Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 11
`Entered: August 24, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`FUJITSU NETWORK COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00726
`Patent RE42,368 E
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 11
`Entered: August 24, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`FUJITSU NETWORK COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00726
`Patent RE42,368 E
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2015-00726
`Patent RE42,368 E
`
`
`I.
`INTRODUCTION
`Petitioner, Fujitsu Network Communications, Inc., filed a Corrected
`Petition requesting an inter partes review of claims 1–6, 9–12, and 15–22 of
`U.S. Patent No. RE42,368 E (“the ’368 patent”). Paper 5 (“Pet.”). Patent
`Owner, Capella Photonics, Inc., filed a Preliminary Response. Paper 10
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted “unless . . . the
`information presented in the petition . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.”
`Upon consideration of the Petition and the Preliminary Response, we
`conclude the information presented shows there is a reasonable likelihood
`that Petitioner would prevail in showing the unpatentability of the
`challenged claims. Accordingly, we authorize an inter partes review to be
`instituted as to claims 1–6, 9–12, and 15–22 of the ’368 patent. Our factual
`findings and conclusions at this stage of the proceeding are based on the
`evidentiary record developed thus far (prior to Patent Owner’s Response).
`This is not a final decision as to patentability of claims for which inter
`partes review is instituted. Our final decision will be based on the record, as
`fully developed during trial.
`
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`II.
`BACKGROUND
`The ’368 patent (Ex. 1001)
`A.
`The ’368 patent, titled “Reconfigurable Optical Add-Drop
`Multiplexers with Servo Control and Dynamic Spectral Power Management
`Capabilities,” reissued May 17, 2011, from U.S. Patent No. 6,879,750 (“the
`’750 patent”). Ex. 1001. The ’750 patent issued April 12, 2005, from U.S.
`Patent Application No. 10/745,364, filed December 22, 2003.
`According to the ’368 patent, “fiber-optic communications networks
`commonly employ wavelength division multiplexing (WDM), for it allows
`multiple information (or data) channels to be simultaneously transmitted on
`a single optical fiber by using different wavelengths and thereby
`significantly enhances the information bandwidth of the fiber.” Id. at
`1:37–42. An optical add-drop multiplexer (OADM) is used both to remove
`wavelengths selectively from a multiplicity of wavelengths on an optical
`fiber (taking away one or more data channels from the traffic stream on the
`fiber), and to add wavelengths back onto the fiber (inserting new data
`channels in the same stream of traffic). Id. at 1:45–51.
`The ’368 patent describes a “wavelength-separating-routing (WSR)
`apparatus that uses a diffraction grating to separate a multi-wavelength
`optical signal by wavelength into multiple spectral channels, which are then
`focused onto an array of corresponding channel micromirrors.” Id. at
`Abstract. “The channel micromirrors are individually controllable and
`continuously pivotable to reflect the spectral channels into selected output
`ports.” Id. According to Petitioner, the small, tilting mirrors are sometimes
`called Micro ElectroMechanical Systems or “MEMS.” Pet. 6.
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`The WSR described in the ’368 patent may be used to construct
`dynamically reconfigurable OADMs for WDM optical networking
`applications. Figure 1A of the ’368 patent is reproduced below.
`
`
`Figure 1A depicts wavelength-separating-routing (WSR) apparatus 100, in
`accordance with the ’368 patent. WSR apparatus 100 is comprised of an
`array of fiber collimators 110 (multiple input/output ports, including input
`port 110-1 and output ports 110-2 through 110-N), diffraction grating 101 (a
`wavelength separator), quarter wave plate 104, focusing lens 102 (a beam-
`focuser), and array of channel micromirrors 103. Ex. 1001, 6:57–63,
`7:55–56.
`
`A multi-wavelength optical signal emerges from input port 110-1 and
`is separated into multiple spectral channels by diffraction grating 101, which
`are then focused by focusing lens 102 into a spatial array of distinct spectral
`spots (not shown). Id. at 6:64–7:2. Channel micromirrors 103 are
`positioned such that each channel micromirror receives one of the spectral
`channels. Id. at 7:2–5.
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`Figure 1B of the ’368 patent is reproduced below.
`
`
`Figure 1B depicts a close-up view of the array of channel
`micromirrors 103 shown above in Figure 1A. Id. at 8:6–7. The channel
`micromirrors “are individually controllable and movable, e.g. pivotable (or
`rotatable) under analog (or continuous) control, such that, upon reflection,
`the spectral channels are directed” into selected output ports by way of
`focusing lens 102 and diffraction grating 101. Id. at 7:6–11. According to
`the ’368 patent:
`each micromirror may be pivoted about one or two axes. What
`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 9:8–14.
`
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`Figure 3 of the ’368 patent is reproduced below.
`
`
`Similar to Figure 1A, above, Figure 3 also shows a WSR apparatus as
`described by the ’368 patent. Ex. 1001, 10:25–26. In this embodiment, two
`dimensional array of fiber collimators 350 provides an input port and
`plurality of output ports. Id. at 10:31–32. First and second two dimensional
`arrays of imaging lenses 360, 370 are placed in a telecentric arrangement
`between two-dimensional collimator-alignment mirror array 320 and two-
`dimensional fiber collimator array 350. Id. at 10:37–43. “The channel
`micromirrors 103 must be pivotable biaxially in this case (in order to direct
`its corresponding spectral channel to anyone of the output ports).” Id. at
`10:43–46.
`The WSR may also incorporate a servo-control assembly (together
`termed a “WSR-S apparatus.”) Id. at 4:65–67. According to the ’368
`patent:
`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 micromirrors on an
`individual basis, so as to maintain a predetermined coupling
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`efficiency of each spectral channel in one of the output ports.
`As such, the servo-control assembly provides dynamic control
`of the coupling of the spectral channels into the respective
`output ports and actively manages the power levels of the
`spectral
`channels
`coupled
`into
`the
`output
`ports.
`
`Id. at 4:47–56.
`Figure 5 of the ’368 patent is reproduced below.
`
`
`Figure 5 depicts OADM 500 in accordance with the ’368 patent
`comprised of WSR-S (or WSR) apparatus 510 and optical combiner 550.
`Ex. 1001, 12:40–44. Input port 520 transmits a multi-wavelength optical
`signal, which is separated and routed into a plurality of output ports,
`including pass-through port 530 and one or more drop ports 540-1 through
`540-N. Id. at 12:44–48. Pass-through port 530 is optically coupled to
`optical combiner 550, which combines the pass-through spectral channels
`with one or more add spectral channels provided by one or more add ports
`560-1 through 560-M. Id. at 12:52–56. The combined optical signal is then
`routed into existing port 570, providing an output multi-wavelength optical
`signal. Id. at 12:56–58.
`
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`
`Illustrative Claims
`B.
`Claims 1, 15, 16, and 17 of the ’368 patent are independent. Claims
`2–6 and 9–12 ultimately depend from claim 1 and claims 18–22 ultimately
`depend from claim 17. Claims 1 and 17 of the ’368 patent are illustrative of
`the claims at issue:
`1. An optical add-drop apparatus comprising
`an input port for an input multi-wavelength optical signal
`having first spectral channels;
`one or more other ports for second spectral channels; an
`output port for an output multi-wavelength optical signal;
`a wavelength-selective device for spatially separating said
`spectral channels; [and]
`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
`in
`two
`individually and continuously controllable
`dimensions to reflect its corresponding spectral channel
`to a selected one of said ports and to control the power of
`the spectral channel reflected to said selected port.
`Ex. 1001, 14:6–20.
`
`
`17. A method of performing dynamic add and drop in a
`WDM optical network, comprising
`separating an input multi-wavelength optical signal into
`spectral channels;
`imaging each of said spectral channels onto a corresponding
`beam-deflecting element; and
`controlling dynamically and continuously said beam-
`deflecting elements in two dimensions so as to combine
`selected ones of said spectral channels into an output
`multi-wavelength optical signal and to control the power
`of the spectral channels combined into said output multi-
`wavelength optical signal.
`Ex. 1001, 16:3–14.
`
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`Related Proceedings
`C.
`According to the parties, the ’368 patent is a subject of the following
`civil actions: Capella Photonics, Inc. v. Cisco Sys., Inc., No. 3:14-cv-03348
`(N.D. Cal.), Capella Photonics, Inc. v. Fujitsu Network Commc’ns, Inc., No.
`3:14-cv-03349 (N.D. Cal.), Capella Photonics, Inc. v. Tellabs Ops., Inc., No.
`3:14-cv-03350 (N.D. Cal.), Capella Photonics, Inc. v. Ciena Corp., No.
`3:14-cv-03351 (N.D. Cal.), Capella Photonics, Inc. v. Columbus Networks
`USA, Inc., No. 0:14-cv-61629 (S.D. Fla.), and Capella Photonics, Inc. v.
`Telefonica Int’l Wholesale Servs. USA, Inc., No. 1:14-cv-22701 (S.D. Fla.).
`Pet. 2; Paper 7, 2–3.
`Claims 1–6, 9–13, and 15–22 of the ’368 patent are challenged in
`Cisco Systems, Inc. v. Capella Photonics, Inc., IPR2014-01166, instituted on
`January 30, 2015 (“IPR2014-01166”). The ’368 patent is also the subject of
`petitions for inter partes review in JDS Uniphase Corporation v. Capella
`Photonics, Inc., IPR2015-00731, and Ciena Corporation, Coriant
`Operations, Inc., Coriant (USA) Inc., and Fujitsu Network Communications,
`Inc. v. Capella Photonics, Inc., IPR2015-00816.
`
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`Asserted Grounds of Unpatentability
`D.
`Petitioner contends that claims 1–6, 9–12, and 15–22 of the ’368
`patent are unpatentable based on the following grounds:
`
`Reference[s]
`Smith1
`Bouevitch2 and Carr3
`Bouevitch and Sparks4
`Smith and Tew5
`Bouevitch, Carr, and Tew
`Bouevitch, Sparks, and Tew
`
`
`
`Basis
`§ 102
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`Challenged Claims
`1–6, 9–12, and 15–22
`1, 2, 5, 6, 9–12, and
`15–21
`1–4, 17, and 22
`1–6, 9–12, and 15–22
`1, 2, 5, 6, 9–12, and
`15–21
`1–4, 17, and 22
`
`III. ANALYSIS
`Claim Construction
`A.
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`
`
`1 U.S. Patent No. 6,798,941 B2, issued September 28, 2004 (Ex. 1009,
`“Smith”). Petitioner contends Smith is 102(e) prior art as of the
`September 22, 2000, filing date of its corresponding provisional application
`No. 60/234,683 (the “Smith ’683 Provisional,” Ex. 1010). Pet. 16.
`2 U.S. Patent No. 6,498,872 B2, issued December 24, 2002 (Ex. 1002,
`“Bouevitch”)
`3 U.S. Patent No. 6,442,307 B1, issued August 27, 2002 (Ex. 1005, “Carr”).
`4 U.S. Patent No. 6,625,340 B1, issued September 23, 2003 (Ex. 1006,
`“Sparks”).
`5 U.S. Patent Application Publication No. US 2002/0081070 A1, published
`June 27, 2002 (Ex. 1007, “Tew”). Petitioner contends Tew is 102(e) prior
`art as of the November 30, 2000, filing date of its corresponding provisional
`application No. 60/250,520 (Ex. 1008). Pet. 57.
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`they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`No. 2014–1301, 2015 WL 4097949 at *5–8 (Fed. Cir., July 8, 2015).
`“continuously controllable” / “controlling … continuously”
`1.
` Petitioner asserts that the broadest reasonable interpretation of
`“continuously controllable” in light of the specification is “under analog
`control.” Pet. 9–10. According to Petitioner, the ’368 patent identifies
`“under analog control” as an example of continuous control. Id. Patent
`Owner offers no express construction of the term. Prelim. Resp. 11–12.
`We determine that no express construction is necessary for purposes of this
`decision.
`“servo-control assembly”
`2.
`Petitioner asserts that the broadest reasonable interpretation of “servo-
`control assembly” in light of the specification is “assembly that uses
`automatic feedback to control a device in response to a control signal.” Pet.
`11–13. Patent Owner offers no express construction of the term. Prelim.
`Resp. 11–12. The ’368 patent states that a “skilled artisan will know how to
`implement a suitable spectral monitor along with an appropriate processing
`unit to provide a servo-control assembly in a WSP-S apparatus according to
`the present invention, for a given application.” Ex. 1001, 12:11–15. For
`purposes of this decision, no express construction of “servo-control
`assembly” is necessary.
`3.
`Additional Claim Terms
`Petitioner addresses the additional claim terms “in two dimensions”
`and “beam deflecting elements.” Pet. 8–9, 10–11. For purposes of this
`decision, no express construction of any additional claim term is necessary.
`
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`References Asserted as Prior Art
`B.
`Petitioner relies on Smith, Bouevitch, Carr, Sparks, and Tew with
`respect to its assertion that the challenged claims are unpatentable.
`
`Smith
`1.
`Smith describes an optical switch including an array of mirrors tiltable
`about two axes, permitting a mirror tilt axis to be used for switching and a
`perpendicular axis to be used for power control. Ex. 1009, Abstract,
`16:34–51; see also Ex. 1010, 6 (describing the same).
`In support of Petitioner’s contention that Smith is 102(e) prior art as
`of the September 22, 2000, filing date of the Smith ’683 Provisional,
`Petitioner’s declarant, Dr. Timothy J. Drabik, includes in his analysis
`citations to both Smith and the Smith ’683 Provisional. Ex. 1016, ¶ 98. The
`Petition also provides citations to both Smith and the Smith ’683 Provisional
`in identifying how Petitioner contends Smith discloses every limitation of
`the challenged claims. See Pet. 16.
`Patent Owner argues that Petitioner failed to make a threshold
`showing that Smith is entitled to the filing date of the Smith ’683
`Provisional. Prelim. Resp. 20–26. In particular, Patent Owner argues that
`Petitioner fails to show the Smith ’683 Provisional discloses beam-deflecting
`elements that are continuously controllable. Id. at 21. Although Patent
`Owner concedes the Smith ’683 Provisional “states that elements of ‘a
`mirror array’ can be rotated in ‘an analog fashion,’” Patent Owner disputes
`that rotating mirrors in “an analog fashion” meets the claimed “continuous
`control” limitation. Id. at 24. Patent Owner’s argument, on the present
`record, is not persuasive. The ’368 patent, itself, equates analog control to
`
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`IPR2015-00726
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`continuous control. Ex. 1001, 4:7–11, 7:6–8, 9:9–14. Next, Patent Owner
`argues the analog embodiment of the Smith ’683 Provisional was not carried
`over to Smith. Prelim. Resp. 26–30. In particular, Patent Owner contends
`that Smith uses step-wise control to adjust the positioning of mirrors, not the
`analog control disclosed in the Smith ’683 Provisional. Id. at 29. Yet,
`Patent Owner also argues that the Smith ’683 Provisional’s “use of the
`phrase ‘analog fashion’ means stepwise control.” Id. at 24. Patent Owner’s
`arguments on the present record are not persuasive. Petitioner has supported
`its contention that Smith is prior art with the testimony of Dr. Drabik. Based
`on the present record, Petitioner has made a threshold showing that Smith is
`102(e) prior art as of the filing date of the Smith ’683 Provisional.
`2.
`Bouevitch
`Bouevitch describes an optical device for rerouting and modifying an
`optical signal, including modifying means such as a MEMS array and a
`liquid crystal array which function as an attenuator when the device operates
`as a dynamic gain equalizer (DGE), and as a switching array when the
`device operates as a configurable optical add/drop multiplexer (COADM).
`Ex. 1002, Abstract. According to Petitioner, the COADM described in
`Bouevitch “uses MEMS mirrors with one axis of rotation.” Pet. 25.
`Carr
`3.
`Carr describes a MEMS mirror device comprised of a mirror movably
`
`coupled to a frame and an actuator for moving the mirror. Ex. 1005,
`Abstract. Petitioner contends “Carr discloses a two-dimensional array of
`double-gimbaled mirrors that can be tilted about two perpendicular torsion
`bars to any desired orientation,” as well as power control or attenuation by
`
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`tilting the MEMS mirrors such that only a portion of input signals enter the
`output fibers. Pet. 25, citing Ex. 1005, 3:44–47, 3:66–4:2, 11:13–20.
`
`4.
`Sparks
`
`Sparks describes an optical switch arranged to misalign the optical
`beam path to provide a predetermined optical output power. Ex. 1006,
`Abstract. According to Sparks, “[t]he system operates by controlling the
`movable micromirrors (16,26), which are fabricated using MEMS
`technology and are capable of two axis movement, to carefully align the
`beams so as to ensure that the maximum possible input optical signal is
`received at the output of the switch.” Id. at 4:43–46.
`
`5.
`Tew
`
`Tew describes a wavelength equalizer comprised of an input
`waveguide, an output waveguide, a wavelength separation device, and a
`micromirror array. Ex. 1007, Abstract. According to Petitioner, “Tew
`discloses a micromirror wavelength equalizer that allows each
`wavelength channel in a wavelength division multiplexed (WDM) system to
`be individually attenuated.” Pet. 57, citing Ex. 1007 ¶ 17; Ex. 1008, 5:1–5.
`Tew describes analog and digital modes of operating micromirror devices.
`Ex. 1007 ¶¶ 30–31. Petitioner states that Tew discloses that analog mode
`provides fine control over the degree to which the mirrors are rotated. Pet.
`58, citing Ex. 1007 ¶¶ 59, 78; Ex. 1008, 18:8–16, 24:1–10.
`C.
`Asserted Anticipation by Smith
`Petitioner asserts that claims 1–6, 9–12, and 15–22 are anticipated by
`Smith. Pet. 16–24. Petitioner, however, provides virtually no analysis of its
`contentions. For example, claim 1 requires a spatial array of beam-
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`deflecting elements “individually and continuously controllable in two
`dimensions to reflect its corresponding spectral channel to a selected one of
`said ports.” Petitioner provides a conclusory argument that “Smith also
`discloses that each MEMS mirror is individually and continuously
`controllable in two dimensions to reflect a channel to a port.” Pet. 18.
`Petitioner’s statement is followed by a string citation to six different portions
`of Smith and two figures from Smith. Id. We are unable to determine that
`Petitioner has made the necessary showing with respect to anticipation by
`Smith of claim 1 from Petitioner’s conclusory arguments and various
`citations to Smith. A petition must identify “specific portions of the
`evidence that support the challenge,” 37 C.F.R. § 42.104(b)(5), and include
`“a detailed explanation of the significance of the evidence,” 37 C.F.R.
`§ 42.22(a)(2). In the absence of such analysis, as here, we determine
`Petitioner has failed to demonstrate a reasonable likelihood of prevailing in
`showing any of claims 1–6, 9–12, and 15–22 are anticipated by Smith.
`
`Asserted Obviousness Over Smith and Tew
`D.
`Petitioner asserts that claims 1–6, 9–12, and 15–22 would have been
`obvious over Smith and Tew. Pet. 57–59. Petitioner purports to
`“incorporate” its discussion of Smith as an anticipatory reference in support
`of its obviousness ground based on the addition of Tew, arguing that if
`Smith does not adequately disclose the “continuously” limitation, Tew does.
`Id. at 57. As discussed above with respect to anticipation by Smith,
`Petitioner does not remedy its failure to provide “a detailed explanation of
`the significance of the evidence” to show that Smith discloses all of the
`elements of the challenged claims other than the “continuously” limitation.
`
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`See 37 C.F.R. § 42.22(a)(2). In the absence of such analysis, we determine
`Petitioner has not demonstrated a reasonable likelihood of prevailing in
`showing any of claims 1–6, 9–12, and 15–22 as obvious over Smith and
`Tew.
`
`Asserted Obviousness Over Bouevitch and Carr
`E.
`Petitioner asserts that claims 1, 2, 5, 6, 9–12, and 15–21 would have
`been obvious over Bouevitch and Carr. Pet. 24–47. Petitioner provides a
`claim chart identifying how the references disclose the elements of each
`claim and relies upon the declaration of Dr. Drabik for support. Id. at
`31–47. Petitioner contends that a person of ordinary skill in the art would
`have been motivated to combine Bouevitch and Carr for various reasons,
`including that the addition of the two-axis mirrors of Carr in the COADM of
`Bouevitch merely would be using both known techniques to improve similar
`devices and known elements to yield predictable results. Id. at 26–27.
`Patent Owner argues that neither Bouevitch nor Carr disclose
`continuously controlled elements. Prelim. Resp. 30–32. According to
`Patent Owner, Carr’s description of mirrors capable of being tilted to any
`desired location does not equate to continuously controllable elements, as
`claimed, or to continuously “movable” elements. Id. at 32. Patent Owner,
`however, offers no express construction of “continuously controllable,” in
`support of its argument. Id. at 11–12. Patent Owner also asserts that
`Petitioner failed to identify any claim limitation lacking in Bouevitch. Id. at
`34–35. To the contrary, the Petition clearly states that Bouevitch uses
`MEMS mirrors with one axis of rotation, while the claims require elements
`controllable in two dimensions. See Pet. 25.
`
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`With respect to claims 11 and 21, Patent Owner argues that “the
`portion of Bouevitch that [Petitioner] relies on discloses ‘collimating,’ not
`‘focusing,’–which are two different things.” Prelim. Resp. 33. Patent
`Owner asserts that “focus” has a very specific meaning in the field of optics
`having to do with the focal point of a lens or creating conditions to make a
`clear, sharp image, which is different from “collimate.” Id. at 33–34. Patent
`Owner, however, identifies no corresponding disclosure in the specification
`of the ’368 patent in support of its proposed construction of “focus.” On the
`present record we are not persuaded by Patent Owner’s argument.
`We have considered all of the arguments asserted by Patent Owner
`and determine, based on the present record, that Petitioner has demonstrated
`a reasonable likelihood that it would prevail in showing claims 1, 2, 5, 6,
`9–12, and 15–21 unpatentable as obvious over Bouevitch and Carr.
`F.
`Asserted Obviousness Over Bouevitch, Carr, and Tew
`Petitioner asserts that claims 1, 2, 5, 6, 9–12, and 15–21 would have
`been obvious over Bouevitch, Carr, and Tew. Pet. 59. In its discussion of
`this ground, Petitioner provides virtually no analysis in support other than to
`argue that if Bouevitch and Carr fail to disclose the “continuously”
`limitation, the claims would have been obvious with the addition of Tew.
`Id. Petitioner’s assertion that other grounds, including a ground based on
`Smith, are incorporated by reference is not “a detailed explanation of the
`significance of the evidence” sufficient to support obviousness over
`Bouevitch, Carr, and Tew with respect to any claim. See 37 C.F.R.
`§ 42.22(a)(2). In the absence of such analysis, we determine Petitioner has
`not demonstrated a reasonable likelihood of prevailing in showing any of
`
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`Patent RE42,368 E
`
`claims 1, 2, 5, 6, 9–12, and 15–21 as obvious over Bouevitch, Carr, and
`Tew.
`
`Asserted Obviousness Over Bouevitch and Sparks
`G.
`Petitioner asserts that claims 1–4, 17, and 22 would have been
`obvious over Bouevitch and Sparks. Pet. 47–57. Petitioner provides a claim
`chart identifying how the references disclose the elements of each claim and
`relies upon the declaration of Dr. Drabik for support. Id. at 51–57.
`Petitioner contends that a person of ordinary skill in the art would have been
`motivated to combine Bouevitch and Sparks for various reasons, including
`that the addition of the two-axis moveable MEMS mirrors of Sparks in the
`COADM of Bouevitch merely would be substituting known elements to
`yield predictable results. Id. at 48.
`Patent Owner argues that neither Bouevitch nor Sparks discloses a
`spatial array of beam deflecting elements. Prelim. Resp. 36–38. According
`to Patent Owner, because the ’368 patent describes an array of beam
`deflecting elements as being arranged along an axis, the beam deflecting
`elements of Sparks are not an array because they are not along an axis. Id. at
`37. Patent Owner, however, does not propose expressly a construction of
`the claim term “array,” and cites no other evidence in support of its
`argument. Patent Owner also asserts that Petitioner failed to identify any
`claim limitation lacking in Bouevitch. Id. at 39. To the contrary, the
`Petition clearly states that Bouevitch uses MEMS mirrors with one axis of
`rotation, while the claims require elements controllable in two dimensions.
`See Pet. 25.
`
`18
`
`
`
`IPR2015-00726
`Patent RE42,368 E
`
`
`With respect to claims 3 and 22, Patent Owner asserts that the Petition
`fails to articulate how a person of ordinary skill in the art would have been
`able to add servo control features to Bouevitch without disrupting
`Bouevitch’s operation or why such a person would have done so. Prelim.
`Resp. 38–39. Petitioner, as supported by Dr. Drabik, asserts that the servo
`control of Sparks was an alternative to the detector array used for purposes
`of gain equalization in Bouevitch. Pet. 50–51. As noted above, the ’368
`patent also states a “skilled artisan will know how to implement a suitable
`spectral monitor along with an appropriate processing unit to provide a
`servo-control assembly in a WSP-S apparatus according to the present
`invention, for a given application.” Ex. 1001, 12:11–15.
`We have considered all of the arguments asserted by Patent Owner
`and determine, based on the present record, that Petitioner has demonstrated
`a reasonable likelihood that it would prevail in showing claims 1–4, 17, and
`22 unpatentable as obvious over Bouevitch and Sparks.
`H.
`Asserted Obviousness Over Bouevitch, Sparks, and Tew
`Petitioner asserts that claims 1–4, 17, and 22 would have been
`obvious over Bouevitch, Sparks, and Tew. Pet. 60. In its discussion of this
`ground, Petitioner provides virtually no analysis in support other than to
`argue that if Bouevitch and Sparks fail to disclose the “continuously”
`limitation, the claims would have been obvious with the addition of Tew.
`Id. Petitioner’s assertion that other grounds, including a ground based on
`Smith, are incorporated by reference is not “a detailed explanation of the
`significance of the evidence” sufficient to support obviousness over
`Bouevitch, Sparks, and Tew with respect to any claim. See 37 C.F.R.
`
`19
`
`
`
`IPR2015-00726
`Patent RE42,368 E
`
`§ 42.22(a)(2). In the absence of such analysis, we determine Petitioner has
`not demonstrated a reasonable likelihood of prevailing in showing any of
`claims 1–4, 17, and 22 as obvious over Smith and Tew.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that inter partes review of U.S. Patent No. RE42,368 E is
`instituted in IPR2015-00726 with respect to the following grounds of
`unpatentability:
`(1) claims 1, 2, 5, 6, 9–12, and 15–21 as obvious over Bouevitch and
`Carr under 35 U.S.C. § 103(a); and
`(2) claims 1–4, 17, and 22 as obvious over Bouevitch and Sparks
`under 35 U.S.C. § 103(a);
`FURTHER ORDERED that all other asserted grounds other than
`those specifically instituted above are denied; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of U.S. Patent No. RE42,368 E is hereby instituted in
`IPR2015-00726, commencing on the entry date of this Order, and pursuant
`to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the
`institution of a trial.
`
`
`
`
`20
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`
`
`IPR2015-00726
`Patent RE42,368 E
`
`For PETITIONER:
`
`Christopher E. Chalsen
`Lawrence T. Kass
`Nathaniel T. Browand
`Suraj K. Balusu
`MILBANK, TWEED, HADLEY & MCCLOY LLP
`cchalsen@milbank.com
`lkass@milbank.com
`nbrowand@milbank.com
`sbalusu@milbank.com
`
`For PATENT OWNER:
`
`Jason D. Eisenberg
`Robert Greene Sterne
`Jon E. Wright
`Jonathan Tuminaro
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-PTAB@skgf.com
`rsterne-PTAB@skgf.com
`jwright-PTAB@skgf.com
`jtuminar-PTAB@skgf.com
`
`21
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