Trials@uspto.gov
`571-272-7822
`
`Paper 8
`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 IPR2015-00727
`Patent RE42,678 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 8
`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 IPR2015-00727
`Patent RE42,678 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
`
`
`
`
`
`
`
`
`IPR2015-00727
`Patent RE42,678 E
`
`
`I.
`INTRODUCTION
`Petitioner, Fujitsu Network Communications, Inc., filed a Petition
`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 E (“the ’678 patent”).
`Paper 1 (“Pet.”). Patent Owner, Capella Photonics, Inc., filed a Preliminary
`Response. Paper 7 (“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 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46, 53 and
`61–65 of the ’678 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.
`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
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`(“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.
`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 characters, 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 Electro Mechanical Systems or “MEMS.” Pet. 6. The WSR
`described in the ’678 patent may be used to construct a dynamically
`reconfigurable optical add-drop multiplexer (“ROADM”) for wavelength
`division multiplexing (“WDM”) optical networking applications. Ex. 1001,
`Abstract.
`Figure 1A of the ’678 patent is reproduced below.
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`Figure 1A depicts WSR apparatus 100, in accordance with the ’678 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.
`The WSR may also 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.
`
`B.
`
`Illustrative Claims
`
`Claims 1, 21, 44, and 61 of the ’678 patent are independent. Claims
`2–4, 9, 10, 13, 17, 19, and 20 ultimately depend from claim 1; claims 22, 23,
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`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:
`
`apparatus,
`
`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;
`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.
`
`Ex. 1001, 14:6–23 (“[[ ]]” 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-
`wave-length optical signal from said input port into multiple
`spectral channels;
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`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 power of the spectral channels coupled into said
`selected output ports.
`
`Ex. 1001, 18:55–19:3 (“[[ ]]” indicating matter in the first reissue that
`forms no part of the second reissue, and matter in italics indicating
`additions made by second reissue).
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`C.
`
`Related Proceedings
`
`According to the parties, the ’678 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 5, 2–3.
`Claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46, 53, and 61–65 of the
`’678 patent are challenged in Cisco Systems, Inc. v. Capella Photonics, Inc.,
`IPR2014-01276, instituted on February 18, 2015 (“IPR2014-01276”). The
`’678 patent is also the subject of petitions for inter partes review in JDS
`Uniphase Corporation v. Capella Photonics, Inc., IPR2015-00739, and
`Ciena Corporation, Coriant Operations, Inc., Coriant (USA) Inc., and
`Fujitsu Network Communications, Inc. v. Capella Photonics, Inc.,
`IPR2015-00894.
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`
`D.
`
`Asserted Grounds of Unpatentability
`
`Petitioner contends that claims 1–4, 9, 10, 13, 17, 19–23, 27, 29,
`44–46, 53, and 61–65 of the ’678 patent are unpatentable based on the
`following grounds:
`
`Reference[s]
`Smith1
`Smith and Tew2
`Smith and Carr3
`
`Smith, Carr, and Tew
`
`Bouevitch4 and Carr
`
`Bouevitch, Carr, and Tew
`
`Bouevitch and Sparks5
`
`Bouevitch, Sparks, and Tew
`
`
`
`Basis
`§ 102
`§ 103
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Challenged Claims
`61–65
`61–65
`1–4, 9, 10, 13, 17, 19–23,
`27, 29, 44–46 and 53
`1–4, 9, 10, 13, 17, 19–23,
`27, 29, 44–46 and 53
`1, 9, 10, 13, 17, 19, 44, 53,
`61, 64, and 65
`1, 9, 10, 13, 17, 19, 44, 53,
`61, 64, and 65
`1–4, 19–23, 27, 29, 44–46,
`and 61–63
`1–4, 19–23, 27, 29, 44–46,
`and 61–63
`
`
`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 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.
`3 U.S. Patent No. 6,442,307 B1, issued August 27, 2002 (Ex. 1005, “Carr”).
`4 U.S. Patent No. 6,498,872 B2, issued December 24, 2002 (Ex. 1002,
`“Bouevitch”)
`5 U.S. Patent No. 6,625,340 B1, issued September 23, 2003 (Ex. 1006,
`“Sparks”).
`
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`
`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
`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”
`1.
`Petitioner asserts that the broadest reasonable interpretation of
`“continuously [controllable/controlling/pivotable],” in light of the
`specification, is “under analog control.” Pet. 9–10. According to Petitioner,
`the ’678 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” and “servo-based”
`2.
`Challenged claims 2–4, 21–23, and 45 recite a “servo-control
`assembly.” 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.
`10–11. Challenged claims 21–25, 27, and 29 recite a “servo-based optical
`apparatus.” Petitioner asserts that “servo-based” means “using automatic
`feedback to control a device in response to a control signal.” Id. at 11.
`Patent Owner offers no construction of the terms. We are not persuaded that
`“servo” necessarily means “feedback” or “feedback-based” merely because
`the ’678 patent describes a processing unit within a servo-control assembly
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`as using power measurements from the spectral monitor to provide feedback
`control of the channel mirrors. See Pet. 13–14.
`The ’678 patent does not use the term “servo-based” outside of the
`preamble of challenged claims 21–25, 27, and 29. “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
`21–25, 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 for purposes of this decision.
`With respect to “servo-control assembly,” the ’678 patent states that it
`“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 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.
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`
`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.
`3.
`Additional Claim Terms
`Petitioner addresses the additional claim terms “in two dimensions,”
`“beam-deflecting elements,” and “channel micromirror,” Pet. 8–9, 12–14.
`For purposes of this decision, no express construction of any additional
`claim term is necessary.
`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, ¶ 99. 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. 17.
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`
`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. 21–24. In particular, Patent Owner argues that
`Petitioner fails to show the Smith ’683 Provisional discloses dynamically
`and continuously controlling beam-deflecting elements. Id. at 22. 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 25. Patent Owner’s argument, on the
`present record, is not persuasive. The ’678 patent, itself, equates analog
`control to 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. 27–31. 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 30. Yet, Patent Owner also argues that the Smith ’683 Provisional’s
`“use of the phrase ‘analog fashion’ means stepwise control.” Id. at 26.
`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
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`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. 31.
`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
`tilting the MEMS mirrors such that only a portion of input signals enter the
`output fibers. Pet. 31–32, 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
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`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. 58, 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 61–65 are anticipated by Smith. Pet.
`17–20. Petitioner, however, provides virtually no analysis of its contentions.
`For example, claim 1 requires “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 power of the spectral channels coupled into said selected
`output ports.” Petitioner provides a conclusory argument that “Smith
`discloses a MEMS mirror array where each MEMS mirror is individually
`and continuously controllable in two dimensions to reflect channels to a
`plurality of ports.” Pet. 18. Petitioner’s statement is followed by a string
`citation to thirteen different portions of Smith and four figures from Smith.
`Id. We are unable to determine that Petitioner has made the necessary
`showing with respect to anticipation by Smith of claim 61 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
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`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 61–65 are
`anticipated by Smith.
`
`Asserted Obviousness Over Smith and Tew
`D.
`Petitioner asserts that claims 61–65 would have been obvious over
`Smith and Tew. Pet. 57–59. Petitioner argues that if Smith does not
`disclose adequately 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.
`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 61–65 as obvious over Smith and Tew.
`E.
`Asserted Obviousness Over Smith and Carr, or in Further
`Combination with Tew
`Petitioner asserts that claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46
`and 53 would have been obvious over Smith and Carr. Pet. 20–30.
`Petitioner further asserts that claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46
`and 53 would have been obvious over Smith, Carr, and Tew. Pet. 57–59.
`Petitioner argues that “using multiple fiber collimators in an array from Carr
`in the Smith multi-channel switch would have been nothing more than the
`using known techniques to improve similar devices.” Pet. 22. Petitioner
`also argues that if Smith does not adequately disclose the “continuously”
`limitation, Tew does. Id. at 57.
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`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 using “multiple fiber
`collimators,” or the “continuously” limitation. 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
`1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46 as obvious over Smith and Carr, or
`over Smith, Carr, and Tew.
`F.
`Asserted Obviousness Over Bouevitch and Carr
`Petitioner asserts that claims 1, 9, 10, 13, 17, 19, 44, 53, 61, 64, and
`65 would have been obvious over Bouevitch and Carr. Pet. 31–44.
`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 35–44. 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 32–33.
`Patent Owner argues that neither Bouevitch nor Carr discloses
`continuously controllable micromirrors pivotable about two axes. Prelim.
`Resp. 34–36. According to Patent Owner, Carr’s description of mirrors
`capable of being tilted to any desired location does not equate to
`continuously controllable mirrors, as claimed, or to continuously “movable”
`
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`IPR2015-00727
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`elements. Id. at 35–36. Patent Owner, however, offers no express
`construction of “continuously controllable” in support of its argument. Id. at
`11. Patent Owner also asserts that Petitioner failed to identify any claim
`limitation lacking in Bouevitch. Id. at 38. 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.
`31.
`
`With respect to claims 1, 44, and 61, Patent Owner argues that “the
`portion of Bouevitch that [Petitioner] relies on discloses ‘collimating,’ not
`‘focusing,’–which are two different things.” Prelim. Resp. 36. 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 37. Patent
`Owner, however, identifies no corresponding disclosure in the specification
`of the ’678 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, 9, 10, 13,
`17, 19, 44, 53, 61, 64, and 65 unpatentable as obvious over Bouevitch and
`Carr.
`
`Asserted Obviousness Over Bouevitch, Carr, and Tew
`G.
`Petitioner asserts that claims 1, 9, 10, 13, 17, 19, 44, 53, 61, 64, and
`65 would have been obvious over Bouevitch, Carr, and Tew. Pet. 59–60. In
`its discussion of this ground, Petitioner provides virtually no analysis in
`
`17
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`IPR2015-00727
`Patent RE42,678 E
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`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
`grounds 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 claims 1, 9, 10, 13, 17, 19, 44, 53, 61, 64, and 65 as obvious
`over Bouevitch, Carr, and Tew.
`H.
`Asserted Obviousness Over Bouevitch and Sparks
`Petitioner asserts that claims 1–4, 19–23, 27, 29, 44–46, and 61–63
`would have been obvious over Bouevitch and Sparks. Pet. 44–57.
`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 48–57. 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 45.
`Patent Owner first argues that neither Bouevitch nor Sparks discloses
`a spatial array of micromirrors or beam deflecting elements. Prelim. Resp.
`39. According to Patent Owner, because the ’678 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
`
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`IPR2015-00727
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`axis. Id. at 40–41. 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 43. 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. 31.
`With respect to claims 1, 21, 44, and 61, Patent Owner argues
`Petitioner fails to show that Bouevitch discloses the “focuser” or “focusing”
`feature, as claimed. Prelim. Resp. 41. With respect to claims 3, 21, 22, and
`46, 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. 42–43. 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. 47–
`48. As noted above, the ’678 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, 19–23,
`
`19
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`IPR2015-00727
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`27, 29, 44–46, and 61–63 unpatentable as obvious over Bouevitch and
`Sparks.
`Asserted Obviousness Over Bouevitch, Sparks, and Tew
`I.
`Petitioner asserts that claims 1–4, 19–23, 27, 29, 44–46, and 61–63
`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
`grounds 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. § 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, 19–23, 27, 29, 44–46, and 61–63 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. RE42,678 E is
`instituted in IPR2015-00727 with respect to the following grounds of
`unpatentability:
`(1) claims 1, 9, 10, 13, 17, 19, 44, 53, 61, 64, and 65 as obvious over
`Bouevitch and Carr under 35 U.S.C. § 103(a); and
`(2) claims 1–4, 19–23, 27, 29, 44–46, and 61–63 as obvious over
`Bouevitch and Sparks under 35 U.S.C. § 103(a);
`
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`IPR2015-00727
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`
`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. RE42,678 E is hereby instituted in
`IPR2015-00727, 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.
`
`
`
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`IPR2015-00727
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`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 G
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