UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FUJITSU NETWORK COMMUNICATIONS, INC.
`Petitioner
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`v.
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`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`Inter Partes Review Case No. IPR2015-00727
`Patent No. RE42,678
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`FUJITSU NETWORK COMMUNICATIONS, INC.
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`Inter Partes Review Case No. IPR2015-00727
`Patent No. RE42,678
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`TABLE OF CONTENTS
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`INTRODUCTION ......................................................................................... 1
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`RESPONSES TO PATENT OWNER’S ARGUMENTS ............................. 1
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`H.
`
`I.
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`Patent Owner’s Estoppel Argument Is Erroneous ............................... 1
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`The Use of 2-Axis Mirrors with Angular Misalignment for Power
`Control Would Have Been Obvious in View of the Combined
`Teachings of Bouevitch and Either Carr or Sparks ............................. 4
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`Patent Owner Does Not Rebut Petitioner’s Reasons for Combination
` ...........................................................................................................10
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`Patent Owner’s Categorization of Optical Switches Fails to
`Distinguish the Claims Over Bouevitch, Carr and Sparks ................13
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`Patent Owner’s Attacks on the Combination of Bouevitch with Carr
`or Sparks Are Erroneous....................................................................14
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`Patent Owner Fails to Deny that Bouevitch, Carr and Sparks Each
`Disclose Continuous Control .............................................................16
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`Bouevitch, Carr and Sparks Each Disclose the Claimed “Ports.” .....18
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`Petitioner’s Obviousness Showings Concerning the Dependent
`Claims Are Unrebutted ......................................................................22
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`The Testimony of Petitioner’s Expert Is Well-Supported and Patent
`Owner Has Not Shown any Grounds for Possible Bias ....................22
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`1. Dr. Ford’s Declaration Is His Own Testimony and Capella
`Examined Dr. Ford ............................................................................22
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`2. There Is No Conflict Between Dr. Ford’s Declaration and a 2006
`Article ................................................................................................25
`
`i
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`
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`I.
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`II.
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`I.
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`
`INTRODUCTION
`The Patent Owner has failed to present any reason for the Board to depart
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`from its determination that Petitioner Fujitsu Network Communications, Inc.
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`(“FNC” or “Petitioner”) should prevail on all challenged claims.
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`II. RESPONSES TO PATENT OWNER’S ARGUMENTS
`Patent Owner’s Estoppel Argument Is Erroneous
`A.
`Patent Owner contends that this IPR “should be terminated under 35 U.S.C.
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`§ 315(e)(1) as to any claim that is later confirmed in” IPR2014-01276. Resp. at
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`20. As an initial matter, the Board determined that all challenged claims are
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`unpatentable in IPR2014-01276 and thus Patent Owner’s argument should be
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`dismissed as moot since no challenged claim has been confirmed. See Ex. 1039 at
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`51.
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`Moreover, the estoppel of § 315(e)(1) does not apply to FNC based on
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`IPR2014-01276 because FNC was not a petitioner in that IPR. Section 315(e)(1)
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`states:
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`The petitioner in an inter partes review of a claim in a patent under
`this chapter that results in a final written decision under section
`318(a), or the real party in interest or privy of the petitioner, may not
`request or maintain a proceeding before the Office with respect to that
`claim on any ground that the petitioner raised or reasonably could
`have raised during that inter partes review.
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`1
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`35 U.S.C. § 315(e)(1) (emphasis added).
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`PTO rules define “petitioner” as “the party filing a petition requesting that a
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`trial be instituted.” 37 C.F.R. § 42.2 (emphasis added). FNC was not a party to
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`the filing of the petition requesting institution of the trial in IPR2014-01276. See
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`Cisco Systems, Inc. v. Capella Photonics, Inc., IPR2014-01276, Paper No. 2
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`(P.T.A.B. Aug. 12, 2014). Rather, more than seven months after the Board
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`instituted the trial in that IPR, Cisco Systems, Inc. v. Capella Photonics, Inc.,
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`IPR2014-01276, Paper No. 8 (P.T.A.B. Feb. 18, 2015), FNC was joined by order
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`of the Board. See Ciena Corp. v. Capella Photonics, Inc., IPR2015-00894, Paper
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`No. 12 (P.T.A.B. Sept. 22, 2015). Thus, FNC is not a petitioner in IPR2014-01276
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`under PTO rules.
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`The decisions cited by Patent Owner are inapposite and actually confirm that
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`the party must have filed the petition in the earlier IPR before estoppel could attach
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`in a subsequent IPR. Unlike here where FNC did not file the petition in IPR2014-
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`01276, Apotex filed the petitions in both of the IPRs at issue where it was found to
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`be estopped. Apotex Inc. v. Wyeth LLC, IPR2015-00873, Paper No. 8 at 1
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`(P.T.A.B. Sept. 16, 2015). The same was true in the Dell IPRs. Dell Inc. v. Elecs.
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`& Telecomms. Research, Inst., IPR2015-00549, Paper No. 10 at 1 (P.T.A.B. Mar.
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`26, 2015). Patent Owner has no support for its position that contradicts the PTO
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`Rule. Thus, Patent Owner’s premise that FNC qualifies as a petitioner by being
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`2
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`“involved” in an “earlier-filed IPR,” Resp. at 20, is incorrect. See 37 C.F.R.
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`§ 42.2.1
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`In addition, Patent Owner’s assumption that the grounds presented in this
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`IPR “reasonably could have [been] raised” in IPR2014-01276 is meritless. Patent
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`Owner draws this conclusion simply because it contends that FNC knew about
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`Bouevitch, Carr, and Sparks at the time. See Resp. at 22 (citing Ex. 2029). But as
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`stated above FNC was not a party to the petition filed in IPR2014-01276. Cisco
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`Systems, Inc. v. Capella Photonics, Inc., IPR2014-01276, Paper No. 2 (P.T.A.B.
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`Aug. 12, 2014). Furthermore, Patent Owner has no evidence to show that FNC
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`had any involvement with or even knew about the IPR2014-01276 petition prior to
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`its filing. Thus, FNC had no opportunity to raise the references from this IPR at
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`the time that Cisco prepared and filed the petition in IPR2014-01276.
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`Moreover, at the time FNC sought to join IPR2014-01276, Ciena Corp. v.
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`Capella Photonics, Inc., IPR2015-00894, Paper No. 5 (P.T.A.B. Mar. 17, 2015),
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`FNC had already filed the petition of the present IPR and IPR2014-01276 had
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`already been instituted. See Paper No. 1 (petition filed February 12, 2015); Cisco
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`1 Capella has not alleged and there is no basis to allege that FNC was a real party in
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`interest or privy of the petitioner (Cisco Systems, Inc.) in IPR2014-01276. Thus,
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`the “the real party in interest or privy of the petitioner” provision of § 315(e)(1) is
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`inapplicable.
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`3
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`Systems, Inc. v. Capella Photonics, Inc., IPR2014-01276, Paper No. 8 (P.T.A.B.
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`Feb. 18, 2015). Based on these facts, there is no basis to argue that FNC could
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`have raised the prior art and grounds from this IPR proceeding in IPR2014-01276.
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`Capella has not cited any authority to support such a position. In fact, if FNC had
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`taken the grounds from the petition in this IPR proceeding and repeated them at the
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`time it sought to join IPR2014-01276, the Board may have denied institution and
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`joinder since the “same prior art or arguments previously were presented” in this
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`IPR proceeding. See 35 U.S.C. § 325(d); see also Butamax Advanced Biofuels
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`LLC v. Gevo, Inc., IPR2014-00581, Paper No. 8 at 13 (P.T.A.B. Oct. 14, 2014)
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`(“[W]e determine that the Petition presents substantially the same art and
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`arguments as the Petition in the [prior] IPR, and … we exercise our discretion to
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`deny institution of review under 35 U.S.C. § 325(d).”).
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`B.
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`The Use of 2-Axis Mirrors with Angular Misalignment for Power
`Control Would Have Been Obvious in View of the Combined
`Teachings of Bouevitch and Either Carr or Sparks
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`It would have been obvious to combine the teachings of Figure 11 of
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`Bouevitch with the 2-axis MEMS mirrors of either Carr or Sparks. Figure 11 of
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`Bouevitch discloses a COADM using MEMS mirrors that tilt in one axis for
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`switching. Pet. at 31; Ex. 1002 at 14:14–65, Fig. 11. Carr discloses two axis tilt
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`mirrors for both switching and power control. Pet. 31–32; see also Ex. 1005 at
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`3:43–47, 11:3–33, Fig. 1b. Similarly, Sparks discloses two axis tilt mirrors for
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`4
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`power control in a WDM system like Bouevitch to alleviate the need for a separate
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`attenuator. Pet. at 44–45; see also Ex. 1006 at 2:20–38.
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`A person of ordinary skill in the art would have been motivated use the 2-
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`axis mirrors in Carr or Sparks instead of Bouevitch’s 1-axis mirrors in part because
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`both references use the same operating principles for both optical switching and
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`power control. Those principles are (1) tilting mirrors at large angles to switch an
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`optical signal from one port to another for switching functions in a Configurable
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`Optical Add/Drop Multiplexer (COADM), and (2) tilting at smaller angles to
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`slightly misalign the optical signal to control power for DGE (Dynamic Gain
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`Equalization) functions. See Pet. at 32–34, 45–47.
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`As described below, Fig. 11 of Bouevitch can operate as a DGE, and as
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`such, it uses the same principle of misalignment for power control described in
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`Carr and Sparks. Patent Owner’s expert agrees that a person of skill in the art
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`would have known that intentional misalignment for power control was inherent in
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`the disclosure of Bouevitch’s tilting MEMS mirrors. Ex. 1040 at 99:10–100:14,
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`104:3–10, 104:21–105:8; Ex. 1041 at 145:11–25, 284:18–25. Bouevitch
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`recognizes that the degree of attenuation may be based on the angle of deflection
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`off of each MEMS mirror. Ex. 1037 ¶ 160; see Ex. 1002 at 7:35-37 (“The degree
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`of attenuation is based on the degree of deflection provided by the reflector (i.e.,
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`the angle of reflection).”). Thus, the intentional misalignment taught by Carr and
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`5
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`Sparks does not conflict with Bouevitch’s principle of operation.
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`Bouevitch teaches that the COADM structure of Fig. 11 also operates as a
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`DGE. Bouevitch discloses COADM and DGE as separate embodiments for clarity
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`but Patent Owner’s expert agrees that Figures 9 and 11 share a common optical
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`structure since both are 4-f optical systems and are “intended to work at the same
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`time as a DGE and a COADM.” Ex. 1040 at 96:5–10; Ex. 1041 at 122:23–123:7.
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`Figure 11 is a “preferred” COADM embodiment of Fig. 9. Ex. 1002 at 14:14–16.
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`Figure 9 is a combined “DGE/COADM.” Id. at 4:50–54. Furthermore, Bouevitch
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`states that the DGE of Figure 9 when based on MEMS technology uses the same
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`MEMS mirror array illustrated in Figure 11. Id. at 13:52–14:4.
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`The operation of Figure 11 of Bouevitch as a DGE contradicts Patent
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`Owner’s contention that Bouevitch’s symmetrical 4-f optical system
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`“automatically avoids misalignment or angular displacement.” Cf. Resp. at 24.
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`Patent Owner’s expert agrees that Bouevitch’s symmetrical 4-f optical system has
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`to be able to attenuate an optical signal to any desired amount by using a MEMS
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`array. Ex. 1040 at 96:8–97:19. He also agrees that intentional misalignment for
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`power control was known in the art and inherent in the disclosure of Bouevitch’s
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`tilting MEMS mirrors. Ex. 1040 at 99:10–100:14, 104:3–10, 104:21–105:8; Ex.
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`1041 at 145:11–25, 284:18–25.
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`Patent Owner’s claim that Bouevitch’s symmetrical 4-f optical system
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`6
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`corrects for misalignment, Resp.at 24–26, is irrelevant to the introduction of
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`intentional misalignment by tilting the MEMS mirrors. As illustrated by Dr.
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`Ford’s hand drawing, in a symmetrical 4-f optical system, a displaced input signal
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`is carried through to a displaced output signal. Ex. 2034. But this fact has no
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`bearing on intentional misalignment that may be introduced by tilting the MEMS
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`mirrors in Bouevitch’s symmetrical 4-f optical system. The issue is what
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`Bouevitch teaches to a person of skill in the art.
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`A person of skill in the art would recognize that Bouevitch taught the
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`principle that angular displacement may be used as the root mechanism to
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`attenuate a signal. Ex. 1037 ¶ 160. Bouevitch teaches “angular displacement
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`provided by each MEMS reflector,” Ex. 1002 at 14:7–8, which as Patent Owner’s
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`expert acknowledged, allows the DGE to be able to attenuate an optical signal to
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`any degree. Ex. 1040 at 96:8–97:19. Because Bouevitch teaches that the DGE of
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`Figure 9 controls power using the same MEMS as Figure 11, a person of skill in
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`the art would have known that Bouevitch disclosed the same type of angular
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`misalignment to perform attenuation that is described in Carr and Sparks. Ex.
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`1037 ¶ 160. Thus, tilting MEMS mirrors to perform attenuation by intentional
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`misalignment does not conflict with the principle of operation in Bouevitch’s
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`symmetrical 4-f optical system.
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`Patent Owner’s attempt to read another MEMS attenuation technique into
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`7
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`Bouevitch, Resp. at 29–31, does not detract from Bouevitch’s disclosure of tilt
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`mirrors and use of angular misalignment to control power. As an initial matter,
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`Patent Owner’s expert was unable to identify any portion of Bouevitch to support
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`Patent Owner’s theory of attenuation based on interference. Ex. 1040 at 90:8–22.
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`Instead, he resorts to a separate patent by Bergmann (not cited in Bouevitch or
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`previously mentioned by Petitioner) that describes an interference-based
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`attenuation device. See Ex. 2033 ¶ 99 (citing Ex. 2031). Patent Owner’s expert
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`confirmed that this completely different device works by adjusting the distance
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`between a partially reflective membrane and an underlying substrate to create an
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`attenuated signal. Ex. 1040 at 122:15–23.
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`This entirely different interference-based attenuation device called a
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`Mechanical Anti-Reflection Switch (MARS) modulator device operates in a
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`“surface-normal manner” by vertically moving the partially reflective membrane to
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`vary the phase of two light beams so that they will interfere when the beams are re-
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`combined to create an attenuated signal. Ex. 1042 at 1119–20. Fig 1 reproduced
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`below at right shows top and side views of the MARS modulator. Id. at 1119.
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`Specifically, Fig. 1(b) illustrates an air gap between a moveable SiNx membrane
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`and a doped silicon substrate, and Figure 1(c) shows the membrane vertically
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`adjusted and brought into contact with the substrate to increase the amount of
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`attenuation. Id.
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`8
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
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`This interference-based
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`attenuation is inconsistent with the
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`tilt based attenuation described in
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`Bouevitch. Bouevitch describes a
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`device that uses MEMS mirrors that
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`can tilt for switching in a DGE
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`embodiment. Ex. 1002 at 14:7–8,
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`Figs. 9, 11. Bouevitch also states
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`that attenuation is controlled by the
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`angle of reflection, e.g., Ex. 1002 at
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`7:35–37 (“The degree of attenuation
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`is based on the degree of deflection provided by the reflector (i.e., the angle of
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`reflection).”). This is fundamentally different from the attenuation in the MARS
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`modulator device that depends on varying the distance between two elements on
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`which a “surface-normal” signal is incident. Ex. 1042 at 1119; see also Ex. 2031
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`at 3:21–23 (“By varying the cavity width [i.e., the size of the air gap] the
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`attenuation of the optical signal can be increased or decreased selectively.”).
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`Patent Owner’s expert agreed that, unlike the tilt mirrors in Bouevitch, the
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`substrate in the MARS modulator device is fixed so there is no varying the angle of
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`reflection. Ex. 1040 at 126:9–127:7. Contrary to Patent Owner’s assumption, if
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`9
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`Bouevitch had meant to refer to interference-based attenuation instead of the well-
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`known angular misalignment technique, it would have mentioned changing
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`distances instead of angles of tilt, as the Bergmann patent does. See Ex. 2031 at
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`2:21–24.
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`Even if Patent Owner had support in Bouevitch for its position of MEMS
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`attenuation based on interference, Bouevitch still discloses angular misalignment
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`for power control, the same principle of operation in Carr and Sparks. Ex. 1037
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`¶ 149; see Ex. 1002 at 7:35-37, 14:7–8. As the Board already found with regard to
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`Bouevitch in IPR2014-01276, Ex. 1039 at 38, the “prior art’s mere disclosure of
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`more than one alternative does not constitute a teaching away from any of these
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`alternatives because such disclosure does not criticize, discredit, or otherwise
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`discourage the solution claimed in the … application.” In re Fulton, 391 F.3d
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`1195, 1201 (Fed. Cir. 2004). Thus, as further support for combining Bouevitch
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`with either Carr or Sparks, Bouevitch discloses power control, and Carr and Sparks
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`each discloses for 2-axis power control.
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`C.
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`Patent Owner Does Not Rebut Petitioner’s Reasons for
`Combination
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`Patent Owner claims that a person of ordinary skill in the art’s attempts to
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`combine technologies like Bouevitch and Carr or Sparks would be thwarted by
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`considerations such as “moisture,” “exposed oxides,” “creep,” “varying changes in
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`gravitational forces” and “other environmental conditions.” Ex. 2033 at ¶ 143.
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`10
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`But working through these considerations are simply engineering tasks, not
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`invention. Patent Owner’s expert confirmed that a person of ordinary skill in the
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`art could overcome these alleged problems in combining the references. Ex. 1040
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`at 153:6–154:23; Ex. 1041 at 267:15–25.
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`Patent Owner’s expert also criticizes Petitioner’s combinations because
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`“[r]e-design is not plug-and-play as Petitioner makes it seem. Ex. 2033 at ¶¶ 143,
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`202. He also contends that one “would not have just selected between one-axis
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`and two-axis mirrors” “before using a new mirror structure in Bouevitch.” Id. at ¶¶
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`144–45, 203–04.
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`The law contradicts Patent Owner. The “‘test for obviousness is not whether
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`the features of a secondary reference may be bodily incorporated into the structure
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`of the primary reference; nor is it that the claimed invention must be expressly
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`suggested in any one or all of the references. Rather, the test is what the combined
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`teachings of the references would have suggested to those of ordinary skill in the
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`art.’” MCM Portfolio LLC v Hewlett-Packard Co., No. 2015–1091, 2015 WL
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`7755665, at *9 (Fed. Cir. Dec. 2, 2015) (quoting In re Keller, 642 F.2d 413, 425
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`(C.C.P.A. 1981)). Patent Owner’s attempt to differentiate Carr from Bouevitch’s
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`add-drop multiplexer is undermined by Carr’s teaching of 2-axis mirrors in an
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`add/drop switch. Ex. 1005 at 11:4–33. Patent Owner’s similar attempt with regard
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`to Sparks fails because Sparks states that 2-axis mirrors may being used as part of a
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`11
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`WDM system, e.g., Bouevitch’s add-drop multiplexer, and such use “alleviates the
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`requirement for separate optical attenuators to be incorporated into the system.”
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`Ex. 1006 at 2:20–38; see id. at 4:48–58. Thus, Bouevitch and Carr and Sparks are
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`analogous references and it would have been obvious to combine the teachings of
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`2-axis mirrors and power control from Carr or Sparks with the teachings of
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`Bouevitch.
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`Patent Owner relies on the same argument for the other motivations to
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`combine Bouevitch with either Carr or Sparks. Resp. at 36. This criticism fails to
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`refute many of the reasons supporting the obviousness of the combinations (e.g.,
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`obvious to try, use of a known technique, specific motivations in the prior art, etc.)
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`presented by Petitioner.
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`Obvious to try: Dr. Ford testified that there were only two solutions to the
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`known need to deflect light beams with MEMS: one axis or two axes. Ex. 1037 at
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`¶ 155. He testified that the person of skill in the art “would have a high
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`expectation of success upon trying two-axis mirror control in Bouevitch.” Id.
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`Patent Owner did not deny this and Patent Owner’s expert agreed that with regard
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`to two axis mirrors, a person of skill in the art knew that “[i]f you need it, you can
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`use it.” Ex. 1040 at 156:4–7, 166:20–167:9.
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`Use of a known technique: Dr. Ford testified that two axis mirrors were
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`known and that Bouevitch and Carr and Sparks are comparable devices in the same
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`12
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`field of optical routing that use the same MEMS devices. Pet. 32–33; Ex. 1037 at
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`¶¶ 152, 166. He also testified that a person of skill in the art could have applied the
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`known 2-axis technique in Carr or Sparks to Bouevitch with predictable results.
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`Ex. 1037 at ¶¶ 154, 155 (citing Exs. 1018, 1025), 167.
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`Patent Owner’s expert agreed that two axis mirrors were a matter of
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`“common knowledge during the time of the development of the Bouevitch patent,
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`for example.” Ex. 1040 at 180:16–25. In fact, two axis mirrors were
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`commercially available. Ex. 1045 at 22–23, 26.
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`Specific motivations to combine: Dr. Ford testified that the prior art
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`provided motivations for using 2-axis mirrors such as the benefit of “fine control of
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`the degree of attenuation.” Ex. 1037 ¶ 158 (quoting Ex. 1005 at 1:49–50, 3:47–48,
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`11:20–23). Patent Owner’s expert agreed that two-axis mirrors would be
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`beneficial to reduce crosstalk when ports are sufficiently close as described in the
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`prior art at the time. Ex. 1040 at 166:20–169:8. Patent Owner’s expert also
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`generally agreed that two-axis mirrors allowed for optimization not available with
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`single axis mirrors. See id.
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`D.
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`Patent Owner’s Categorization of Optical Switches Fails to
`Distinguish the Claims Over Bouevitch, Carr and Sparks
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`Patent Owner spends considerable effort categorizing optical switches into
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`(1) broadband devices, (2) optical add-drop multiplexers, and (3) wavelength
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`selective switches. See Resp. at 6–17. After attempting to differentiate these
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`13
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`groups, Patent Owner contends that the device claimed in the ’678 Patent “later
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`became known in the industry as a wavelength-selective switch” because it
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`includes “continuously controllable beam-deflecting elements to direct output
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`spectral channels to any of the three or more output fiber collimator ports.” Resp.
`
`at 13–14, 17 (emphasis added).
`
`Patent Owner is mistaken. The claims of the ’678 Patent only require two
`
`output ports as had already been disclosed in Bouevitch’s “conventional” optical
`
`add-drop multiplexer. E.g., Ex. 1001 at 14:9–10 (“…a plurality of output
`
`ports…”). Patent Owner cannot re-write its claims by citing to the specification
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`and a 2006 article. As already explained by Petitioner, see Pet. at 36–44, 48–57,
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`Bouevitch, Carr, and Sparks disclose all of the other allegedly “unique” claimed
`
`features. Cf. Resp. at 16.
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`E.
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`Patent Owner’s Attacks on the Combination of Bouevitch with
`Carr or Sparks Are Erroneous
`
`Patent Owner’s first contention is that Dr. Ford “improperly assumes that
`
`wavelength-selective switches were known at the time of the invention, when, in
`
`fact, they were not.” Resp. at 31. This attack turns on a single article published
`
`five years after the priority date of the ’678 Patent and purportedly “exposes” bias.
`
`See id. at 32–34. Patent Owner is incorrect both on the facts and conclusion
`
`drawn.
`
`Wavelength selective switches were known at the time and in fact described
`
`
`
`14
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`
`
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`in patents filed as early as 1999. Ex. 1043 (patent filed November 29, 1999 and
`
`entitled “Wavelength Selective Switch”) (emphasis added). Patent Owner’s expert
`
`agreed after seeing this earlier patent. Ex. 1040 at 37:10–38:14. Other references
`
`confirm that wavelength selective switches were known at the time. For example,
`
`an article co-authored by Dr. Dan Marom, whom was cited by Patent Owner’s
`
`expert, describes a solution disclosed by Dr. Ford in a 1999 article (i.e., Ex. 1004)
`
`as a “wavelength selective switch.” Ex. 1044 at 1620. Patent Owner’s expert
`
`agreed that this 2x2 switch disclosed by Dr. Ford in 1999 is a wavelength selective
`
`switch. Ex. 1040 at 59:21–62:17 (“Q. And so by the term ‘wavelength selective
`
`switches,’ the authors mean these 2x2 switches; correct? … A. … it’s a 2x2
`
`switch, wavelength selective switch in 2x2 configuration.”) (emphases added).
`
`Even the 2006 article that Patent Owner’s expert relied upon, see Ex. 2033 at
`
`26–29, describes known prior art optical devices with more than one output as a
`
`wavelength selective switch (WSS). Ex. 2025 at 4439 (“WSSs with more than one
`
`output port are needed….”). Thus, wavelength selective switches were known at
`
`the time and Patent Owner has failed to provide grounds for any supposed bias by
`
`Dr. Ford. Patent Owner and its expert erroneously concluded otherwise only by
`
`ignoring known publications at the time and misinterpreting Dr. Ford’s 2006
`
`article.
`
`Patent Owner’s second claim that the motivation “to combine Bouevitch
`
`
`
`15
`
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`
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`with either Carr or Sparks to improve system alignment” is based the ’678 Patent
`
`and not the prior art, see Resp. at 34–35, is also incorrect. Carr and Sparks
`
`expressly disclose a two-axis MEMS device with improved alignment.
`
`Specifically, Carr describes a two-axis MEMS device with “highly accurate lateral
`
`alignment” that “permits precise control of the mirrors, a more robust structure,
`
`greater packing density, larger mirror sizes, and larger mirror rotation angles than
`
`are conventionally obtained and easier electrical connection to the mirrors.” Ex.
`
`1005 at 4:9–17 (emphasis added). Sparks explains that the disclosed two-axis
`
`MEMS mirrors are fabricated to “carefully align the beams so as to ensure that the
`
`maximum possible input optical signal is received at the output of the switch” if
`
`desired. Ex. 1006 at 4:42–47 (emphasis added). Furthermore, Bouevitch
`
`recognized the issue of “alignment problems” and identified concerns regarding
`
`“small temperature fluctuations.” Ex. 1002 at 10:9–10, 10:64–65. Thus,
`
`Petitioner’s motivation to combine Bouevitch with Carr or Sparks based on the
`
`need to improve system alignment appears directly in the references themselves.
`
`F.
`
`Patent Owner Fails to Deny that Bouevitch, Carr and Sparks
`Each Disclose Continuous Control
`
`Patent Owner has apparently dropped its earlier argument contesting the
`
`disclosure of continuous control in Bouevitch, Carr and Sparks in its Preliminary
`
`Response. Paper No. 7 at 34–36. The Board dismissed Patent Owner’s position at
`
`the time by noting that Patent Owner has offered “no express construction of
`
`
`
`16
`
`
`
`
`
`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`‘continuously controllable,’ in support of its argument.” Paper No. 8 at 17.
`
`Patent Owner still offers no construction for “continuously controllable.”
`
`The Board recently construed “continuously controllable” to encompass “under
`
`analog control such that it can be continuously adjusted.” Ex. 1039 at 13. Based
`
`on this construction, the Board correctly found that “a person of ordinary skill in
`
`the art would understand that the necessary level of control required to balance the
`
`optical power differentials among the wavelength channels is achieved in
`
`Bouevitch with continuous control over the mirror tilt via analog voltage control.”
`
`Id. at 29. Patent Owner’s expert confirmed this understanding that the DGE in
`
`Bouevitch is able to attenuate an optical signal to any amount by analog voltage
`
`control. Ex. 1040 at 96:5–20.
`
`As Dr. Ford similarly testified, a person of ordinary skill in the art would
`
`have known to use continuously controllable mirrors to equalize or otherwise
`
`attenuate an optical signal and that MEMS mirrors based on analog voltage control
`
`could be tilted to any desired angle in their operation range. Ex. 1037 at ¶¶ 158–
`
`60, 168–70. Petitioner explained that a person of skill in the art would have been
`
`motivated to use continuously controllable micromirrors of Carr or Sparks in the
`
`device of Bouevitch to equalize or otherwise attenuate an optical signal. Pet. at
`
`34–35; Ex. 1037 ¶¶ 158, 170.
`
`These unrebutted rationales are sufficient for the Board to conclude that use
`
`
`
`17
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`
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`of continuous control as disclosed in Bouevitch, Carr and Sparks would have been
`
`obvious. Patent Owner has provided no arguments or evidence that should change
`
`the Board’s institution decision.
`
`Bouevitch, Carr and Sparks Each Disclose the Claimed “Ports.”
`
`G.
`Petitioner has consistently asserted that Bouevitch discloses the claimed
`
`“ports.” Petitioner identified
`
`“port 1 of the first optical
`
`circulator 80 a” as the claimed
`
`“input port,” “80b, port 1, “IN
`
`ADD” and 80b, port 3, “OUT
`
`DROP” as the “one or more
`
`other ports,” and “OUT EXPRESS” as the recited “output port.” Pet. at 36–37.
`
`These ports are identified by annotations in the Figure 11 of Bouevitch shown at
`
`right. Bouevitch expressly describes each of these components as ports. Ex. 1002
`
`at 14:27–36.
`
`The ordinary meaning of the term “port” includes circulator ports, Ex. 1039
`
`at 14 (“There is no dispute that the ordinary and customary meaning of “port”
`
`encompasses circulator ports”), and Patent Owner did not expressly disavow
`
`circulator ports from the term port. See id. at 15–16. Disavowal requires the
`
`patentee to “demonstrate an intent to deviate from the ordinary and accustomed
`
`
`
`18
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`
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`meaning of a claim term by including in the specification expressions of manifest
`
`exclusion or restriction, representing a clear disavowal of claim scope.” Teleflex,
`
`Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). Although
`
`Patent Owner could have used words of manifest exclusion, it did not do so. E.g.,
`
`Ex. 1001 at 14:6–11. Patent Owner’s expert merely states that 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. 2033 ¶ 116. As the Board already
`
`determined, “teaching away or discouragement is not disavowal.” Ex. 1039 at 16;
`
`see also Epistar Corp v Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009)
`
`(“A 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.”).
`
`The provisional application to which the ’678 Patent claims priority shows
`
`that the purported invention uses “port” generically and encompasses using
`
`circulators to provide ports. The provisional says that “[t]hree different OADM
`
`architectures disclosed in the present invention are shown in Figures 7-9.” Ex.
`
`2012 at 4. Figure 9 annotated and reproduced below shows an embodiment of the
`
`purported invention where circulators are used. Id. at Fig. 9. The provisional
`
`expressly describes these circulators ports in Fig. 9 as “ports.” Id. at 4.
`
`
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`19
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`Case No. IPR2015-00727
`Petitioner’s Reply to Patent Owner’s Response
`
`
`
`Id. at Figure 9.
`
`Patent Owner failed to distinguish between ports with and without
`
`circulators in the claims of the ’678 Patent. The provisional used terms like
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`“add/drop ports” when referring to ports with circulators and to “physical
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`input/output ports” for ports without circulators. Ex. 2012 at 4. Yet, Patent Owner
`
`
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