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
`___________________
`
`DECLARATION OF DR. ALEXANDER V. SERGIENKO
`IN SUPPORT OF THE PATENT OWNER RESPONSE
`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Capella 2033
`Fujitsu v. Capella
`IPR2015-00727
`
`

`
`Case IPR2015-00727
`Patent RE42,678 E
`
`Table of Contents
`
`I.
`INTRODUCTION .......................................................................................... 1
`QUALIFICATIONS ....................................................................................... 1
`II.
`INFORMATION CONSIDERED FOR THIS DECLARATION ................. 4
`III.
`IV. OVERVIEW OF THE LAW USED FOR THIS DECLARATION ............ 10
`A.
`Level of Skill in the Art .......................................................................11
`B.
`Obviousness .........................................................................................12
`C.
`Obviousness to Combine .....................................................................14
`D.
`Claim Construction..............................................................................15
`INSTITUTED GROUNDS ........................................................................... 15
`V.
`VI. TECHNOLOGY ........................................................................................... 15
`A. General Overview ................................................................................15
`B.
`Use of Circulators at the Time of the Invention ..................................21
`C.
`Use of MEMS Switches at the Time of the Invention ........................25
`D. Optical Components at the Time of the Invention ..............................26
`VII. OVERVIEW OF THE ’678 PATENT AND APPLIED REFERENCES .... 29
`A.
`The ’678 Patent ...................................................................................30
`B.
`Bouevitch .............................................................................................39
`1.
`Bouevitch’s Fig 11 Has Only 2 Ports and Therefore
`Needs a Circulator .................................................................... 39
`Bouevitch Discloses Two Distinct 2 Modifying
`Means ....................................................................................... 41
`Bouevitch’s Figure 11 Does Not Control Power ..................... 52
`3.
`Carr ......................................................................................................53
`C.
`Sparks ..................................................................................................53
`D.
`VIII. INDEPENDENT CLAIM ELEMENTS ....................................................... 54
`A.
`Fiber Collimators, Providing an Input Port and a Plurality of
`Output Ports .........................................................................................54
`IX. REJECTIONS ............................................................................................... 68
`A. Ground 2: Bouevitch in View of Carr Does Not Render
`Obvious Claims 1, 2, 5, 6, 9-12, and 15-21. .......................................68
`1.
`Petitioner’s Proposed Combination Would Destroy
`Bouevitch’s Principle of Operation. ........................................ 69
`
`2.
`
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`Case IPR2015-00727
`Patent RE42,678 E
`Petitioner’s Proposed Combination Would Have Only
`Been Done Through Impermissible Hindsight. ....................... 73
`Bouevitch Does Not Teach Three Ports as Ports are
`Claimed in the ’678 Patent ....................................................... 87
`Bouevitch and Carr Do Not Disclose Beam-deflecting
`Elements That Switch Spectral Channels to any
`Output Port. .............................................................................. 98
`Ground 3: Bouevitch in View of Sparks Does Not Render
`Obvious Claims 1-4, 17, and 22. .........................................................99
`1.
`Petitioner’s Proposed Combination Would Have Only
`Been Done Through Impermissible Hindsight. ..................... 100
`Petitioner’s Proposed Combination Would Have Only
`Been Done Through Impermissible Hindsight ...................... 105
`Bouevitch Does Not Teach Three Ports as Ports are
`Claimed in the ’678 Patent ..................................................... 119
`Bouevitch and Sparks Do Not Disclose Beam-
`deflecting Elements That Switch Spectral Channels to
`any Output Port ...................................................................... 130
`CONCLUSION ........................................................................................... 132
`
`B.
`
`2.
`
`3.
`
`4.
`
`2.
`
`3.
`
`4.
`
`X.
`
`
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`- ii -
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`

`
`Case IPR2015-00727
`Patent RE42,678 E
`
`I, Dr. Alexander V. Sergienko, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1. My name is Alexander V. Sergienko. Capella Photonics, Inc. has
`
`retained me as an expert witness. I have been asked to provide my expert opinion
`
`on the validity 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 to Wilde et al. (“’678 patent”).
`
`2. I am being compensated for my work at a rate of $400 per hour. My
`
`compensation is not contingent upon and in no way affects the substance
`
`of my testimony.
`
`II. QUALIFICATIONS
`I have a Ph.D. in Physics from Moscow State University in 1987 and
`3.
`
`a Master of Science Degree in Physics from Moscow State University in 1981.
`
`4.
`
`I am currently a full professor at Boston University where I hold joint
`
`appointments in the Photonics Center, the Department of Electrical and Computer
`
`Engineering, and the Department of Physics. My expertise and research interests
`
`include optics, photonics, quantum physics, laser physics, nonlinear optics, and
`
`precise optical measurement in telecommunication and optical engineering.
`
`5.
`
`I have experience and familiarity with the technical areas involved in
`
`this case. With over 30 years of research experience in the field of optics, I have
`
`
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`Case IPR2015-00727
`Patent RE42,678 E
`studied and worked with optical components such as those at issue in this case. For
`
`example, during my tenure as a Director of the Quantum Communication and
`
`Measurement Laboratory at the Boston University Photonics Center, I developed
`
`quantum optical technologies for high-resolution evaluation of optical device
`
`parameters (e.g., fibers, switches, and amplifiers). With this research I have
`
`evaluated
`
`the differences
`
`in wavelength selective switches produced by
`
`commercial vendors. I have thus studied switching technologies such as
`
`microelectromechanical (“MEMS”) mirrors, liquid crystal (“LC”), combined
`
`MEMS+LC, and liquid crystal on silicon (“LCOS”).
`
`6.
`
`For more than a decade, my focus has been on high-resolution
`
`measurement of polarization mode dispersion (“PMD”) in modern wavelength
`
`selective switches operating in 40 Gb/s and 100 Gb/c telecommunication
`
`reconfigurable optical add-drop multiplexer networks. I have worked to develop
`
`measurement technologies that are based on the use of quantum properties of light
`
`and enable measurement of PMD in discrete telecommunication devices, fibers,
`
`and switches with a superior resolution of < 1fs. For details on my research
`
`regarding high-resolution measurement of PMD, see, e.g., Fraine, D.S. Simon, O.
`
`Minaeva, R. Egorov, and A.V. Sergienko, Precise Evaluation of Polarization
`
`Mode Dispersion by Separation of Even- and Odd-Order Effects in Quantum
`
`
`
`- 2 -
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`

`
`Case IPR2015-00727
`Patent RE42,678 E
`Interferometry, OPTICS EXPRESS, v. 19, no. 21, 22820 (2011), attached as Exhibit
`
`2022.
`
`7.
`
`I have published 132 technical papers in research journals in the area
`
`of photonics, physics, and optical technology. Several of these research journals
`
`include: Nature Communications; Journal of the Optical Society of America;
`
`Physical Review Letters; and Physical Review A. I have presented more than 300
`
`research papers at major international research conferences. I have contributed 7
`
`book chapters on precise optical measurement and quantum optics. I have also
`
`served as the sole editor of a book titled Quantum Communications and
`
`Cryptography.
`
`8.
`
`I have taught courses in optical measurement, quantum optics,
`
`photonics, electrical circuit theory, and analog electronics. I have also been an
`
`advisor to graduate students researching various subjects in physics, electrical
`
`engineering, and photonics.
`
`9.
`
`I am a Fellow of the Optical Society of America (OSA) (<10% of
`
`total OSA members) and have been a lead of Quantum Computing and
`
`Communication Technical Group at OSA for several years. I am a member of the
`
`American Physical Society and a member of IEEE.
`
`
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`
`Case IPR2015-00727
`Patent RE42,678 E
`10. From 1990 to 1996, I worked for the University of Maryland and the
`
`National Institute of Standards and Technology (“NIST”). While at NIST, I
`
`developed several novel optical measurement technologies that outperformed
`
`existing conventional approaches both in resolution and in accuracy. In 1996, I
`
`joined the Photonics Center and the Department of Electrical and Computer
`
`Engineering at Boston University. I since have been a member of the Boston
`
`University faculty.
`
`11. My curriculum vitae contains further details on my education,
`
`experience, publications, patents, and other qualifications. A copy is provided as
`
`Exhibit 2024.
`
`III.
`
`INFORMATION CONSIDERED FOR THIS DECLARATION
`
`12.
`
`I have been asked to provide a technical review, analysis, insights, and
`
`opinions regarding the following references. My opinions are based on over 30
`
`years of education, research, and experience, as well as my study of relevant
`
`materials.
`
`13.
`
`I have reviewed and am familiar with the ’678 patent specification,
`
`the claims, and the prosecution history. I understand that the ’678 patent claims the
`
`benefit of U.S. Provisional App. No. 60/277,217 (“’678 Provisional”), filed on
`
`March 19, 2001. I understand that the ’678 patent has been provided as Exhibit
`
`
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`
`Case IPR2015-00727
`Patent RE42,678 E
`1001. I will cite to the specification using the following format: (’678 patent, 1:1-
`
`10). This example citation points to the ’678 patent specification at column 1 lines
`
`1-10.
`
`14.
`
`I have reviewed and am familiar with the Petition for Inter Partes
`
`Review (Paper 1, “Petition”), the Patent Owner Preliminary Response (Paper 7,
`
`“POPR”), and the Board’s Decision to Institute Inter Partes Review (Paper 8,
`
`“Decision”).
`
`15.
`
`I am aware that in addition to IPR2015-00727, the ’678 patent is at
`
`issue in the following inter partes review petitions: IPR2014-00739; IPR2015-
`
`00894; IPR2015-01961; and IPR2015-01971. I am also aware that the ’678 patent
`
`is at issue in district court litigation.
`
`16.
`
`I have reviewed the declaration of Drs. Drabik/Ford (Ex. 1016, Ex.
`
`1037, “Drabik/Ford Dec.”) and understand that I can compare and contrast the
`
`technology analysis in the Drabik/Ford Declaration with my own.
`
`17.
`
`I have reviewed and am familiar with the following listed references. I
`
`may rely upon these materials to respond to arguments raised by Petitioner.
`
`Exhibit
`Number
`1001
`1002
`
`
`
`Reference
`U.S. Patent No. RE42,678 to Wilde et al.
`U.S. Patent No. 6,498,872 to Bouevitch et al.
`
`- 5 -
`
`

`
`Exhibit
`Number
`1003
`1004
`
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`
`1012
`
`1013
`1014
`1015
`
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`1023
`1024
`
`1025
`1026
`
`Case IPR2015-00727
`Patent RE42,678 E
`
`Reference
`Prosecution History for U.S. Patent No. RE42,678.
`Joseph E. Ford et al., Wavelength Add-Drop Switching Using
`Tilting Micromirrors, 17(5) Journal of Lightwave Technology 904
`(1999).
`U.S. Patent No. 6,442,307 to Carr et al.
`U.S. Patent No. 6,625,340 to Sparks et al.
`U.S. Patent Publication No. 2002/0081070 to Tew.
`U.S. Provisional Patent Application No. 60/250,520 to Tew.
`U.S. Patent No. 6,798,941 to Smith et al.
`U.S. Provisional Patent Application No. 60/234,683 to Smith et al.
`J. Alda, “Laser and Gaussian Beam Propagation and
`Transformation,” in Encyclopedia of Optical Engineering, R. G.
`Driggers, Ed. Marcel Dekker, 2003, pp. 999–1013. (“Alda”)
`Joint Claim Construction and Prehearing Statement, Capella
`Litigation, Case No. 3:14-cv-03348-EMC, Dkt. 151.
`Newton’s Telecom Dictionary (17th ed. 2001) (excerpted).
`Fiber Optics Standard Dictionary (3rd ed. 1997) (excerpted).
`Webster’s New World College Dictionary (3rd ed. 1997)
`(excerpted).
`Declaration of Dr. Timothy Drabik.
`Curriculum Vitae of Dr. Timothy Drabik.
`U.S. Patent No. 6,253,001 to Hoen.
`U.S. Patent No. 6,567,574 to Ma et al.
`U.S. Patent No. 6,256,430 to Jin et al.
`U.S. Patent No. 6,631,222 to Wagener et al.
`U.S. Patent No. 5,414,540 to Patel et al.
`U.S. Patent Publication No. 2002/0097956.
`Shigeru Kawai, Handbook of Optical Interconnects (2005)
`(excerpted).
`U.S. Patent No. 6,798,992 to Bishop et al.
`Joseph W. Goodman, Introduction to Fourier Optics, Second
`Edition, McGraw-Hill (1996).
`
`
`
`- 6 -
`
`

`
`Case IPR2015-00727
`Patent RE42,678 E
`
`Reference
`U.S. Patent No. 6,204,946 to Aksyuk et al.
`L.Y. Lin, “Free-Space Micromachined Optical Switches for
`Optical Networking, IEEE Journal of Selected Topics In Quantum
`Electronics,” Vol. 5, No. 1, pp. 4–9, Jan./Feb. 1999.
`S.-S. Lee, “Surface-Micromachined Free-Space Fiber Optic
`Switches With Integrated Microactuators for Optical Fiber
`Communications Systems,” in Tech. Dig. 1997 International
`Conference on Solid-State Sensors and Actuators, Chicago, June
`16-19, 1997, pp. 85–88.
`H. Laor, “Construction and performance of a 576×576 single-stage
`OXC,” in Tech. Dig. LEOS ’99 (vol. 2), Nov. 8–11, 1999, pp. 481–
`482.
`R. Ryf, “1296-port MEMS Transparent Optical Crossconnect with
`2.07 Petabit/s Switch Capacity,” in Tech. Dig. OSA Conference on
`Optical Fiber Communication, March 2001, pp. PD28-1–PD28-3.
`A. Husain, “MEMS-Based Photonic Switching in
`Communications Networks,” in Tech. Dig. OSA Conference on
`Optical Fiber Communication, 2001, pp. WX1-1–WX1-3.
`U.S. Patent No. 5,661,591 to Lin et al.
`H. Laor et al., “Performance of a 576×576 Optical Cross
`Connect,” Proc. of the Nat’l Fiber Optic Engineers Conference,
`Sept. 26-30, 1999.
`V. Dhillon. (2012, Sep. 18). Blazes and Grisms. Available:
`http://www.vikdhillon.staff.shef.ac.uk/teaching/phy217/instrument
`s/ph y217_inst_blaze.html. (“Dhillon”)
`Fianium Ltd. WhiteLase SC480 New Product Data Sheet.
`Available:
`http://www.fianium.com/pdf/WhiteLase_SC480_BrightLase_v1.p
`df. (“Fianium”)
`Declaration of Dr. Joseph E. Ford.
`Curriculum Vitae of Dr. Joseph E. Ford.
`Patent Owner Response, Cisco Systems, Inc. v. Capella Photonics,
`Inc., Case IPR2014-01166, filed May 7, 2015.
`Clifford Holliday, Components for R-OADMs ’05 (B & C
`
`Exhibit
`Number
`1027
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`1034
`
`1035
`
`1036
`
`1037
`1038
`2001
`
`2002
`
`
`
`- 7 -
`
`

`
`Exhibit
`Number
`
`2003
`
`2004
`
`2005
`
`2006
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`Case IPR2015-00727
`Patent RE42,678 E
`
`Reference
`Consulting Services & IGI Consulting Inc. 2005). (“Holliday R-
`OADMs”)
`WavePath 4500 Product Brief, accessed at
`http://www.capellainc.com/downloads/WavePath%204500%20Pro
`duct%20Brief%20030206B.pdf. (“WavePath”)
`Cisco’s Renewed Motion and Memorandum in Support of Motion
`for Stays Pending Final Determinations of Validity by the Patent
`Office, Capella Photonics, Inc. v. Cisco Systems, Inc., Case No.
`14-cv-03348-EMC (N.D. Cal.), filed February 12, 2015. (“Cisco’s
`Mot. for Stay”)
`Order Regarding Cisco’s Pending Motion for Litigation Stay
`Pending Inter Partes Review, Capella Photonics, Inc. v. Cisco
`Systems, Inc., Case Nos. 14-cv-03348-EMC, 14-cv-03350, and 14-
`cv-3351 (N.D. Cal.), ordered March 3, 2015. (“14-cv-03348 Slip
`op.”)
`U.S. Patent No. 6,768,571 to Azarov et al. (“Azarov”)
`The Random House Dictionary of the English Language, 1987, pp.
`404, 742 (“Random House Dictionary”)
`Provisional Patent Application No. 60/267,285 (“’285
`provisional”)
`Transcript of Patent Trial and Appeal Board Conference Call for
`Cases IPR2014-01166 (merged with IPR2015-00816), IPR2014-
`01276 (merged with IPR2015-00894), IPR2015-00726, and
`IPR2015-00727, dated September 23, 2015.
`Transcript of Patent Trial and Appeal Board Conference Call for
`Cases IPR2015-00726 and IPR2015-00727, dated October 29,
`2015.
`Redline Comparison of Paragraph 166 of Drabik Declaration (Ex.
`1016) and Ford Declaration (Ex. 1037)
`Provisional Patent Application No. 60/277,217 (“’678
`Provisional”)
`John C. McNulty, "A perspective on the reliability of MEMS-based
`components for telecommunications", Proc. SPIE 6884,
`
`
`
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`

`
`Exhibit
`Number
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`Case IPR2015-00727
`Patent RE42,678 E
`
`Reference
`Reliability, Packaging, Testing, and Characterization of
`MEMS/MOEMS VII, 68840B (February 18, 2008)
`Capella Photonics Launches Dynamically Reconfigurable
`Wavelength Routing Subsystems, Offering Unprecedented
`Operating Cost Savings and Flexibility for Telecom Service
`Providers, Business Wire (June 2, 2003, 8:16 AM),
`http://www.businesswire.com/news/home/20030602005554/en/Ca
`pella-Photonics-Launches-Dynamically-Reconfigurable-
`Wavelength-Routing. (“Business Wire”)
`Benjamin B. Dingel & Achyut Dutta, Photonic Add-Drop
`Multiplexing Perspective for Next Generation Optical Networks,
`4532 SPIE 394 (2001). (“Dingel”)
`Tze-Wei Yeow, K. L. Eddie Law, & Andrew Goldenberg, MEMS
`Optical Switches, 39 IEEE Comm. I Mag. no. 11, 158 (2001).
`(“Yeow”)
`Patrick B. Chu et al., MEMS: the Path to Large Optical
`Crossconnects, 40 IEEE Comm. I Mag. no. 3, 80 (2002). (“Chu”)
`Clifford Holliday, Switching the Lightwave: OXC’s – The
`Centerpiece of All Optical Network (IGI Consulting Inc. & B & C
`Consulting Services 2001). (“Holliday OXC”)
`An Vu Tran et al., Reconfigurable Multichannel Optical Add-Drop
`Multiplexers Incorporating Eight-Port Optical Circulators and
`Fiber Bragg Gratings, 13 Photonics Tech. Letters, IEEE, no. 10,
`1100 (2001). (“Tran”)
`Jungho Kim & Byoungho Lee, Bidirectional Wavelength Add-
`Drop Multiplexer Using Multiport Optical Circulators and Fiber
`Bragg Gratings, 12 IEEE Photonics Tech. Letters no. 5, 561
`(2000). (“Kim”)
`Max Born & Emil Wolf, Principles of Optics (Pergamon Press, 6th
`Corrected Ed. 1986) (Excerpts). (“Born”)
`Fraine, D.S. Simon, O. Minaeva, R. Egorov, and A.V. Sergienko,
`Precise evaluation of polarization mode dispersion by separation
`of even- and odd-order effects in quantum interferometry, Optics
`Express v. 19, no. 21, 22820 (2011). (“Fraine”)
`
`
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`
`Case IPR2015-00727
`Patent RE42,678 E
`
`Exhibit
`Number
`2023
`
`2024
`
`2025
`
`2026
`2031
`2034
`
`2035
`2036
`2037
`2038
`
`Reference
`Abdul Al-Azzawi, Fiber Optics: Principles and Practices (CRC
`Press 2006). (“Al-Azzawi”)
`Curriculum Vitae of Dr. Alexander V. Sergienko. (“Sergienko
`CV”)
`Ming C. Wu, Olav Solgaard and Joseph E. Ford, “Optical MEMS
`for Lightwave Communication,” Journal of Lightwave
`Technology, Vol. 24, No. 12, Dec. 2006, pp. 4433-4454.
`Deposition Transcript of Dr. Joseph E. Ford
`U.S. Patent No. 6,178,284 to Bergmann & Joseph E. Ford et al.
`Joseph E. Ford, Ph.D., Hand Drawing, Exhibit No. 5 for
`Deposition of Joseph E. Ford, Ph.D., Taken December 11, 2015.
`U.S. Patent No. 6,984,917 to Greywall & Marom.
`U.S. Patent No. 6,178,033 to Joseph E. Ford et al.
`U.S. Patent No. 6,859,573 to Bouevitch et al.
`J. E. Ford, Optical MEMS: Legacy of the telecom boom, Solid-
`State Sensor, Actuator and Microsystems Workshop, Hilton Head,
`SC, Jun. 6-10 (2004).
`
`18.
`
`I recognize that this declaration represents only the opinions I have
`
`formed to date. I may consider additional documents as they become available or
`
`other documents that are necessary to form my opinions. I reserve the right to
`
`revise, supplement, or amend my opinions based on new information and on my
`
`continuing analysis.
`
`IV. OVERVIEW OF THE LAW USED FOR THIS DECLARATION
`19. When considering the ’678 patent and stating my opinions, I am
`
`relying on legal principles that have been explained to me by counsel.
`
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`Case IPR2015-00727
`Patent RE42,678 E
`I understand that for a claim to be found patentable, the claims must
`
`20.
`
`be, among other requirements, novel and nonobvious from what was known at the
`
`time of the invention, i.e., the earliest alleged priority date of the ’678 patent –
`
`March 19, 2001.
`
`21.
`
`I understand that the information that is used to evaluate whether a
`
`claim is novel and nonobvious is referred to as prior art.
`
`22.
`
`I understand that in this proceeding Petitioner Fujitsu Network
`
`Communications, Inc. has the burden of proving that each claim element of the
`
`’678 patent is rendered obvious by the alleged prior art references.
`
`A. Level of Skill in the Art
`I have been asked to consider the level of ordinary skill in the art that
`23.
`
`someone would have had in 2001. With over 30 years of experience in physics and
`
`optical communications, I am well informed with the level of ordinary skill, which
`
`takes into consideration:
`
`• Levels of education and experience of persons working in the field;
`
`• Types of problems encountered in the field; and
`
`• Sophistication of the technology.
`
`
`
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`Case IPR2015-00727
`Patent RE42,678 E
`24. Based on the technologies disclosed in the ’678 patent and the
`
`considerations listed above, a person having ordinary skill in the art (“POSA”)
`
`would have had a Master of Science degree in Electrical Engineering, Physics, or
`
`an equivalent field, as well as at least three years of industry experience designing
`
`optical systems. Less education could be compensated by more direct experience
`
`and vice versa.
`
`25. Throughout my declaration, even if I discuss my analysis in the
`
`present tense, I am always making my determinations based on what a POSA
`
`would have known at the effective filing date. Additionally, throughout my
`
`declaration, even if I discuss something stating “I,” I am referring to a POSA’s
`
`understanding.
`
`B. Obviousness
`I understand that a patent claim is invalid if the claims would have
`26.
`
`been obvious to a POSA at the effective filing date of March 19, 2001. I
`
`understand that the obviousness inquiry should not be done in hindsight, but from
`
`the perspective of a POSA as of the effective filing date of the patent claim.
`
`27.
`
`I understand that to obtain a patent, the claims must have, as of the
`
`effective filing date, been nonobvious in view of the prior art in the field. I
`
`understand that a claim is obvious when the differences between the subject matter
`
`
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`Case IPR2015-00727
`Patent RE42,678 E
`sought to be patented and the prior art are such that the subject matter as a whole
`
`would have been obvious to a POSA at the time the invention was made.
`
`28.
`
`I understand that to prove that prior art or a combination of prior art
`
`renders a patent obvious, it is necessary to: (1) identify the particular references
`
`that, singly or in combination, make the patent obvious; (2) specifically identify
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`which elements of the patent claim appear in each of the asserted references; and
`
`(3) explain how a POSA could have combined the prior art references to create the
`
`claimed invention.
`
`29.
`
`I understand that certain objective indicia can be important evidence
`
`regarding whether a patent is obvious or nonobvious. Such indicia include:
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`commercial success of products covered by the patent claims; long-felt need for
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`the invention; failed attempts by others to make the invention; copying of the
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`invention by others in the field; unexpected results achieved by the invention as
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`compared to the closest prior art; praise of the invention by the infringer or others
`
`in the field; taking of licenses under the patent by others; expressions of surprise
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`by experts and those skilled in the art at the making of the invention; and the
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`patentee proceeded contrary to the accepted wisdom of the prior art.
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`C. Obviousness to Combine
`I understand that obviousness can be established by combining
`30.
`
`multiple prior art references to meet each and every claim element, but I also
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`understand that a proposed combination of references can be susceptible to
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`hindsight bias.
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`31.
`
`I understand that references are more likely to be combinable if the
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`nature of the problem to be solved is the same.
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`32.
`
`I understand that if the combination of references results in the
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`references being unsatisfactory for their intended purposes or the combination
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`changes the references’ principle of operation, a POSA would not have a
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`motivation to combine the references.
`
`33.
`
`I understand that teaching away, e.g., discouragement, is strong
`
`evidence that the references are not combinable. I also understand that a disclosure
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`of more than one alternative does not necessarily constitute a teaching away. I
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`understand that the combination does not need to result in the most desirable
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`embodiment, but if the proposed combination does not have a reasonable
`
`expectation of success at the time of the invention, a POSA would not have
`
`teaching, suggestion, or motivation to combine the references.
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`D. Claim Construction
`I understand that in this proceeding the claims must be given their
`34.
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`broadest reasonable interpretation consistent with the specification. I have used the
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`broadest reasonable interpretation standard when interpreting the claim terms.
`
`V.
`
`INSTITUTED GROUNDS
`I understand that in IPR2015-00727, the Board instituted inter partes
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`35.
`
`review of claims 1-4, 9, 10, 13, 17, 19-23, 27, 29, 44-46, 53 and 61-65 of the ’6 78
`
`patent in the manner shown in the table below.
`
`Claims
`1, 9, 10, 13,
`17, 19, 44, 53,
`61, 64 and 65
`1-4, 19-23, 27,
`29, 44-46 and
`61-63
`
`Type
`Obviousness
`§ 103
`
`Obviousness
`§ 103
`
`Primary Reference Secondary References
`
`Bouevitch
`
`Carr
`
`Bouevitch
`
`Sparks
`
`VI. TECHNOLOGY
`A. General Overview
`36. Telecommunication companies use optical fiber to transmit and
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`receive communication signals for the telephone, cable television, and the Internet.
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`Optical fiber enables various wavelengths of light to simultaneously travel along
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`each optical fiber. Each of the various wavelengths carries data intended for
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`delivery to a specific location on a network. In fiber-optic communications, the use
`
`of multiple wavelengths is referred to as wavelength-division multiplexing
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`(WDM). WDM is an approach that multiplexes a number of optical carrier signals
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`onto a single optical fiber by using different wavelengths of light. Such an
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`approach enables bidirectional communications over each strand of optical fiber, as
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`well as enabling the expansion of the data carrying capacity of that strand. The
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`WDM approach is particularly useful for telecommunications companies because
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`the WDM approach allows these companies to expand the capacity of the network
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`without the cost of laying additional fiber. Capacity of a given optical fiber link
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`can thereby be expanded by simply upgrading the multiplexers and demultiplexers
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`at each end of the optical fiber link. Thus, WDM allows telecommunications
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`companies to accommodate more than one generation of technology development
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`in their optical infrastructure without having to overhaul the optical fiber backbone
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`network. However, WDM poses several technical challenges as the optical
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`switching is more complicated due to the number of optical signals present.
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`Specifically, in a WDM network, each spectral channel must be individually
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`routable to a desirable location.
`
`37. To service many locations, optical fiber networks form a grid
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`spanning across the country. Line segments of optical fiber cable intersect at nodes
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`or hubs, and the nodes or hubs have switching devices to redirect signals, add
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`signals, and drop signals. The ability to add and drop signals requires the use of an
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`optical add-drop multiplexer (OADM).
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`38. An OADM is a device used in WDM systems for multiplexing and
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`routing different channels of light into or out of a single optical fiber. Thus, an
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`OADM device is an example of optical node that is an important component of
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`optical telecommunications networks. “Add” in the term “add-drop” refers to the
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`capability of the OADM device to add one or more new wavelength channels to an
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`existing WDM signal, while “drop” refers to the removal of one or more channels
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`from the existing WDM signal. Those “dropped” channels are passed onto another
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`network path for subsequent processing or routing.
`
`39. At the time of the invention, a conventional OADM typically
`
`consisted of three stages: an optical de-multiplexer, an optical multiplexer, together
`
`with a means of reconfiguration placed between the optical de-multiplexer and the
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`multiplexer. The de-multiplexer separates wavelength channels from an input fiber
`
`onto ports. The reconfiguration can be achieved by, for example, optical switches
`
`which direct the wavelength channels to the multiplexer or to the drop ports. The
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`multiplexer multiplexes the wavelength channels that are to continue on from de-
`
`multiplexer ports with those from the add ports, onto a single output fiber.
`
`40. At the time of the invention, there were several ways to realize an
`
`OADM. There are a variety of de-multiplexer and multiplexer technologies
`
`including optical circulators, free space grating devices and integrated planar
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`arrayed waveguide gratings. The switching or reconfiguration functions include a
`
`variety of switching technologies including microelectromechanical systems
`
`(MEMS) devices.
`
`41. The figure (reproduced below) shows how optical add drop
`
`multiplexers (“OADM”), or alternatively reconfigurable optical add drop
`
`multiplexers (“ROADM”), interconnect different optical networks. (See ’678
`
`Provisional, Ex. 2012, FIG. 2.)
`
`
`
`42. As alluded to above, OADMs are the backbone of advanced fiber
`
`optic networks because switching is accomplished in the optical domain by
`
`OADMs. Multiple optical fibers may connect to ports of an OADM, and OADMs
`
`can switch wavelengths among optical fibers connected to its ports. OADMs can
`
`switch signals traveling along fiber optic cables, redirect signals to different
`
`endpoints, add and drop signals, and control traffic flow.
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`In reference to the figure shown above, an OADM may connect a
`
`43.
`
`wide area (or long haul) network to a metropolitan area network. Another OADM
`
`may connect a metropolitan area network to a local access network, for example a
`
`local network in a neighborhood. During switching, OADMs can separate all the
`
`wavelengths of light entering the device and route the wavelengths of light to
`
`different endpoints depending on the OADM’s configuration. An OADM may, for
`
`example, switch wavelengths from optical fibers of the wide area network to
`
`optical fibers of a metro area network. An OADM may also switch wavelengths
`
`from optical fibers of a metro area network to optical fibers of a wide area
`
`network.
`
`44. OADMs can drop certain wavelengths from a fiber altogether and can
`
`add new wavelengths to a fiber. Further, OADMs can control traffic flow across
`
`fiber optic cables. If traffic along one cable is particularly heavy at certain times,
`
`OADMs can manage the load by redirecting traffic along different fibers.
`
`45.
`
`In addition to switching, add/drop, and traffic control capabilities,
`
`OADMs have the ability to control the output power. As a result, OADMs provide
`
`high uniformity or equalization in the channels’ power across all-optical networks.
`
`One way OADMs control power output is through deliberate misalignment of the
`
`light beam to an output waveguide. Misalignment controls power by varying the
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`coupling of the light beam to the optical waveguide. Angular misalignment
`
`changes the angle the light beam is incident to the optical waveguide, and lateral
`
`misalignment reduces the p