`parties are reminded that demonstrative slides are not evidence
`and will not be relied upon for a final decision.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`4
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`
`Moreover, arguments raised for the first time
`during this hearing or in a demonstrative will not be given
`weight in our final written decision.
`Are there any questions on behalf of the Patent
`Owner at this time?
`MR. STERNE: Your Honor, can you tell me how
`much time I have in the combined time frame?
`JUDGE TARTAL: It is a total of 40 minutes, so 40
`minutes for this proceeding.
`MR. STERNE: 40 minutes for both cases?
`JUDGE TARTAL: An additional 40 minutes for
`this afternoon at 3:00 o'clock as well, yes.
`Okay. Are there any questions on behalf of
`Petitioner?
`MR. BROWAND: None, Your Honor, although we
`do have a little bit of technical difficulty. We're trying to get
`set up.
`
`JUDGE TARTAL: Okay. Feel free to try to
`proceed with getting your presentation started.
`Would Petitioner like to reserve any particular
`amount of time for the rebuttal portion?
`MR. BROWAND: Yes, Your Honor, we would like
`to reserve ten minutes.
`JUDGE TARTAL: There is a timer provided that
`will give you an indication of how much of the 30 minutes you
`
`
`
`5
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`requested for the initial argument is left. You may proceed
`when you are ready.
`MR. BROWAND: I'm sorry, Your Honor, thank
`
`you.
`
`JUDGE TARTAL: You may proceed.
`MR. BROWAND: So I wanted to address in slide
`number 2 the issues we would like to discuss for the
`presentation today.
`And if you have any particular questions about any
`of the issues that you would like to address, please just direct
`me to where you would like to go, I am happy to answer them.
`The first point is a legal one. And it is the issue of
`no estoppel. We think the briefing is clear on this issue. It
`is -- there is really no estoppel in play in connection with the
`Fujitsu Network Communications IPRs, vis- a-vis the earlier
`Cisco IPRs that Your Honors are aware of.
`But I wanted to turn to the three issues on the
`merits. Those issues are the continuously controllable
`two-axis mirrors requirement, the second issue is the control
`the power or attenuation requirement of the claims, and the
`third issue is the term ports.
`So turning to slide 8, it appears the continuously
`controllable two- mirror requirement as recited in claim 1 of
`the '368 patent. This two- axis requirement was add by Patent
`Owner during the reissue as you can see in the italicized text.
`
`
`
`6
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`
`Similarly, on slide 9, here is the continuously
`controllable two- mirror requirement as recited in claim 1 from
`the '678 patent.
`Petitioner on slide 10 is relying on Bouevitch as
`the primary reference on both grounds that are at issue in these
`IPRs. And as you may recall, the Bouevitch was the same
`primary reference that was used in the Cisco IPRs.
`On slide 11, here is a blowup of the annotation,
`annotated version of figure 11 of Bouevitch. Figure 11 shows
`a multi-wavelength signal that is separated and reflected down
`to a MEMS array 50, in which there are two individually
`movable mirrors shown as 51 and 52 in the blowup.
`On slide 12 we see the text of Bouevitch confirms
`that these are two separate reflectors 51 and 52. And so for
`the two- axis part that was added during the reissue, Petitioners
`are relying on both Carr and Sparks for certain claims. Carr is
`shown on slide 13.
`And on slide 14 is Figure 2B of the Carr patent,
`which plainly shows this array of two- axis mirrors. On slide
`15, we have a passage from Carr that confirms that these
`mirrors tilt in two axes around perpendicular torsion bars
`shown in the figure. So Carr clearly shows this two-axis
`rotation.
`
`Carr also discloses the continuously controllable
`requirement of the claims because on slide 16, we see that
`
`
`
`7
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`Carr states the mirrors can be tilted to any desired orientation.
`Now, Patent Owner in its response did not dispute that Carr
`met this limitation.
`For other claims, Petitioner is relying on Sparks
`for the two-axis mirror requirement. And Sparks also
`discloses a very similar teaching and discloses these claim
`requirements.
`Here on slide 18, we see that Sparks states that the
`movable mirrors are capable of two-axis movement. And with
`regard to the continuously controllable requirement, Sparks
`discloses that because the mirrors can be tilted to any desired
`orientation, the switch may be attenuated and the signal to
`whatever degree necessary. It is very clear that based on that
`ability to attenuate to any degree necessary, we have
`continuously controllable two- axis mirrors.
`And, again, the Patent Owner in its response did
`not dispute that Sparks met this claim limitation.
`Patent Owner's main argument is that a person of
`skill in the art would not have combined Bouevitch with either
`Carr or Sparks. The problem from our perspective is that
`Patent Owner's argument is premised on a couple of fallacies,
`Your Honor.
`The first is that these two- axis mirrors in
`Bouevitch are not just plug- and-play according to the Patent
`Owner, but the problem is that is not the law. The law -- the
`
`
`
`8
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`fact is that two- axis controllable mirrors were known as
`disclosed in Carr and Sparks and a person of ordinary skill in
`the art would have known to use them and add/drop
`multiplexers. There is no bodily incorporation requirement
`that the Patent Owner thinks there is.
`JUDGE TARTAL: Counsel, may I ask you to
`address Patent Owner's argument that it would destroy
`Bouevitch's principle of operation?
`MR. BROWAND: Sure, absolutely. That is also
`incorrect. And I can do that in a couple of ways. First, Patent
`Owner contends that the claims are directed a wavelength
`selective switch but that's just not true.
`Bouevitch is actually -- teaches an add/drop
`multiplexer. And there is no inconsistency between the
`teachings of Bouevitch and the teachings of Carr and Sparks
`on the two- axis requirement.
`JUDGE COCKS: Counsel, let me ask you, what is
`the significance of a wavelength selective switch? What does
`that mean? What are we to infer if the claims, we were to
`think they actually read on or were directed to a wavelength
`selective switch?
`MR. BROWAND: Yeah, I would actually tell you
`they are not directed to a wavelength selective switch, as
`Patent Owner believes they are. Because Patent Owner has
`contended that a wavelength selective switch is a switch that
`
`
`
`9
`
`
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`requires three or more output ports. And that's just not a
`requirement that is recited in the claims.
`So the distinction that they are drawing between a
`wavelength selective switch and an add/drop multiplexer is a
`false distinction. The claims only require one input port and,
`at most, two output ports.
`So their distinction is not supported by the claim
`language. And it is really clear that three or more output ports
`may, in fact, be covered by the claims, but is not required by
`the claims, and so a 2- by-2 switch as shown in Bouevitch is
`sufficient to meet the requirements of the claim.
`So their whole premise that you need to show a
`wavelength selective switch, which, by the way, as shown in
`this reference 1043 was already known in 1999 is irrelevant.
`The fact is, is that there is only two output ports required,
`which is what they are calling an add/drop multiplexer and
`that's sufficient to meet the claim language.
`There is other literature that actually shows that
`Patent Owner's distinction is false. Here is an article that was
`authored by Dr. Marom, Cisco's expert in the earlier IPR, that
`specifically describes a two- input, two- output system as a
`wavelength selective switch.
`Again, the distinction that Patent Owner is trying
`to draw by looking at Dr. Ford's later articles and other
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`10
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`references is just inaccurate. It is not supported by the claim
`language.
`
`JUDGE TARTAL: Counsel, what slide is that that
`you are referring to?
`MR. BROWAND: That was slide 22. Thank you.
`On slide 23, in the deposition of Patent Owner's
`expert, he actually confirmed that this 2- by-2 switch
`configuration that was in the Marom article is, in fact, a
`wavelength selective switch and that -- and it is a 2- by-2
`configuration. That's all the claims require.
`There is only three ports in total that we need in
`the claims. And there is only two output ports. So this 2- by-2
`configuration, just like we have seen in Bouevitch, is
`sufficient.
`On slide 24 we cite four reasons to combine the
`two-axis mirrors of Carr or Sparks with Bouevitch. First, it is
`a simple substitution. Yes, it may involve some engineering
`work, but how these systems were operated were known, and it
`could be implemented in any given system.
`Two, using two- axis mirrors was a known
`technique to improve similar devices. Three, two-axis mirrors
`were obvious to try. There were only two options; one-axis or
`two-axis. And, fourth, the references themselves explain why
`a person of ordinary skill in the art would have used two- axis
`mirrors.
`
`
`
`11
`
`
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`
`And so to support each of these points, the first
`one being substitution of known elements on slide 25, Patent
`Owner's expert agreed that two-axis mirrors were known at the
`time of Bouevitch.
`On slide 26, we see Patent Owner's expert
`acknowledging that two- axis mirrors was simply a design
`choice. If you need it, you can use it, he said.
`On slide 27, Dr. Ford, Petitioner's expert, provided
`unrebutted testimony that the two- axis mirrors in Carr or
`Sparks was a substitution that would have yielded predictable
`results. There is no change to the principle of operation
`simply by changing from a one-axis mirror to two- axis
`mirrors.
`
`On slide 28 is the second grounds for combination,
`that it was a known technique to improve similar devices.
`Here on slide 28 we see that Dr. Ford's testimony of using the
`two-axis mirrors from Carr or Sparks with Bouevitch was
`simply a matter of implementing a known technique.
`On slide 29, again, Dr. Ford's testimony shows that
`two-axis mirrors were obvious to try. And on slide 30, here is
`Dr. Ford's testimony that using two- axis mirrors to compensate
`for errors in system alignment were well- known problems in
`the art at the time.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`
`
`12
`
`
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`
`On this point Patent Owner has contended that this
`better alignment rationale is hindsight, but that, we would
`submit, is incorrect.
`On slide 31 the record shows that both Carr and
`Sparks teach using two- axis mirrors to provide improved
`alignment. And you can see that in the highlighted text.
`JUDGE TARTAL: Counsel, does Bouevitch teach
`intentional misalignment?
`MR. BROWAND: Yes, it does, Your Honor. If
`you would like me to turn to that, I can.
`JUDGE TARTAL: You can finish the thought if
`you would.
`MR. BROWAND: I would like to finish first the
`continuously controllable piece. And there was sufficient
`motivation to combine the continuously controllable
`combination from -- sorry, teaching from Carr or Sparks with
`Bouevitch. The reasons are shown here in slide 32.
`Dr. Ford testified that continuously controllable
`mirrors were a known alternative to the discrete two-state
`mirrors that were known in the art, and they allowed for more
`precise control that was useful for power control applications.
`This is further described in slide 33 where Dr. Ford
`explained continuously controllable mirrors were known to be
`interchangeable with discrete step mirrors.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`13
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`
`On slide 34 Dr. Ford testified continuously
`controllable mirrors provide control on a channel-by-channel
`basis that allows for attenuating or equalizing samples. And
`this is another reason why a person of skill in the art would
`have used continuously controllable mirrors instead of discrete
`mirrors that were also available at the time.
`So now I would like to turn to the second issue,
`which is what you mentioned regarding angular misalignment.
`And this is the issue of being able to control the power as we
`recited in the claims.
`On slide 36, here is a portion of claim 1 of the '368
`patent that was added during reissue to require to control the
`power of the spectral channel reflected to said selected port.
`Similar requirements were added during reissue in other
`claims of both patents.
`JUDGE COCKS: Counsel, what does it matter that
`they were added? What difference does that make?
`MR. BROWAND: I am just giving you a little bit
`of context.
`JUDGE COCKS: So just no particular point.
`MR. BROWAND: Just wanted to tell you why they
`believed they were patentable at the time.
`JUDGE COCKS: Go ahead. Thank you.
`MR. BROWAND: So here on slide 37 we see the
`teaching of Carr with regard to the control the power
`
`
`
`14
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`requirement. And what is shown here is an annotated figure
`from Carr, in which the signal is in red. And here it is being
`angularly misaligned by a mirror, so that only a portion of that
`reflected signal enters the output port, thereby causing
`attenuation.
`Carr describes this feature explicitly in the text by
`stating that fine control of the mirror orientation allows for
`power control or attenuation, which is useful in power
`equalizers, attenuators, and add/drop switches like Bouevitch.
`On slide 39, similarly with regard to Sparks, we
`have Figure 2b, which illustrates this same principle of
`angular misalignment in which the beam is misaligned into a
`port in order to control the power of the signal.
`Sparks, like Carr, describes this in the text as well.
`Sparks explains that the optical beam path is misaligned, so
`only a portion of the beam is coupled to the output in order to
`control the power and attenuate the signal.
`The Patent Owner does not dispute that these
`teachings in both Carr and Sparks satisfy the control of power
`requirement. Patent Owner provides no evidence of any
`secondary considerations on this issue.
`Instead, Patent Owner's primary argument is that
`this misalignment technique to control the power conflicts
`with Bouevitch's principle of operation. And we submit that
`Patent Owner's argument is incorrect.
`
`
`
`15
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`
`The first reason why it is incorrect is that
`intentional misalignment to control the power was a known
`technique. On slide 41, here is testimony from Patent Owner's
`expert in which he agreed that intentional misalignment was a
`known technique to attenuate an optical signal at the time of
`the filing of the Capella patents.
`Second, we believe that a proper reading of
`Bouevitch shows that it does not teach away from angular
`misalignment for power control. And, in fact, Bouevitch
`actually discloses and is consistent with using angular
`deflection from the mirrors of a MEMS array to control the
`power of a signal. In this -- on this point, we think Patent
`Owner makes two mistakes.
`First, it focuses on the liquid crystal embodiment
`of Bouevitch instead of the MEMS technology embodiment.
`Second, Patent Owner imports an interference-based
`attenuation technique that is not disclosed in Bouevitch and
`from a completely different reference without any
`justification.
`On slide 43 we see that Figure 9 of Bouevitch,
`which is a dynamic gain equalizer, has a similar optical
`structure to Figure 11, which shows an add/drop multiplexer.
`Figure 9 is shown with a liquid crystal structure as the
`modifying means, instead of the tilting MEMS mirrors of
`Figure 11.
`
`
`
`16
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`
`But on slide 44, Bouevitch and Patent Owner's
`expert recognize that this modifying means of Figure 9 could
`be a MEMS array, instead of the liquid crystal structure that
`Patent Owner focuses on.
`The second quote on slide 44 states that the same
`MEMS technology can be used for both as a gain equalizer and
`as an add/drop multiplexer. So this means that Figure 11 of
`Bouevitch can operate as a dynamic gain equalizer using
`tilting MEMS mirrors with the same principle of misalignment
`for power control that is shown in Sparks and in Carr.
`JUDGE TARTAL: Counsel, you said that it can
`operate, but does Bouevitch disclose that as how it would
`operate?
`
`MR. BROWAND: Yes, it does. And on slide 46,
`Bouevitch states that the degree of attenuation is based on the
`angle of reflection provided by the reflector.
`And Petitioner's expert, Dr. Ford, expressly
`considered this teaching and testified that one of ordinary skill
`in the art would have understood this teaching to mean that
`Bouevitch recognized that angular displacement from a MEMS
`mirror can be used to attenuate a signal, which is consistent
`with the attenuation technique disclosed in Carr and Sparks.
`I would also point out here on slide 48 that Dr.
`Ford's testimony matches the testimony that was provided by
`Marom in the Cisco IPR as well as the express findings by the
`
`
`
`17
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`Board in the Cisco IPR that Bouevitch discloses the use of
`variable attenuation for power control.
`Looking specifically at Bouevitch plus Carr,
`Dr. Ford testified that a person of skill in the art would have
`known and understood the attenuation technique disclosed in
`Carr. Similarly Dr. Ford provided the same testimony with
`regard to Sparks on slide 50; namely, that a person of ordinary
`skill in the art at the time would have known and understood
`the attenuation technique disclosed in Sparks.
`And on slide 51 Dr. Ford testified that a person of
`skill would have been motivated to use this angular
`misalignment technique to control the power because the prior
`art expressly teaches using this technique obviates the need to
`use a separate attenuator device.
`That's directly from the Sparks reference. Those
`of skill in the art at the time recognized that intentional
`misalignment was an elegant solution because you did not
`need a separate attenuator, such as a membrane or other
`device, besides the tilt mirror itself in order to achieve power
`control.
`
`This teaching is made explicit in Sparks where it
`describes that WDM system channels may be equalized
`without incorporating separate attenuators within the system.
`Patent Owner, however, ignores the teachings of
`Bouevitch and turns to a different theory of attenuation in
`
`
`
`18
`
`
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`order to support its argument that this combination is contrary
`to the principle of Bouevitch.
`There is no interference-based attenuation in
`Bouevitch. And Patent Owner turns to a reference called
`Bergmann to explain this argument.
`Here in slide 54 we have Figure 2 of Bergmann
`that shows interference-based attenuation and how it operates
`completely differently from the angular misalignment that is
`described in Bouevitch, Carr, and Sparks.
`Bergmann requires vertical movement of this
`membrane 54, as shown by those arrows, to vary the distance
`between a signal that -- a vertical signal that is reflected down
`on to substrate 52 and reflected back up through this
`membrane.
`This is a separate attenuator that is not mentioned
`or suggested in the MEMS embodiment of Bouevitch. Why did
`Bouevitch not mention this? By the time of Carr and Sparks,
`there was no reason to use this older, more complicated,
`separate attenuator technology. A person of skill in the art at
`the time would have known to use angular misalignment as the
`preferred MEMS technique for power control. That is exactly
`what Bouevitch teaches.
`The final issue I would like to touch on is the plain
`term ports.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`19
`
`
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`
`JUDGE TARTAL: Can I just ask, and what are you
`basing that last statement on in terms of what one of ordinary
`skill in the art would have known at the time?
`MR. BROWAND: I am basing it on the testimony
`of Dr. Ford. It appears on slide 47, where he states that
`Bouevitch recognizes that the degree of attenuation may be
`based on the angle of reflection from each MEMS mirror and
`that to achieve attenuation, Bouevitch recognizes the principle
`that angular displacement may be used to attenuate the signal.
`JUDGE TARTAL: And how does that correlate to
`what I thought was your last statement, that one of ordinary
`skill in the art would have not relied upon older technology
`based on Bergmann?
`MR. BROWAND: That, Your Honor, is I think a
`fair reading of why Bergmann wasn't explained in Bouevitch.
`And the facts are that Bergmann is an older technology. That's
`shown by the dates of the references.
`JUDGE TARTAL: But is there any evidence that
`supports that statement, other than your argument?
`MR. BROWAND: I think it is supported by
`Dr. Ford's testimony.
`JUDGE TARTAL: And by that you are referring to
`what's on slide 47?
`MR. BROWAND: Yes, Your Honor.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`20
`
`
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`
`The final point that I would like to make is with
`regard to the ports requirement. And here on slide 57 we see
`that there is a requirement of an input port, one or more other
`ports, and then an output port.
`The -- there are similar claims, similar
`requirements in the other claims. For example, here on slide
`58, this is claim 1 of the '678 patent, which requires an input
`port and a plurality of output ports. Again, we need a total of
`three ports and there is one input port and no more than two
`output ports.
`The Board in the Cisco IPRs already concluded
`that port encompasses circulator ports. The Board properly
`rejected Patent Owner's disavowal arguments there. And we
`believe they presented the same arguments in this IPR. And
`there is no reason to revisit that decision here.
`As was stated in the Cisco IPRs, the provisional
`application to the Capella patents discloses one of the three
`embodiments that is here shown in this figure on slide 61 in
`which there are four circulators shown as add/drop ports.
`Here on slide 62 is text from the provisional
`application, in which the circulators are described as add/drop
`ports and distinguished from what are called physical
`input/output ports that are shown also in figure 61. This was
`Capella's invention as of the provisional application.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`21
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`
`Patent Owner contends disavowal as stated on slide
`63, based on the testimony of its expert that reading the patent
`actually discourages the use of circulators, but discouraging it
`does not show disavowal. Disavowal requires a clear and
`unmistakable statement of limitation by the patentee.
`We just don't have something like that here.
`Patent Owner's expert only says discouragement. The Board
`properly found that discouragement is not disavowal. The law
`is very clear on this point. "The patentee's discussion of the
`shortcomings of certain techniques is not a disavowal of the
`use of those techniques in a manner consistent with the
`claimed invention."
`Here the term port, the broadest reasonable
`interpretation encompasses circulator ports. There is no
`reason to deviate from that understanding.
`So on slide 65, Bouevitch by itself is sufficient to
`satisfy the Board's requirement as shown by the red circles
`with the inputs and outputs to the circulator ports.
`Petitioner also on slide 66 points out Carr satisfies
`the ports requirements as well. And Sparks, additionally,
`although not necessary, we believe, satisfies the ports
`requirements when it states that the optical switch comprises
`at least two inputs and two outputs.
`Unless there are any questions, I will reserve the
`rest of my time.
`
`
`
`22
`
`
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`
`JUDGE TARTAL: Thank you, counsel. You have
`about 13 minutes left.
`MR. BROWAND: Thank you.
`MR. STERNE: Your Honor, I would like my
`colleague to approach the bench with our copies.
`JUDGE TARTAL: Certainly.
`(Pause in the proceedings to fix the equipment.)
`JUDGE TARTAL: Thank you, counsel. You can
`begin when ready.
`MR. STERNE: Good afternoon, Your Honors.
`May it please the Board, Robert Sterne here for Capella
`Photonics.
`Petitioner's case is a classic case of improper
`claim, BRI claim construction and impermissible hindsight.
`And let me explain. There are three topics that we need to
`address in this first argument today.
`First is claim construction. Ports, ports as used in
`the claims, Your Honor -- and I will explain this in detail --
`based on the specification -- and there is no ambiguity about
`this whatsoever -- are at the interface between the free space
`and the collimator in the optical switch, and specifically
`excludes circulators and optical connections fiber to fiber.
`Two, there is no permissible motivation to
`combine. There is no reason to make this combination
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`23
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-00726 and IPR2015-00727
`Application 12/816084
`
`because, as I will show, it departs from the principle of
`operation of the primary reference, Bouevitch.
`And, third, when we look at the scope and content
`of the prior art, the Ford paper that he cites in his CV falls
`into -- the Ford paper shows that prior art devices fall into two
`categories.
`We have broadband switches, which is Carr and
`Sparks, and we have the add/drop multiplexer of Bouevitch,
`which are distinct categories from the claimed invention,
`which are wavelength selective switches referred to as WSS.
`So if we could look at the instituted grounds, Your
`Honor, we're going to talk about the '368 and the '678 patents.
`I am going to go specifically first to the claims, as we know
`the claims are where it all starts and ends.
`So let's take a look at claim 1 of the '368. And,
`unfortunately with your new setup, which I really like, I can't
`use my laser pointer any more.
`So let me walk you through the claim. We have an
`input port for an input multi-wavelength optical signal having
`first spectral channels. This is a broadband signal or a fu
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
