throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 40
`Entered: February 17, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC., CIENA CORPORATION,
`CORIANT OPERATIONS, INC., CORIANT (USA) INC., and
`FUJITSU NETWORK COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-012761
`Patent RE42,678 E1
`____________
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`1 IPR2015-00894 was joined with IPR2014-01276 on September 22, 2015,
`by Order in IPR2015-00894, Paper 12 (IPR2014-01276, Paper 25).
`
`FNC 1039
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`
`I.
`INTRODUCTION
`Petitioner, Cisco Systems, Inc., Ciena Corporation, Coriant
`Operations, Inc., Coriant (USA) Inc., and Fujitsu Network Communications,
`Inc., filed petitions requesting an inter partes review of claims 1–4, 9, 10,
`13, 17, 19–23, 27, 29, 44–46, 53, and 61–65 of U.S. Patent No. RE42,678
`E1 (“the ’678 patent”). Paper 2 (“Petition” or “Pet.”); see also IPR2015-
`00894, Paper 5. Based on the information provided in the Petition, and in
`consideration of the Preliminary Response (Paper 7; see also IPR2015-
`00894, Paper 10) of Patent Owner, Capella Photonics, Inc., we instituted a
`trial pursuant to 35 U.S.C. § 314(a) of: (1) claims 1–4, 9, 10, 13, 19–23, 27,
`44–46, and 61–65 as obvious over Bouevitch,2 Smith,3 and Lin4 under 35
`U.S.C. § 103(a); and, (2) claims 17, 29, and 53 as obvious over Bouevitch,
`Smith, Lin, and Dueck5 under 35 U.S.C. § 103(a). Paper 8 (“Institution
`Decision”); see also IPR2015-00894, Paper 11.
`After institution of trial, Patent Owner filed a Response (Paper 15,
`“Response” or “PO Resp.”), and Petitioner filed a Reply (Paper 20, “Pet.
`Reply”). The Petition is supported by the Declaration of Dr. Dan Marom
`(Ex. 1028). The Response is supported by the Declaration of Dr. Alexander
`V. Sergienko (Ex. 2004).
`
`
`
`
`2 U.S. Patent No. 6,498,872 B2, issued December 24, 2002 (Ex. 1003,
`“Bouevitch”).
`3 U.S. Patent No. 6,798,941 B2, issued September 28, 2004 (Ex. 1004,
`“Smith”).
`4 U.S. Patent No. 5,661,591, issued August 26, 1997 (Ex. 1010, “Lin”).
`5 U.S. Patent No. 6,011,884, issued January 4, 2000 (Ex. 1021, “Dueck”).
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`
`A transcript of the Oral Hearing conducted on November 5, 2015, is
`entered. Paper 39 (“Tr.”).6
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons that follow, Petitioner has shown by
`a preponderance of the evidence that claims 1–4, 9, 10, 13, 17, 19–23, 27,
`29, 44–46, 53, and 61–65 of the ’678 patent are unpatentable.
`II.
`BACKGROUND
`The ’678 patent (Ex. 1001)
`A.
`The ’678 patent, titled “Reconfigurable Optical Add-Drop
`Multiplexers with Servo Control and Dynamic Spectral Power Management
`Capabilities,” reissued September 6, 2011, from U.S. Patent No. RE 39,397
`(“the ’397 patent”). Ex. 1001. The ’397 patent reissued November 14,
`2006, from U.S. Patent No. 6,625,346 (“the ’346 patent”). Id. The ’346
`patent issued September 23, 2003, from U.S. Patent Application
`No. 09/938,426, filed August 23, 2001.
` According to the ’678 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
`
`
`6 Patent Owner’s objections to Petitioner’s demonstrative slides for the oral
`hearing are denied because we are not persuaded that Petitioner’s
`demonstratives add new argument. See Paper 36. Moreover, demonstrative
`slides are not evidence and have not been relied upon for this final decision.
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`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 ’678 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. 7. The WSR
`described in the ’678 patent may be used to construct dynamically
`reconfigurable OADMs for WDM optical networking applications. Id.
`Figure 1A of the ’678 patent is reproduced below.
`
`
`Figure 1A depicts wavelength-separating-routing (WSR) apparatus 100, in
`accordance with the ’678 patent. WSR apparatus 100 is composed of an
`array of fiber collimators 110 (multiple input/output ports, including input
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`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.
`Figure 1B of the ’678 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.
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`
`According to the ’678 patent:
`[e]ach 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.
`
`Figure 3 of the ’678 patent is reproduced below.
`
`
`
`
`Similar to Figure 1A, above, Figure 3 also shows a WSR apparatus as
`described by the ’678 patent. Id. at 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
`micromirror 103 must be pivotable biaxially in this case (in order to direct
`its corresponding spectral channel to any one of the output ports).” Id. at
`10:43–46.
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`
`The WSR also may incorporate a servo-control assembly (together
`termed a “WSR-S apparatus”). Id. at 4:65–67. According to the ’678
`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 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 ’678 patent is reproduced below.
`
`
`
`
`Figure 5 depicts OADM 500 in accordance with the ’678 patent composed
`of WSR-S (or WSR) apparatus 510 and optical combiner 550. Id. at 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
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`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 an existing port
`570, providing an output multi-wavelength optical signal. Id. at 12:56–58.
`B.
`Illustrative Claims
`Challenged claims 1, 21, 44, and 61 of the ’678 patent are
`independent. Challenged claims 2–4, 9, 10, 13, 17, 19, and 20 ultimately
`depend from claim 1; claims 22, 23, 27, and 29 ultimately depend from
`claim 21; claims 45, 46, and 53 ultimately depend from claim 44; and,
`claims 62–65 ultimately depend from claim 61. Claims 1, 21, and 61 of the
`’678 patent are illustrative of the claims at issue:
`1. A wavelength-separating-routing
`comprising:
`a) multiple fiber collimators, providing an input port
`for a multi-wavelength optical signal and a plurality of output
`ports;
`
`apparatus,
`
`b) a wavelength-separator, for separating said multi-
`wavelength optical signal from said input port into multiple
`spectral channels;
`c) a beam-focuser, for focusing said spectral channels
`into corresponding spectral spots; and
`d) a spatial array of channel micromirrors positioned
`such that each channel micromirror receives one of said
`spectral channels, said channel micromirrors being pivotal
`about two axes and being individually and continuously
`to reflect [[said]] corresponding received
`controllable
`spectral channels into any selected ones of said output ports
`and to control the power of said received spectral channels
`coupled into said output ports.
`
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`Ex. 1001, 14:6–23 (emphases in original, “[[ ]]” indicating matter in
`the first reissue that forms no part of the second reissue, and matter in
`italics indicating additions made by second reissue).
`21. A servo-based optical apparatus comprising:
`a) multiple fiber collimators, providing an input port
`for a multi-wavelength optical signal and a plurality of output
`ports;
`
`b) a wavelength-separator, for separating said multi-
`wavelength optical signal from said input port into multiple
`spectral channels;
`c) a beam-focuser, for focusing said spectral channels
`into corresponding spectral spots; and
`d) a spatial array of channel micromirrors positioned
`such that each channel micromirror receives one of said
`spectral channels,
`said channel micromirrors being
`individually controllable to reflect said spectral channels into
`selected ones of said output ports; and
`e) a servo-control assembly, in communication with
`said channel micromirrors and said output ports, for
`maintaining a predetermined coupling of each reflected
`spectral channel into one of said output ports.
`Ex. 1001, 15:29–48.
`61. A method of performing dynamic wavelength
`separating and routing, comprising:
`a) receiving a multi-wavelength optical signal from an
`input port;
`b) separating said multi -wavelength optical signal into
`multiple spectral channels;
`c) focusing said spectral channels onto a spatial array
`of corresponding beam-deflecting elements, whereby each
`beam-deflecting element receives one of said spectral
`channels; and
`d) dynamically and continuously controlling said
`beam-deflecting elements [[, thereby directing]] in two
`dimensions to direct said spectral channels into [[a plurality]]
`any selected ones of said output ports and to control the
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`power of the spectral channels coupled into said selected
`output ports.
`Ex. 1001, 18:55–19:3 (emphases in original, with “[[ ]]” indicating
`matter in the first reissue that forms no part of the second reissue, and
`matter in italics indicating additions made by second reissue).
`III. ANALYSIS
`Real Party-In-Interest
`A.
`Patent Owner contends that trial should be terminated because
`Petitioner did not identify all real parties-in-interest. PO Resp. 60. Patent
`Owner does not expressly state who else it contends is a real party-in-
`interest or why. Patent Owner merely identifies a supplier “of the accused
`products,” and asserts that supplier is “is required to indemnify . . . pursuant
`to California Commercial Code § 2312(3).” Id. Patent Owner provides no
`explanation of its contention, fails to analyze any facts relative to its
`contention, and directs us to no legal authority in support of its contention.
`Accordingly, we are not persuaded that trial should be terminated under the
`circumstances presented.
`Claim Construction
`B.
`Only terms which are in controversy need to be construed, and then
`only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`“to reflect” and “to control”
`1.
`Independent claims 1 and 44 each recite outside of the preamble:
`[A] spatial array of channel micromirrors positioned such that
`each channel micromirror receives one of said spectral channels,
`said channel micromirrors being pivotal about two axes and
`being individually and continuously controllable to reflect
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`corresponding received spectral channels into any selected ones
`of said output ports and to control the power of said received
`spectral channels coupled into said output ports.
`Ex. 1001, 14:16–23, 17:43–52 (emphases added and omitted). Independent
`claim 61 contains a similar limitation.7 Independent claim 21 recites “to
`reflect said spectral channels,” but does not contain a “to control” limitation.
`Id. at 15:43. Petitioner contends that the “to reflect” and “to control” clauses
`are non-functional clauses that say nothing about the claimed structure, and,
`therefore, are non-limiting. Pet. 10–11. We disagree. Although “apparatus
`claims cover what a device is, not what a device does,” the language at issue
`here describes the function that the apparatus must be capable of performing.
`Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
`(Fed.Cir.1990); see also K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363
`(Fed. Cir. 1999) (explaining that functional language is an additional
`limitation in the claim).8 In that regard, the apparatus must be capable of
`performing the functions “to reflect” and “to control,” and, therefore, the
`pertinent clauses are functional rather than non-functional. Accordingly, the
`claimed “spatial array of channel micromirrors” is further limited to a spatial
`array that satisfies the “to reflect” and “to control” functional limitations.
`
`
`7 Claim 61 recites: “dynamically and continuously controlling said beam-
`deflecting elements in two dimensions to direct said spectral channels into
`any selected ones of said output ports and to control the power of the
`spectral channels coupled into said selected output ports.” Ex. 1001, 18:65–
`19:3 (emphases omitted).
`8 For the same reasons we decline to adopt for purposes of this decision
`Petitioner’s proposition that other claim phrases reciting “wherein,”
`“whereby,” and “for” should be considered non-limiting. See Pet. 10–11.
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`“continuously controllable”
` 2.
` Claims 1 and 44 require “a spatial array of channel micromirrors . . .
`being individually and continuously controllable.” Ex. 1001, 14:16–20;
`17:43–47. Similarly, claim 61 requires “dynamically and continuously
`controlling said beam-deflecting elements.” Id. at 18:65–66. Petitioner
`asserts that “continuously controllable” should be construed to mean “under
`analog control.” Pet. 11. Petitioner identifies the following disclosures of
`the ’678 patent as supporting its proposed construction:
`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], 4:7–11). 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.” ([Ex. 1001], 9:9–14). Yet another passage states
`that “channel micromirrors 103 are individually controllable and
`movable, e.g., pivotable (or rotatable) under analog (or
`continuous) control.” (Id., 7:6–8).
`Pet. 11–12.
`Dr. Marom also explains that “MEMS can be operated using analog
`voltage for continuous control,” and states that a person of ordinary skill in
`the art would understand continuous control “is achieved via analog voltage
`control.” Ex. 1028 ¶¶ 37, 63.
`Patent Owner suggests in its Response that analog control does not
`necessarily provide the claimed “continuous control” (PO Resp. 46 n.8), but
`during the oral hearing counsel for Patent Owner indicated that
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`“continuously controllable” was defined as “analog control,” and then
`clarified that Patent Owner “did not offer a specific definition of
`continuously control.” Tr. 57:1–58:2. Additionally, according to
`Dr. Sergienko, “continuous control cannot be shown by the input signal (i.e.,
`analog vs. digital) alone.” Ex. 2004 ¶ 181.
`Based on all of the evidence presented, we are not persuaded that
`“continuously controllable” is limited to “analog control,” or that “analog
`control” necessarily corresponds to “continuous” control under all
`circumstances. Indeed, counsel for Petitioner suggested that, although the
`art at issue disclosed analog control that provided continuous control,
`counsel further recognized that it may operate differently outside of that art.
`See Tr. 30:24–31–6. We determine that “continuously controllable,” in light
`of the specification of the ’678 patent, encompasses “under analog control
`such that it can be continuously adjusted.”
`“providing”
`3.
`Claims 1, 21, and 44 recite “collimators, providing an input port . . .
`and a plurality of output ports.” Petitioner contends that the ’678 patent
`does not use “providing” outside of its ordinary and customary meaning “to
`make available.” Pet. Reply 8 (citing Ex. 1054). Patent Owner did not
`propose an express meaning of “providing,” but according to Petitioner,
`Patent Owner implicitly argues that it required some element of exclusivity
`and one-to-one correspondence. Id. at 9–10. Indeed, Patent Owner argues
`that “the structure or elements making up the ports are collimators,” and that
`“[a]s uniformly described and claimed in the ’678 [p]atent, multiple fiber
`collimators provide at least one input port and respective multiple output
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`ports.” PO Resp. 35. To the extent Patent Owner can be understood to be
`arguing for a construction of “providing” that requires that only one
`collimator directly provide one port, Patent Owner has provided no
`persuasive support for such a contention. See also Pet. Reply 10–11 (noting
`that a provisional application to the ’678 patent disclosed ports being made
`available through both collimators and circulators). In light of the
`specification of the ’678 patent, we apply the plain and ordinary meaning of
`“providing” as “making available.”
`“port”
`4.
`Claim 61 recites “receiving a multi-wavelength optical signal from an
`input port,” and “controlling said beam deflecting elements . . . to direct said
`spectral channels into . . . output ports.” Ex. 1001, 18:57–19:1. Patent
`Owner contends that in the ’678 patent “the structure or elements making up
`the ports are collimators.” PO Resp. 34. Patent Owner offers no definition
`of “port,” and does not suggest that the ’678 patent provides an express
`definition of the term, but instead argues that a “port,” as claimed, is not a
`“circulator port” because the ’678 patent “disavows circulator-based optical
`systems.” Id. at 35. We disagree.
`There is no dispute that the ordinary and customary meaning of “port”
`encompasses circulator ports, and, indeed, any “point of entry or exit of
`light.” See Dr. Sergienko Deposition Transcript (Ex. 1049), 43:16–23,
`45:12–13 (“The circulator ports are ports with constraints.”). Nor does the
`’678 patent equate the term “port” to “collimator,” as both “port” and
`“collimator” appear separately in the claims of the ’678 patent. Ex. 1001,
`14:8–10. We have considered the testimony of Dr. Sergienko as well
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`(Ex. 2004 ¶¶ 146–167), and find that even if certain fiber collimators serve
`as ports in the ’678 patent, that does not redefine the term “port” to mean
`“collimator.” See id. ¶ 154. Thus, the primary issue is whether the ’678
`patent disavows circulator ports from the scope of the term “port.”
`Although the broad scope of a claim term may be intentionally
`disavowed, “this intention must be clear,” see Teleflex, Inc. v. Ficosa N. Am.
`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) (“The patentee may
`demonstrate an intent to deviate from the ordinary and accustomed meaning
`of a claim term by including in the specification expressions of manifest
`exclusion or restriction, representing a clear disavowal of claim scope,”),
`and cannot draw limitations into the claim from a preferred embodiment.”
`Conoco, Inc. v. Energy & Envtl. Int’l., L.C., 460 F.3d 1349, 1357 (Fed. Cir.
`2006).
`Patent Owner fails to show any “expressions of manifest exclusion or
`restriction, representing a clear disavowal of claim scope” with respect to the
`use of “port” in the ’678 patent. Patent Owner argues that the ’678 patent
`provides a scalable system without circulator ports (PO Resp. 9–10), that a
`provisional application to the ’678 patent “describes existing add/drop
`architectures that had a number of problems” (PO Resp. 36), that Dr. Marom
`obtained a patent in which collimators serve as the ports (PO Resp. 40–41),
`and that “[b]ecause the inventors of the ’678 [p]atent consistently
`emphasized the limitations of circulator-based switches and the ’678 [p]atent
`discloses an alternative configuration, a [person of ordinary skill in the art]
`would have understood that the inventors were disavowing the use of optical
`circulators.” PO Resp. 37 (citing Ex 2004 ¶ 161).
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`We do not discern any “clear disavowal of claim scope” from the
`arguments advanced by Patent Owner. Dr. Sergienko merely states that a
`person of ordinary skill in the art “would have read the ’678 patent as
`teaching away from or at the least discouraging the use of circulators.”
`Ex. 2004, ¶ 160. Even if the ’678 patent were viewed as Dr. Sergienko
`suggests, teaching away or discouragement is not disavowal. Moreover,
`Petitioner further demonstrates that a provisional application to the ’678
`patent in fact uses circulator ports as “ports.” Pet. Reply 11–13 (citing
`Ex. 1008, 4, Fig. 9). Such usage undermines Patent Owner’s disavowal
`contention. We have considered all of the arguments advanced by Patent
`Owner in its effort to redefine “port” as excluding “circulator ports” (PO
`Resp. 34–41), and find insufficient support for Patent Owner’s contention
`that the ’678 patent disavows circulator ports from the scope of the term
`“port.” We determine that “port,” in light of the specification of the ’678
`patent, encompasses “circulator port.”
`“beam-focuser”
`5.
`Claims 1, 21, and 44 require a “beam-focuser, for focusing said
`spectral channels into corresponding spectral spots.” Ex. 1001, 14:14–15,
`15:37–38, 17:41–42. The ’678 patent states that “[t]he beam-focuser may be
`a single lens, an assembly of lenses, or other beam focusing means known in
`the art.” Id. at 4:20–22.
`Petitioner contends that “beam-focuser” is “a device that directs a
`beam of light to a spot.” Pet. 14. According to Petitioner:
`The Summary of the ’678 patent states that the “beam-focuser
`focuses the spectral channels into corresponding spectral spots.”
`([Ex. 1001], 3:63–64.) The specification also explains that the
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`beams of light are “focused by the focusing lens 102 into a spatial
`array of distinct spectral spots (not shown in FIG. lA) in a one-
`to-one correspondence.” (Id., 6:65–7:5.) The MEMS mirrors are
`in turn “positioned in accordance with the spatial array formed
`by the spectral spots, such that each channel micromirror
`receives one of the spectral channels.” (Id.)
`Id. at 14–15. Patent Owner does not dispute expressly Petitioner’s proposed
`construction, and provides no alternative construction of “beam-focuser.”
`Consistent with Petitioner’s proposed construction, Dr. Sergienko testified
`that “focusing means bringing of the energy in the original image limited to
`the focal spot.” Dr. Sergienko Deposition Transcript (Ex. 1049), 245:17–19.
`We agree that, based on the specification of the ’678 patent, “beam-focuser”
`means “a device that directs a beam of light to a spot.”
`“servo-control assembly”
`6.
`Claims 2–4, 21–23, 45, and 46 recite a “servo-control assembly.”
`Petitioner asserts “servo-control assembly” means “feedback-based control
`assembly.” Pet. 12. Patent Owner offers no construction of the term.
`We are not persuaded that “servo” necessarily means “feedback-
`based,” as suggested by Petitioner, merely because the ’678 patent describes
`a processing unit within a servo-control assembly as using power
`measurements from the spectral monitor to provide feedback control of the
`channel mirrors. Id. at 12–13. the ’678 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.” Ex. 1001, 4:47–50. Further, “[i]f the WSR
`apparatus includes an array of collimator-alignment mirrors . . . the servo-
`control assembly may additionally provide dynamic control of the
`
`17
`
`

`
`IPR2014-01276
`Patent RE42,678 E1
`
`collimator-alignment mirrors. Id. at 4:56–60. According to the ’678 patent,
`“[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.
`Based on the specification and the present record, a “servo-control
`assembly” encompasses a spectral monitor and processing unit to monitor
`spectral channel power levels and control channel micro mirrors on an
`individual basis. See id. at 11:10–36.
`“servo-based”
`7.
`Claims 21–23, 27, and 29 recite a “servo-based optical apparatus.”
`Petitioner asserts that “servo-based” means “feedback-based control.” Pet.
`12. Patent Owner offers no construction of the term.
`The ’678 patent does not use the term “servo-based” outside of the
`preamble of the claims.
`If . . . the body of the claim fully and intrinsically sets forth
`the complete invention, including all of its limitations, and the
`preamble offers no distinct definition of any of the claimed
`invention’s limitations, . . . then the preamble is of no
`significance to claim construction because it cannot be said to
`constitute or explain a claim limitation.
`
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, (Fed. Cir.
`1999) (citations omitted). The bodies of claims 21–23, 27, and 29 fully and
`intrinsically set forth the complete invention; therefore, the use of “servo-
`based” in the preamble does not serve as a limitation and need not be
`construed.
`
`18
`
`

`
`IPR2014-01276
`Patent RE42,678 E1
`
`
`“dynamically”
`8.
`Claim 61 recites “[a] method of performing dynamic wavelength
`separating and routing, comprising: . . . dynamically and continuously
`controlling said beam-deflecting elements in two dimensions.” Ex. 1001,
`18:65–67. Petitioner contends that “[t]he plain and ordinary meaning of
`‘dynamically’ controlling in the context of the ’678 patent is ‘during
`operation.’” Pet. 57 (citing Ex. 1001, 3:22–23 (contrasting routing that is
`fixed during operation: “the [prior art] wavelength routing is intrinsically
`static, rendering it difficult to dynamically reconfigure these OADMs.”); Ex.
`1028 ¶¶ 142–144). It is unclear how Petitioner equates “dynamically” to
`“during operation” from the citation provided. Patent Owner does not
`propose a definition of “dynamically.”
`The ’678 patent uses “dynamic” and “dynamically” throughout the
`specification, stating, for example, that “[t]he power levels of the spectral
`channels in the output ports may be dynamically managed according to
`demand.” Ex. 1001, 11:30–32. We determine from the specification that
`the ’678 patent uses “dynamically” in contrast to “static,” in accordance with
`its ordinary and customary meaning.
`9.
`Additional Claim Terms
`Petitioner addresses several additional claim terms, including
`“spectral monitor” and “in two dimensions.” Pet. 13–16. For purposes of
`this decision, no express construction of any additional claim term is
`necessary.
`
`19
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`

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`IPR2014-01276
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`
`
`References Asserted as Prior Art
`C.
`Petitioner relies on Bouevitch, Smith, Lin, and Dueck with respect to
`its assertion that the challenged claims would have been obvious.
`
`1.
`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. 1003, Abstract. According to Petitioner, the COADM described in
`Bouevitch “uses MEMS mirrors with 1 axis of rotation.” Pet. 18. Petitioner
`also contends that the Bouevitch COADM controls the power of its output
`channels by tilting beam-deflecting mirrors at varying angles. Id.
`
`Smith
`2.
`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. 1004, Abstract, 16:34–
`51; see also Ex. 1005 (the Smith ’683 Provisional), 6 (describing the same).
`Petitioner contends that “to the extent Bouevitch does not disclose 2-axis
`mirrors and their intended use for power control, both the Smith Patent and
`the Smith [’683] Provisional each does so.” Pet. 19. Petitioner asserts that
`Smith is § 102(e) prior art as of the September 22, 2000, filing date of the
`Smith ’683 Provisional. Pet. 17. Patent Owner argues that Smith is not
`prior art to the ’678 patent because the portions of Smith Petitioner relies
`
`20
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`IPR2014-01276
`Patent RE42,678 E1
`
`upon are not entitled to the filing date of the Smith ’683 Provisional.
`PO Resp. 58–60.
`During this proceeding, the Federal Circuit issued a decision in
`Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375 (Fed.
`Cir. 2015), addressing the necessary showing for a patent to claim priority
`from the filing date of its provisional application. The court found that the
`petitioner in the underlying inter partes review proceeding did not
`demonstrate that the prior art patent relied upon

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