`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`JDS UNIPHASE CORPORATION
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`
`
`Patent No. RE42,368
`Filing Date: June 15, 2010
`Reissue Date: May 17, 2011
`
`Title: RECONFIGURABLE OPTICAL ADD-DROP
`MULTIPLEXERS WITH SERVO CONTROL AND DYNAMIC
`SPECTRAL POWER MANAGEMENT CAPABILITIES
`
`
`
`Inter Partes Review No. Unassigned
`
`__________________
`
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
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`
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`Inter Partes Review No. Unassigned
`Petition for Inter Partes Review
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`TABLE OF CONTENTS
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`Page
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`I.
`
`INTRODUCTION ......................................................................................... 1
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ..................... 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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`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................. 1
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`Related Matters under 37 C.F.R. § 42.8(b)(2) ...................................... 2
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`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) ................... 3
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`Service Information ............................................................................... 3
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`Power of Attorney ................................................................................. 4
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`III. PAYMENT OF FEES - 37 C.F.R. § 42.103 ................................................. 4
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. § 42.104 ............................................................................................... 4
`
`A. Grounds for Standing under 37 C.F.R. § 42.104(a) .............................. 4
`
`B.
`
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`C.
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`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested ................................................. 4
`
`Threshold Requirement for Inter Partes Review 37 C.F.R. §
`42.108(c) ................................................................................................ 5
`
`
`V.
`
`BACKGROUND OF TECHNOLOGY RELATED TO THE ‘368
`PATENT ......................................................................................................... 6
`
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`VI. SUMMARY OF THE ‘368 PATENT .......................................................... 9
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`VII. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) .............. 11
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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.
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`I.
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`J.
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`Legal Overview ................................................................................... 11
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`“continuously controllable” ................................................................. 11
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`“in two dimensions” ............................................................................ 12
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`“to control the power of the spectral channel reflected to said
`selected port” ....................................................................................... 13
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`“spectral monitor” ............................................................................... 13
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`“servo-control assembly” .................................................................... 14
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`“beam-focuser” .................................................................................... 16
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` “controlling dynamically and continuously” ..................................... 17
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`“so as to combine selected ones of said spectral channels into
`an output multi-wavelength optical signal” ........................................ 17
`
`“control the power of the spectral channels combined into said
`output multi-wavelength optical signal” ............................................. 17
`
`
`VIII. CLAIMS 1-6, 9-13, AND 15-22 OF THE ‘368 PATENT ARE
`UNPATENTABLE ...................................................................................... 18
`
`A.
`
`Sparks, Lin and Dueck are all prior art to the ‘368 Patent .................. 18
`
`B. Overview of the Bouevitch Prior Art .................................................. 19
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`C. Overview of the Sparks Prior Art ........................................................ 20
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`D.
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`PHOSITA had ample reason to combine Bouevitch with
`Sparks, including the motivations disclosed in both references ......... 20
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`Inter Partes Review No. Unassigned
`Petition for Inter Partes Review
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`E.
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`Bouevitch and Sparks Render Obvious All Petitioned Claims ........... 24
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`1.
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`Claim 1 – Grounds 1 and 2 ....................................................... 24
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`(1) Claim 1 - preamble ......................................................... 25
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`(2) Claim element 1[a] - input port ...................................... 25
`
`(3) Element 1[b] – Output & other ports for 2nd
`channels .......................................................................... 26
`
`
`(4) Element 1[c] - wavelength-selective device ................... 27
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`(5) Element 1[d] – 2-axis beam-deflecting elements ........... 27
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`(6) Ground 2 – Bouevitch + Sparks + Lin ........................... 31
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`(7)
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`2-axis beam-deflecting elements .................................... 33
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`(8)
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`Power Control using 2-Axis Mirrors: ............................. 34
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`Claim 2 ...................................................................................... 36
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`Claim 3 ...................................................................................... 38
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`Claim 4 ...................................................................................... 42
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`Claim 5 ...................................................................................... 43
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`Claim 6 ...................................................................................... 44
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`Claim 9 ...................................................................................... 45
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`Claim 10 .................................................................................... 46
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`Inter Partes Review No. Unassigned
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`9.
`Claim 11 .................................................................................... 46
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`10. Claim 12 – Grounds 1, 2, 3 and 4 ............................................. 47
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`11. Claim 13 .................................................................................... 49
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`12. Claim 15 – Grounds 1 and 2 ..................................................... 50
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`(1) Element 15[c] – drop ports for dropped channels .......... 51
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`(2) Element 15[d]-[e] ............................................................ 51
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`(3) Element 15[f] – dropped channels to drop ports ............ 52
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`13. Claim 16 – Grounds 1 and 2 ..................................................... 52
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`(1) Element 16[c] – Add ports for added channels .............. 53
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`(2) Element 16[e] – Addition of channels from add
`ports ................................................................................ 53
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`14. Claim 17 – Grounds 1 and 2 ..................................................... 54
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`(1) Element 17[a] – Separating signal into channels ........... 54
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`(2) Element 17[b] – Imaging channels ................................. 55
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`(3) Element 17[c] – Dynamic & continuous 2-axis
`control ............................................................................. 55
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`15. Claim 18 .................................................................................... 57
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`16. Claim 19 .................................................................................... 57
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`17. Claim 20 .................................................................................... 58
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`18. Claim 21 .................................................................................... 59
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`19. Claim 22 .................................................................................... 59
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`Inter Partes Review No. Unassigned
`Petition for Inter Partes Review
`List of Exhibits Cited in this Petition
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`Exhibit 1001:U.S. Reissued Patent No. RE42,368 to Chen et al. (“’368 Patent”)
`
`Exhibit 1002: File History of U.S. Patent No. RE42,368 to Chen et al. (“’368 File
`History”)
`
`Exhibit 1003: U.S. Patent No. 6,498,872 to Bouevitch et al. (“Bouevitch”)
`
`Exhibit 1004: U.S. Patent No. 6,625,340 to Sparks et al. (“Sparks Patent,” or
`“Sparks”)
`
`Exhibit 1005: Excerpts from Born et al., PRINCIPLES OF OPTICS, (6th Ed.,
`Pergammon Press 1984)
`
`Exhibit 1006: U.S. Patent No. 6,798,992 to Bishop et al. (“Bishop”)
`
`Exhibit 1007: U.S. Patent No. 6,507,421 to Bishop et al. (“Bishop ‘421”)
`
`Exhibit 1008: Provisional Patent App. No. 60/277,217 (“‘368 Provisional”)
`
`Exhibit 1009: U.S. Patent No. 6,253,001 to Hoen (“Hoen”)
`
`Exhibit 1010: U.S. Patent No. 5,661,591 to Lin at al. (“Lin”)
`
`Exhibit 1011: Doerr et al., An Automatic 40-Wavelength Channelized Equalizer,
`IEEE Photonics Technology Letters, Vol., 12, No. 9, (Sept. 2000)
`
`Exhibit 1012: U.S. Patent No. 5,936,752 to Bishop et al. (“Bishop ‘752”)
`
`Exhibit 1013: Excerpt from New World English Dictionary (“servo” and
`“servomechanism”)
`
`Exhibit 1014: Excerpt from Collins English Dictionary - Complete & Unabridged
`10th Edition. HarperCollins Publishers.
`http://dictionary.reference.com/browse/feedback (accessed: May 07,
`2014) (“feedback”)
`
`Exhibit 1015: Ford et al., Wavelength Add–Drop Switching Using Tilting
`Micromirrors, Journal of Lightwave Technology, Vol. 17, No. 5
`(May 1999) (“Ford”)
`
`Exhibit 1016: U.S. Patent No. 6,069,719 to Mizrahi (“Mizrahi”)
`
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`Inter Partes Review No. Unassigned
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`Exhibit 1017: U.S. Patent No. 6,204,946 to Aksyuk et al. (“Aksyuk”)
`
`Exhibit 1018: U.S. Patent Application Publication No. US 2002/0105692 to
`Lauder et al. (“Lauder”)
`
`Exhibit 1019: Giles et al., Reconfigurable 16-Channel WDM DROP Module
`Using Silicon MEMS Optical Switches, IEEE Photonics Technology
`Letters, Vol. 11, No. 1, (Jan. 1999) (“Giles 16-Channel WDM
`DROP Module”)
`
`Exhibit 1020: Andrew S. Dewa, and John W. Orcutt, Development of a silicon 2-
`axis micro-mirror for optical cross-connect, Technical Digest of the
`Solid State Sensor and Actuator Workshop, Hilton Head Island, SC,
`June 4-8, 2000) at pp. 93-96 (“Dewa”)
`
`Exhibit 1021: U.S. Patent No. 6,011,884 to Dueck et al. (“Dueck”)
`
`Exhibit 1022: U.S. Patent No. 6,243 ,507 to Goldstein et al. (“Goldstein ‘507”)
`
`Exhibit 1023: U.S. Patent No. 6,567,574 to Ma, et al. (“Ma”)
`
`Exhibit 1024: U.S. Patent No. 6,256,430 to Jin, et al. (“Jin”)
`
`Exhibit 1025: U.S. Patent No. 6,631,222 to Wagener et al. (“Wagener”)
`
`Exhibit 1026: U.S. Patent No. 5,875,272 to Kewitsch et al. (“Kewitsch”)
`
`Exhibit 1027: U.S. Patent No. 6,285,500 to Ranalli at al. (“Ranalli”)
`
`Exhibit 1028: Declaration of Sheldon McLaughlin
`
`Exhibit 1029: Declaration of Dr. Dan Marom filed in Inter Partes Review Case
`2014-01166
`
`Exhibit 1030: James A. Walker et al., Fabrication of a Mechanical Antireflection
`Switch for Fiber-to-the-Home Systems, 5 J. Microelectromechanical
`Sys. 45, 46-47, Fig. 3 (1996) (“Walker”).
`
`Exhibit 1031: U.S. Patent No. 5,414,540 to Patel et al. (“Patel”)
`
`Exhibit 1032: Borella, et al., Optical Components for WDM Lightwave
`Networks, Proceedings of the IEEE, Vol. 85, NO. 8, August 1997
`(“Borella”)
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`Inter Partes Review No. Unassigned
`Petition for Inter Partes Review
`Exhibit 1033: U.S. Patent No. 6,928,244 to Goldstein et al. (“Goldstein ‘244”)
`
`Exhibit 1034: Steffen Kurth et al., Silicon mirrors and Micromirror Arrays for
`Spatial Laser Beam Modulation, Sensors and Actuators, A 66, July
`1998
`
`Exhibit 1035: C. Randy Giles and Magaly Spector, The Wavelength Add/Drop
`Multiplexer for Lightwave Communication Networks, Bell Labs
`Technical Journal, (Jan.-Mar. 1999) (“Giles and Spector”)
`
`Exhibit 1036: U.S. Patent No. 5,872,880 to Maynard (the “Maynard patent”)
`
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`viii
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`Inter Partes Review No. Unassigned
`Petition for Inter Partes Review
`I.
`INTRODUCTION
`Petitioner JDS Uniphase Corporation requests inter partes review under 35
`
`U.S.C. §§ 311-319 and 37 C.F.R. § 42, of claims 1-6, 9-13, and 15-22 (the
`
`“Petitioned Claims”) of U.S. Patent No. RE42,368 (Ex. 1001) (“the ‘368 Patent”),
`
`assigned on its face to Capella Photonics, Inc (the “Patent Owner”).
`
`In prosecuting its reissue patent, patentee acknowledged that its original
`
`claim set was overbroad and invalid in light of U.S. Patent No. 6,498,872 (Ex.
`
`1003) (“Bouevitch”). To fix this mistake and to distinguish over Bouevitch,
`
`patentee made two amendments to all of its independent claims. But those
`
`amendments merely swapped one known component for another known
`
`component. As described in the body of this petition, those amendments swapped
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`one known type of mirror for another known type of mirror.
`
`While the patentee’s reissue amendments may have minimally addressed the
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`novelty issues in light of Bouevitch, those amendments do not overcome
`
`obviousness. Bouevitch in combination with the prior art described in the body of
`
`this petition renders the Petitioned Claims invalid as obvious.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`
`Petitioner JDS Uniphase Corporation is the real party-in-interest for this
`
`petition.
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`1
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`Inter Partes Review No. Unassigned
`Petition for Inter Partes Review
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`
`The ‘368 Patent is asserted against third party Cisco Systems, Inc. in an on-
`
`going patent lawsuit brought by Patent Owner in Capella Photonics, Inc. v. Cisco
`
`Systems, Inc., Civil Action Nos. 1-14-cv-20529 (“Capella litigation”), filed in the
`
`Southern District of Florida on February 14, 2014. Claims 1-6, 9-13 and 15-22 of
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`the ‘368 Patent are asserted in the Capella litigation.
`
`The ‘368 Patent is also the subject of an inter partes review proceeding,
`
`IPR2014-01166. Inter partes review of claims 1-6, 9-13 and 15-22 in that case
`
`was ordered on January 30, 2015. The contentions of the present Petition regarding
`
`obviousness of claims 1-6, 9-13 and 15-22 share some similarities, but are not
`
`identical, to those of IPR2014-01166. For example, IPR2014-01166 uses U.S.
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`Patent No. 6,798,941 to Smith (“Smith”) as a secondary reference under §103(a)
`
`while the present Petition does not rely on Smith and instead uses U.S. Patent No.
`
`6,625,340 to Sparks (“Sparks”). Both Smith and Sparks qualify as §102(e) prior art
`
`with respect to the ‘368 Patent. However, Sparks has an earlier priority date
`
`relative to Smith and therefore Sparks has a higher likelihood of surviving a prior-
`
`invention date challenge. Also, Sparks and Smith are not identical. For at least
`
`these reasons, the present Petition and underlying contentions are not redundant in
`
`view of IPR2014-01166.
`
`Petitioner is also filing a petition for inter partes review of U.S. Patent
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`
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`2
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`Inter Partes Review No. Unassigned
`Petition for Inter Partes Review
`RE42,678 which is directed to subject matter similar to that of the ‘368 Patent.
`
`C.
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`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`
`LEAD COUNSEL
`Walter C. Linder (Reg. No. 31,707)
`
`BACK-UP COUNSEL
`Ken Liebman
`
`Tel: 612-766-8801
`
`Tel: 612-766-8800
`
`walter.linder@FaegreBD.com
`
`ken.liebman@FaegreBD.com
`
`Paul Sherburne (Reg. No. 57,843)
`
`Tel: 612-766-7694
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`paul.sherburne@FaegreBD.com
`
`All of: Faegre Baker Daniels LLP, 90 South Seventh Street, 2200 Wells Fargo
`
`Center Minneapolis, MN 55402; Fax: 612-766-1600
`
`Petitioners hereby request authorization to file a motion for Kenneth
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`Liebman to appear pro hac vice. Mr. Liebman is an experienced litigation attorney
`
`and has established familiarity with the subject matter at issue in the proceeding.
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`Petitioners will file such motion upon the grant of this request.
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`D.
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`Service Information
`
`As identified in the attached Certificate of Service, a copy of the present
`
`petition, including all Exhibits and a power of attorney, is being served on the
`
`attorney or agent of record for the ‘368 Patent.
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`Petitioner’s lead and back-up counsel may be served at the address provided
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`3
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`Inter Partes Review No. Unassigned
`Petition for Inter Partes Review
`in Section I.C. of this Petition. Petitioner consents to service by e-mail at the e-mail
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`addresses of lead and back-up counsel provided above.
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`E.
`
`Power of Attorney
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`A power of attorney is being filed concurrently with this petition in
`
`accordance with 37 C.F.R, § 42.10(b).
`
`III. PAYMENT OF FEES - 37 C.F.R. § 42.103
`This petition for inter partes review requests review of 19 claims of the ‘368
`
`Patent and is accompanied by a request fee payment of $24,600. See 37 C.F.R. §
`
`42.15. Thus, this petition meets the fee requirements under 35 U.S.C. § 312(a)(1).
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`
`A. Grounds for Standing under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ‘368 Patent is eligible for inter partes review and
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`further certifies that Petitioner is not barred or otherwise estopped from requesting
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`inter partes review challenging the identified claims on the grounds identified
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`within the present petition.
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`B.
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`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested
`Petitioner requests inter partes review of claims 1-6, 9-13, and 15-22 of the
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`‘368 Patent under the statutory grounds set forth in the table below. Petitioner asks
`
`that each of the claims be found unpatentable. An explanation of how the
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`Petitioned Claims are unpatentable is included in Part VIII of this petition.
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`Inter Partes Review No. Unassigned
`Petition for Inter Partes Review
`Additional explanation and support for each ground is set forth in the Declaration
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`of a technical expert, Sheldon McLaughlin, Ex. 1028 (“McLaughlin Decl.”).
`
`Ground
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`1
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`2
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`3
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`4
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`‘368 Patent
`Claims
`1-6, 9-13, and
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`15-22
`
`Basis for Challenge
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`Obvious under § 103(a) by Bouevitch in view of Sparks.
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`1-6, 9-13, and
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`Obvious under § 103(a) by Bouevitch in view of Sparks
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`15-22
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`further in view of Lin.
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`12
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`12
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`Obvious under § 103(a) by Bouevitch in view of Sparks in
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`further view of Dueck.
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`Obvious under § 103(a) by Bouevitch in view of Sparks
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`and Lin in further view of Dueck.
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`
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`Each of the references relied upon in the grounds set forth above qualify as
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`prior art under 35 U.S.C., § 102(e) or (b).
`
`This Petition and the Declaration of Sheldon McLaughlin, submitted
`
`herewith, cite additional prior art materials to provide background of the relevant
`
`technology and to explain why one of skill in the art would combine the cited
`
`references.
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`C.
`
`Threshold Requirement for Inter Partes Review 37 C.F.R. §
`42.108(c)
`Inter partes review of claims 1-6, 9-13, and 15-22 should be instituted
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`5
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`Inter Partes Review No. Unassigned
`Petition for Inter Partes Review
`because this Petition establishes a reasonable likelihood that Petitioner will prevail
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`with respect to at least one of the claims challenged. (See 35 U.S.C. § 314(a).)
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`Each limitation of the challenged claims is disclosed by and/or obvious in light of
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`the prior art.
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`V.
`
`BACKGROUND OF TECHNOLOGY RELATED TO THE ‘368 Patent
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`Fiber-optic communication uses light to carry information over optical
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`fibers. Originally, fiber-optic systems used one data channel per fiber. To increase
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`the number of channels carried by a single fiber, wavelength division multiplexing
`
`(“WDM”) was developed. WDM is a type of optical communication that uses
`
`different wavelengths of light to carry different channels of data. WDM combines
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`(multiplexes) multiple individual channels onto a single fiber of an optical
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`network. WDM was known before the ‘368 Patent’s priority date. (E.g., Ford, Ex.
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`1015 at 904.)
`
`At different points in a fiber network, some of the individual channels may
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`be extracted (dropped) from the fiber, for example when those channels are
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`directed locally and need not be passed further down the fiber network. And at
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`these network points, other channels may also be added into the fiber for
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`transmission onward to other portions of the network. To handle this add/drop
`
`process, optical add-drop multiplexers (OADMs) were developed. OADMs are
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`used to insert channels onto, pass along, and drop channels from an optical fiber
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`Inter Partes Review No. Unassigned
`Petition for Inter Partes Review
`without disrupting the overall traffic flow on the fiber. (‘368 Patent, Ex. 1001 at
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`1:51-58.) OADMs were known long before the ‘368 Patent’s priority date. (E.g.,
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`Ford, Ex. 1015 at 904.)
`
`(Re)configurable OADMs are referred to as “ROADMs” or “COADMs,”
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`which are controllable to dynamically select which wavelengths to add, drop, or
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`pass through. (Bouevitch, Ex. 1003 at Abstract; Ex. 1019 at 64.) These types of
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`devices were known in the art prior to the ‘368 Patent’s priority date. (McLaughlin
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`Decl., Ex. 1028 at ¶ 21.)
`
`ROADMs operate by separating the input light beam into individual
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`beams—each beam corresponding
`
`to an
`
`individual channel. Each
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`input
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`channel/beam is individually routed by a beam-steering system to a chosen output
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`port of the ROADM. For example, a first channel can be steered so that it is
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`switched from an “input” port to an “output” port. Channels switched to the
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`“output” port are passed along the network. At the same time, a second channel
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`can be switched to a “drop” port and removed from the main fiber. The ROADM
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`could also add a new channel to the main fiber through the “add” port to replace
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`the dropped channel. These add/drop techniques were known prior to the ‘368
`
`Patent’s priority date. (McLaughlin Decl., Ex. 1028 at ¶ 29; Bouevitch, Ex. 1003 at
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`5:15-38; Ex. 1016 at 1:55-2:45; Ex. 1017 at 1:56-67.)
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`Inter Partes Review No. Unassigned
`Petition for Inter Partes Review
`In addition to routing channels, ROADMS may also be used to control the
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`power of the individual channels. Power control is often performed by steering
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`individual beams slightly away from the target port such that the misalignment
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`reduces the amount of the channel’s power that enters the port. This misalignment
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`power control technique in ROADMs was known prior to the ‘368 priority date.
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`(See e.g., McLaughlin Decl., Ex. 1028 ¶ 26, ¶ 50; Bishop, Ex. 1006 at 2:9-21.)
`
`ROADMs use wavelength selective routers (WSRs) to perform switching
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`and power control. (Kewitsch, Ex. 1026 at 10:64-11:29.) WSRs are also referred to
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`as wavelength selective switches (WSSs). (See, e.g., Ranalli, Ex. 1027 at Fig. 1.)
`
`As of the ‘368 priority date, WSRs/WSSs were known. (See, e.g., McLaughlin
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`Decl. Ex. 1028 at ¶ 26; Kewitsch, Ex. 1026 at Abstract, 4:15-25; Ranalli, Ex. 1027
`
`at Fig. 1; Borella, Ex. 1032 at 1292.)
`
`The embodiment of WSRs relevant to this petition steers light beams using
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`small
`
`tilting mirrors, sometimes called MEMS, which stand for Micro
`
`ElectroMechanical Systems. (McLaughlin Decl., Ex. 1028 ¶ 27, 22.) Prior-art
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`WSRs could tilt the individual mirrors using analog voltage control. (Id.) The tilt
`
`allows reflected beams to be aimed at selected ports. Prior-art MEMS mirrors
`
`could be tilted in one or two axes. (Id. at ¶28.)
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`Inter Partes Review No. Unassigned
`Petition for Inter Partes Review
`VI. SUMMARY OF THE ‘368 Patent
`
`The ‘368 Patent originally issued as U.S. Patent No. 6,879,750. According to
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`the patentee, the original patent’s claims were invalid over Bouevitch. The patentee
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`expressly acknowledged its claiming mistake and identified the two elements that
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`it alleged needed to be added to its claims to support patentability– (1) mirror
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`control in two-dimensions, and (2) the power control via mirror tilt:
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`At least one error upon which reissue is based is described as
`follows: Claim 1 is deemed to be too broad and invalid in view of
`U.S. Patent No. 6,498,872 to Bouevitch and further in view of one
`or more of Ex. 1023 U.S. Patent No. 6,567,574 to Ma, Ex. 1024
`U.S. Patent No. 6,256,430 to Jin, or Ex. 1025 U.S. Patent No.
`6,631,222 to Wagener by failing to include limitations regarding
`the spatial array of beam deflecting elements being individually
`and continuously controllable in two dimensions to control the
`power of the spectral channels reflected to selected output ports, as
`indicated by the amendments to Claim 1 in the Preliminary
`Amendment. (Ex. 1002 at 81-82.)
`In its efforts to distinguish over Bouevitch, patentee’s first amendment
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`specified that the beam-deflecting elements must be controllable in two
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`dimensions. This amendment corresponds to a mirror tilting in two axes rather than
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`one. As for the second amendment, Patent Owner added a use clause stating that
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`the beam-deflecting elements was intended to be used for power control of a
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`spectral channel. As explained in the claim construction section (§ VII, below), this
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`Petition for Inter Partes Review
`clause is merely functional language and is limiting only to those structures that
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`may be capable of performing spectral channel power control. Claim 1 of the ‘750
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`patent as amended, with the amendments underlined, is shown in Table 1.
`
`Table 1
`1 An optical add-drop apparatus comprising
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`1a an input port for an input multi-wavelength optical signal having first spectral
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`channels;
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`1b one or more other ports for second spectral channels; an output port for an
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`output multi-wavelength optical signal;
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`1c a wavelength-selective device for spatially separating said spectral channels;
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`1d a spatial array of beam-deflecting elements positioned such that each element
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`receives a corresponding one of said spectral channels, each of said elements
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`being individually and continuously controllable in two dimensions to reflect
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`its corresponding spectral channel to a selected one of said ports and to control
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`the power of the spectral channel reflected to said selected port.
`
`The patentee made almost identical amendments to the 3 other independent
`
`claims. Through the patentee’s admissions about Bouevitch, the patentee also
`
`admitted that Bouevitch disclosed all the elements of at least claim 1, except for 2-
`
`axis mirrors. The patentee first admitted that Bouevitch anticipated the pre-reissue
`
`version of claim 1 as it appeared in the ‘750 patent. Following that, the only
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`amendments the patentee added to the claim were 2-axis mirrors and their intended
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`use for power control. Because the intended use language limits the claims to
`
`capable structures, the patentee admitted that Bouevitch disclosed all limitations
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`but for 2-axis mirrors capable of power control. (See MPEP § 2217 (“admissions
`
`by the patent owner in the record as to matters affecting patentability may be
`
`utilized during a reexamination”) (citing 37 CFR 1.104(c)(3)).)
`
`VII. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
`
`Legal Overview
`A.
`A claim subject to inter partes review (“IPR”) is given its “broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears.” (37 C.F.R. § 42.100(b).) Except as expressly set out below, Petitioner
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`construes the language of the claims to have their plain and ordinary meaning.
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`Petitioner notes that the standard of construction applied in this proceeding is not
`
`necessarily that which would be applied in any related litigation, and, as such,
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`reserves the right to proffer other claim construction positions in litigation in
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`conformity with any applicable and relevant standards therein.
`
`B.
`
`“continuously controllable”
`
`The term “continuously controllable” is recited in claims 1, 15, and 16. The
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`broadest reasonable interpretation (“BRI”) for the term “continuously controllable”
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`in light of the specification is “able to effect changes with fine precision”.
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`It is noted that the ‘368 Patent provided “under analog control” as an
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`example of continuous control. The ‘368 Patent explains that “[a] distinct feature
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`of the channel micromirrors in the present invention, in contrast to those used in
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`the prior art, is that the motion...of each channel micromirror is under analog
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`control such that its pivoting angle can be continuously adjusted.” (Id., 4:7-11;
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`emphasis added). Another passage in the specification states that “[w]hat is
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`important is that the pivoting (or rotational) motion of each channel micromirror be
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`individually controllable in an analog manner, whereby the pivoting angle can
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`be continuously adjusted so as to enable the channel micromirror to scan a spectral
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`channel across all possible output ports.” (Id., 9:9-14; emphasis added). Yet
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`another passage states that “channel micromirrors 103 are individually controllable
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`and movable, e.g., pivotable (or rotatable) under analog (or continuous) control.”
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`(Id., 7:6-8). While an element that is under analog control would therefore be
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`within the scope of the BRI of continuously controllable, the example of analog
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`control does not alone define the BRI of continuously controllable.
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`C.
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`“in two dimensions”
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`The term “in two dimensions” is recited in claims 1, 15, and 16. The BRI for
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`this term in light of the specification is "in two axes." As the claim states, the
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`“beam-deflecting elements” are controllable “in two dimensions.” The ‘368 Patent
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`consistently describes these beam-deflecting elements as various types of mirrors
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`which are rotated around the two axes in which the mirrors tilt to deflect light. The
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`specification states, for example, that the beam-deflecting elements “may be
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`pivoted about one or two axes.” (Ex. 1001 at 4:25-26, Abstract.) The specification
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`also describes certain embodiments that use two-dimensional arrays of input and
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`output ports. For these embodiments, the specification describes that the mirrors
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`are required to tilt along two axes (“biaxially”) to switch the beams between the
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`ports. (Id., 4:25-29.) And further, the ‘368 Patent explains how to control power by
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`tilting the mirrors in two axes. (Id., 16:36-51 (describing the combined use of
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`major and minor “tilt axes” for power control & switching).)
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`D.
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`“to control the power of the spectral channel reflected to said
`selected port”
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`The term “to control the power of the spectral channel reflected to said
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`selected port” is recited in claims 1, 15, and 16. The BRI for this term in light of
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`the specification is “to change the power in the spectral channel that is received by
`
`a particular port”. It is noted that the claim language refers merely to intended use,
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`and thus is limited only to structure that may be capable of redirecting a spectral
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`channel to a particular port.
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`E.
`
`“spectral monitor”
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`The term “spectral monitor” is recited in claim 3. The BRI for the term
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`“spectral monitor” is “a device for measuring power in a spectral channel.” This
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`definition is consistent with the use of the term in the specification, where the
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`monitor is used to measure the power of the output signals. The spectral monitor is
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`shown in Figure 4A measuring output power, and the specification describes the
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`spectral monitor as providing power measurement of a spectral channel as part of a
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`feedback loop. (See ’368 Patent, Ex. 1001 at 11:14-23 (“processing unit 470 uses
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`the power measurements from the spectral monitor 460 to provide feedback
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`control”).) Measuring the power of individual channels of a multiplexed or de-
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`multiplexed signal is within the scope of the BRI of spectral monitor.
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`F.
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`“servo-control assembly”
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`The term “servo-control assembly” is recited in claims 3 and 4. The BRI for
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`the term “servo control assembly” in light of the specification is “feedback-based
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`control assembly”. This definition is consistent with the use of the term in the
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`specification, which equates servo control with use of a feedback loop. For
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`example, when describing its “servo control,” the ‘368 Patent teaches a spectral
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`monitor that provides “feedback” control for the mirrors. “The servo-control
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`assembly 440 further includes a processing unit 470, in communication with the
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`spectral monitor 460 and the channel micromirrors 430 of the WSR apparatus 410.
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`The processing unit 470 uses the power measurements from the spectral monitor
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`460 to p
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