`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`LUMENTUM HOLDINGS, INC., LUMENTUM, INC.
`AND LUMENTUM OPERATIONS, LLC
`Petitioners
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`
`
`Case No. IPR2015-00731
`
`Patent No. RE 42,368
`
`__________________
`
`
`
`PETITIONERS’ REPLY
`TO PATENT OWNER RESPONSE
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`

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`Case No. IPR2015-00731
`Petitioners’ Reply to Patent Owner Response
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`
`Table of Contents
`
`I. INTRODUCTION ............................................................................................. 1
`II. RESPONSES TO PATENT OWNER’S ARGUMENTS............................... 1
`A.
`It Was Obvious and Not Hindsight to Combine Features of
`Bouevitch, Sparks, Lin and Dueck [Corresponds to PO Response
`§ III.A.] ....................................................................................................... 1
`1. Petitioners Do Not Combine Disparate Embodiments of
`Bouevitch ............................................................................................... 1
`2. It Was Obvious to Combine Sparks Two-Axis Mirrors with the
`Fig. 11 Embodiment of Bouevitch ........................................................ 3
`B. Bouevitch Does Not Teach Away From Misalignment for Power
`Control [Corresponds to PO Response § III.B.] ......................................... 4
`C. Bouevitch and Sparks are Not Incompatible Technologies
`[Corresponds to PO Response § III.C.] ...................................................... 6
`D. Bouevitch and Dueck are Not Incompatible Technologies
`[Corresponds to PO Response § III.D.] ...................................................... 7
`E. Bouevitch Teaches Input, Output and Other Ports [Corresponds to
`PO Response § III.E.] ................................................................................. 9
`1. “Ports” Include Circulator Ports ............................................................ 9
`a. The Ordinary and Customary Meaning of Ports Includes
`Circulator Ports ................................................................................ 9
`b. The Claims Do Not Recite Collimator Ports ................................. 10
`2. The Patentee Did Not Disavow Circulator Ports ................................ 11
`a. PO’s Evidence Does Not Meet the High Standard for
`Disavowal ....................................................................................... 11
`b. The ’368 Patent Expressly Encompasses Circulators .................... 12
`c. The Claims’ Preambles Do Not Exclude Circulators .................... 13
`F. Bouevitch Reflects Light Into the Ports [Corresponds to PO
`Response § III.F.] ..................................................................................... 13
`G. Continuous Two-Axis Mirror Control Was Obvious [Corresponds
`to PO Response § III.G.] .......................................................................... 14
`1. PO Mischaracterizes the Challenge Bases of the Petition .................. 14
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`Case No. IPR2015-00731
`Petitioners’ Reply to Patent Owner Response
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`
`H.
`
`2. Construction of “Continuously Controllable” ..................................... 15
`3. Sparks Teaches Continuous Control ................................................... 15
`4. Lin Teaches Continuous Control......................................................... 16
`It Was Obvious to Combine Sparks and Lin [Corresponds to PO
`Response § III.H.] ..................................................................................... 17
`It Was Obvious to Use Sparks’ Servo Control in Bouevitch
`[Corresponds to PO Response § III.I.] ..................................................... 19
`PO’s Evidence of “Industry Adoption” Does Not Demonstrate
`Secondary Considerations [Corresponds to PO Response § IV.] ............ 20
`III. CONCLUSION ................................................................................................ 22
`
`
`I.
`
`J.
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`Case No. IPR2015-00731
`Petitioners’ Reply to Patent Owner Response
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`
`List of New Exhibits Cited in this Reply
`Exhibit 1040: June 30, 2015 Deposition transcript of Dr. Alexander V.Sergienko
` from related proceeding IPR2014-01166
`
`Exhibit 1041: Excerpts from Abdul Al-Azzawi, Fibre Optics Principles and
`Practices (CRC Press, Taylor & Francis Group, 2007) (containing
`additional excerpts to the copy produced by Patent Owner at Ex.
`2020
`
`Exhibit 1042: Excerpts from Rajiv Ranaswami & Kumar N. Sivarajan, Optical
`Networks, A Practical Perspective, (2nd Ed., Morgan Kaufmann
`Publishers, 2002)
`
`Exhibit 1043: Excerpts from Webster’s Ninth New Collegiate Dictionary,
`(Miriam-Webster, Inc., 1991) (“providing” and “reflect”)
`
`Petitioner also incorporates herein all exhibits from the IPR2015-00731 petition.
`
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`Case No. IPR2015-00731
`Petitioners’ Reply to Patent Owner Response
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`I.
`
`
`INTRODUCTION
`The arguments presented by Patent Owner (“PO”) in its Patent Owner
`
`Response (“PO Response”) do not warrant any change to the Board’s
`
`determination in the Decision (Paper no. 8), ordering inter partes review of
`
`challenged claims 1-6, 9-13 and 15-22. All of the challenged claims are obvious
`
`and unpatentable.
`
`Petitioners point out that the issues in this proceeding are substantially the
`
`same as those in Inter Partes Review No. 2014-01166, a related proceeding in
`
`which the Board issued a Final Written Decision on January 28, 2016, finding the
`
`identical set of challenged claims unpatentable over combinations of Bouevitch,
`
`Smith, Lin and Dueck. The challenge bases in the present proceeding are similar
`
`to those in Inter Partes Review No. 2014-01166, except that Petitioners rely upon
`
`Sparks instead of Smith for disclosure of a two-axis MEMS mirror that is used for
`
`both switching and power control in optical switching devices.
`
`II. RESPONSES TO PATENT OWNER’S ARGUMENTS
`
`A.
`
`1.
`
`It Was Obvious and Not Hindsight to Combine Features of
`Bouevitch, Sparks, Lin and Dueck [Corresponds to PO Response
`§ III.A.]
`Petitioners Do Not Combine Disparate Embodiments of Bouevitch
`
`
`
`Petitioners rely only on the Fig. 11 embodiment of Bouevitch in connection
`
`with the challenge bases asserted in the Petition. In particular, and contrary to the
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`Petitioners’ Reply to Patent Owner Response
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`position asserted in the PO Response at page 17, Petitioners do not rely upon either
`
`the Fig. 1 or the Fig. 5 embodiments of Bouevitch for the claim 1 element “to
`
`control the power of the spectral channel reflected to said selected port.”
`
`
`
`Bouevitch Fig. 11 and the associated description include all of the relevant
`
`disclosure. The combination of Bouevitch and Sparks substitutes only the two-axis
`
`MEMS modifying means of Sparks to replace the one-axis mirrors of Bouevitch
`
`Fig. 11. In that combination, Bouevitch Fig. 11 discloses a configurable optical
`
`add/drop multiplexer (COADM) using MEMS mirrors that tilt in one axis for
`
`switching. Sparks discloses MEMS mirrors that move about two axes as a
`
`substitute for one-axis mirrors for both switching and power control. (Petition, pp.
`
`33-36.) “The PHOSITA would be motivated to use the 2-axis system of Sparks
`
`within the system of Bouevitch for power control.” (Petition, p. 35.)
`
`The Petition does include some discussion of the power control features in
`
`other embodiments of Bouevitch. (See, e.g., pg. 35, citing to col. 5, ll. 16-46 and
`
`col. 7, ll. 23-37 that describe the Figs. 1 and 5 embodiments, respectively.)
`
`However, this discussion is presented for purposes of supporting the rationale to
`
`combine Bouevitch and Sparks, and is ancillary to the asserted challenge bases.
`
`
`
`For this reason, and since the challenge bases do not rely upon the other
`
`Bouevitch embodiments, there was no reason for Petitioners to articulate a
`
`rationale for combining the different Bouevitch embodiments.
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`Petitioners’ Reply to Patent Owner Response
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`2.
`
`It Was Obvious to Combine Sparks’ Two-Axis Mirrors with the Fig.
`11 Embodiment of Bouevitch
`
`
`
`PO’s arguments that a PHOSITA would “not have used a more complex
`
`two-axis mirror [of Sparks] to achieve the same function as a one-axis mirror [of
`
`Bouevitch]” (PO Response, pp. 18-20) and that “[r]eplacing the single-axis mirror
`
`in Bouevitch with the two-axis mirror of Sparks is not a simple substitution” (PO
`
`Response, pp. 20-23) fail because they are based on an incorrect test for
`
`obviousness. “The test for obviousness is not whether the features of a secondary
`
`reference may be bodily incorporated into the structure of the primary reference.
`
`… Rather, the test is what the combined teaching of those references would have
`
`suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425
`
`(CCPA 1981).
`
`
`
`PO’s arguments about the complexity of Sparks two-axis mirrors ignore the
`
`benefits provided by those mirrors. Sparks expressly states that an advantage of
`
`the optical switches with two-axis mirrors is that attenuation (i.e., power control)
`
`can be achieved without incorporating separate attenuators within the system.
`
`(See, e.g., Sparks, Ex. 1004, col. 2, ll. 28-30, col. 4, ll. 55-58.) Because these
`
`benefits are expressly disclosed by Sparks, they would have been apparent to a
`
`PHOSITA without hindsight.
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`Furthermore, it would have been obvious for a PHOSITA to try Sparks’ two-
`
`axis mirrors in Bouevitch. Two-axis mirrors were among a small number of well-
`
`known and predicable solutions for beam directing. One-axis and two-axis mirrors
`
`were recognized as interchangeable options. And a PHOSITA would have had a
`
`high expectation of success in combining a two-axis mirror with the Bouevitch
`
`device. (McLaughlin Decl., Ex. 1028, ¶ 32.)
`
`
`
`PO’s assertion that two-axis mirrors were complex and hard to implement is
`
`irrelevant under the proper obviousness test. Petitioners’ expert Mr. McLaughlin
`
`has testified that PHOSITAS were capable of overcoming any problems presented
`
`by these technical issues. (McLaughlin Deposition Transcript, Ex. 2032, pg. 125,
`
`ln. 18 – pg. 126, ln. 10; pg. 134, ll. 11-19; pg. 137, ll. 16-23.) PO provides no
`
`persuasive contrary evidence.
`
`B.
`
`Bouevitch Does Not Teach Away From Misalignment for Power
`Control [Corresponds to PO Response § III.B.]
`PO’s argument that Bouevitch teaches away from misalignment for power
`
`
`
`control is wrong. Bouevitch discloses a number of different embodiments. The
`
`embodiment of Fig. 11, for example, is described as being designed to operate as a
`
`COADM (i.e., a switch). (Ex. 1003, col. 14, ll. 14-16.) The embodiment of Fig. 5
`
`(which includes a MEMS array 155) is said to be “particularly useful” as a DGE
`
`(dynamic gain equalizer, i.e., an attenuator or power controller). (Ex. 1003, col. 7,
`
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`Case No. IPR2015-00731
`Petitioners’ Reply to Patent Owner Response
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`ll. 23-26.) Yet others such as the embodiment of Fig. 6a can be operated as both a
`
`COADM and a DGE. (Ex. 1003, col. 10, ll. 17-28.)
`
`
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`Of particular relevance with respect to this issue is the DGE embodiment
`
`shown in Fig. 9. The Fig. 9 DGE includes a modifying means 950 that provides
`
`variable attenuation (i.e., power control) by selectively reflecting the incident beam
`
`“back … at a predetermined angle, generally along a different optical path from
`
`which it came” (i.e., by misalignment). (Ex. 1003, col. 12, ll. 55-60.) Although
`
`the illustrated embodiment in Fig. 9 includes a modifying means 950 having a
`
`liquid crystal array 930 and a flat mirror 940, Bouevitch expressly states that the
`
`modifying means 950 can alternatively comprise a MEMS array. (Ex. 1003, col.
`
`12, ll. 35-39.) The alternative Fig. 9 embodiment having a MEMS array, which is
`
`substantially similar in structure to the COADM of the Fig. 11 embodiment, uses
`
`the MEMS to selectively misalign the beams for purposes of power control. (See,
`
`e.g., McLaughlin Deposition Transcript, Ex. 2032, pg. 105, ln. 6 – pg. 106, ln. 21.)
`
`(See also Deposition Transcript of PO’s expert, Dr. Sergienko, in related
`
`proceeding IPR2014-01166, Ex. 1040, pg. 130, ln. 7 – pg. 131, ln. 6; pg. 145, ll.
`
`11-24.)
`
`
`
`In summary, Bouevitch clearly teaches embodiments that use angular
`
`misalignment of the beams to control power. It therefore does not teach away from
`
`misalignment for this purpose. “The prior art’s mere disclosure of more than one
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`Case No. IPR2015-00731
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`alternative does not constitute a teaching away from any of these alternatives
`
`because such disclosure does not criticize, discredit, or otherwise discourage the
`
`solution claimed in the application.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
`
`2004).
`
`C.
`
`Bouevitch and Sparks are Not Incompatible Technologies
`[Corresponds to PO Response § III.C.]
`PO contends that Bouevitch and Sparks are incompatible because they
`
`
`
`perform attenuation “at opposite ends of the optical system.” (PO Response, pg.
`
`29.) Specifically, PO asserts that Bouevitch accomplishes power control or
`
`attenuation at the modifying means via polarization based optics or liquid crystal
`
`arrays, whereas Sparks performs attenuation at the output port via misalignment of
`
`the beam. As discussed immediately above in Section II.B., however, a premise of
`
`this contention is wrong. Bouevitch clearly discloses embodiments that perform
`
`power attenuation by angular misalignment of the beam using MEMS mirrors.
`
`Furthermore, as discussed above in Section II.A., the Bouevitch Fig. 11
`
`switch includes all the relevant features with the exception of a two-axis mirror
`
`that provides power control. Sparks expressly states that the two-axis mirror
`
`disclosed therein can be used for both switching and power control, and describes
`
`the benefits of using such a mirror for that purpose. (Ex. 1004, Abstract.)
`
`Petitioners’ expert has provided an extensive discussion with a large number of
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`reasons why a PHOSITA would have found it obvious to substitute the Sparks
`
`two-axis mirror for the one-axis mirror of Bouevitch. (Ex. 1028, ¶¶ 30-37.) Those
`
`reasons include the fact that it would have been obvious to try that substitution in
`
`view of the small number of other approaches, and the express teachings of Sparks.
`
`(Ex. 1028, ¶¶ 32-33.) Furthermore, Petitioners’ expert has testified that the results
`
`from this substitution were entirely predictable, and that a PHOSITA would have
`
`had a high expectation of success. (Ex. 1028, ¶¶ 31-32; Ex. 2032, pg. 131, ll. 19-
`
`25.)
`
`PO asserts that that the modification of Bouevitch in light of Sparks would
`
`have rendered Bouevitch unsatisfactory for its intended purpose because of the
`
`alleged incompatibilities. (PO Response, pg. 29.) That contention, however, is
`
`untenable in view of the reasons and the weight of the contrary evidence discussed
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`above.
`
`D.
`
`Bouevitch and Dueck are Not Incompatible Technologies
`[Corresponds to PO Response § III.D.]
`PO’s contention that it would not have been obvious to substitute the ruled
`
`diffraction grating of Dueck into Bouevitch is also untenable. PO’s arguments are
`
`based substantially, if not solely, on the angles of the light beams shown in the
`
`diagrammatic illustrations of Figs. 1A and 1B of Dueck and Fig. 1 of Bouevitch.
`
`However, neither Dueck nor Bouevitch disclose specific dimensions for those
`
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`Case No. IPR2015-00731
`Petitioners’ Reply to Patent Owner Response
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`illustrations, so the associated arguments have little if any merit. It is well-
`
`established that arguments of this type cannot be relied upon to invalidate a claim.
`
`(See, e.g., Nystrom v. Trex Co., 424 F.3d 1136, 1149 (Fed. Circ. 2005)
`
`(“[A]rguments based on drawings not explicitly made to scale in issued patents are
`
`unavailing”); Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, 222 F.3d 951, 956
`
`(Fed. Cir. 2000) (“[I]t is well established that patent drawings do not define the
`
`precise proportions of the elements and may not be relied on to show particular
`
`sizes if the specification is completely silent on the issue.”); MPEP § 2125 (“When
`
`the reference does not disclose that the drawings are to scale and is silent as to
`
`dimensions, arguments based on measurement of the drawing features are of little
`
`value.”).)
`
`Petitioners pointed to Dueck to show that ruled diffraction gratings were one
`
`of a small set of known and interchangeable choices. (Petition, pg. 48; Ex. 1028,
`
`¶¶ 98-99.) As discussed above, the obviousness test has no bodily incorporation
`
`requirement. Instead, the test focuses on what the combined teachings of those
`
`references would have suggested to a PHOSITA. In re Keller, 642 F.2d 413, 425
`
`(CCPA 1981). Even assuming arguendo that the particular configuration of the
`
`ruled diffraction grating in Dueck might not have been bodily incorporated into
`
`Bouevitch, a PHOSITA would have been motivated to use a grating of this type
`
`because Dueck teaches the use of a ruled diffraction grating as part of the “best
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`mode” of separating wavelengths in wavelength division multiplexing (WDM)
`
`devices, which include Bouevitch and Sparks. (Ex. 1028, ¶ 99.)
`
`E.
`
`Bouevitch Teaches Input, Output and Other Ports [Corresponds
`to PO Response § III.E.]
`PO’s contention that Bouevitch does not teach or suggest the ports recited by
`
`the claims is based on its assertions that (1) the “circulator ports” disclosed in
`
`Bouevitch are not the type of “ports” recited by the claims,1 and (2) the ’368 patent
`
`disavows circulator ports. Each of these contentions is discussed below.
`
`1.
`
`“Ports” Include Circulator Ports
`
`a.
`
`The Ordinary and Customary Meaning of Ports Includes
`Circulator Ports
`Bouevitch explicitly refers to the “In,” “In Add,” “Out Drop” and “Out
`
`
`
`Express” ports of the circulators shown in Fig. 11 as “ports.” (Ex. 1003, col. 14, ll.
`
`27-36.) Articles and textbooks use the generic term “port” to define the points at
`
`which light enters or comes in, and exits or comes out of, circulators. (Ex. 1041,
`
`“Al-Azzawi,” pp. 127-129; Ex. 1042, “Ramaswami,” pp. 113, 127.) Petitioners’
`
`expert has testified that the ports of the circulator in Fig. 11 correspond to the
`
`claimed ports. (Ex. 1028, ¶¶ 38-41.)
`
`1 PO does not offer an express definition of the term “port.” Nor does it suggest
`
`that the ’368 patent provides a definition of that term. PO asserts only that the
`
`term does not include “circulator ports.”
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`
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`Recite Collimator Ports
`
` b.
`
`The Claims Do Not
`
`
`
`Although PO has not offered an express definition of port (see footnote 1
`
`above), it suggests that the term means “collimator ports.” (See PO Response, pg.
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`33 (“[T]he inventors provided public notice by stating in the present invention the
`
`structure or elements making up the ports are collimators.”).) Petitioners disagree
`
`with this suggestion. The terms “input/output ports,” “input port” and “output
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`ports” are used throughout the ’368 patent specification. (See, e.g., Ex. 1001, col.
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`6, ll. 54-63; col. 8, ll. 17-19; col. 9, ll. 44-54.) The specification uses the term
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`“collimator” separately from the term “port.” (See, e.g., Ex. 1001, col. 6, ll. 54-63;
`
`col. 9, ll. 44-54.) The ’368 patent therefore does not equate the term “port” to
`
`“collimator.”
`
`Perhaps even more significant is that the term “collimator” is nowhere to be
`
`found in the challenged claims. (Ex. 1001, claims 1-6, 9-13 and 15-22.) Although
`
`the patentee might have limited the term “port” by adding modifiers such as
`
`“collimator,” it did not do so. For these reasons, any construction limiting the
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`claimed ports to “collimators” would run afoul of the law prohibiting the reading
`
`of limitations from the specification into the claims. Liebel-Flarsheim Co. v.
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`Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004) (“[I]t is improper to read
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`limitations from a preferred embodiment described in the specification—even if it
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`is the only embodiment—into the claims absent a clear indication in the intrinsic
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`record that patentee intended the claims to be so limited.”)
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`
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`2.
`
`The Patentee Did Not Disavow Circulator Ports
`
`a.
`
`PO’s Evidence Does Not Meet the High Standard for
`Disavowal
`Although a patentee can intentionally disavow the scope of a claim term,
`
`that “intention must be clear.” Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460
`
`F.3d 1349, 1357 (Fed. Cir. 2006). Such an intention can be demonstrated by
`
`“expressions of manifest exclusion or restriction, representing clear disavowal of
`
`claim scope.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed.
`
`Cir. 2002).
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`
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`In support of its disavowal argument, PO asserts that both the ’368 patent
`
`and its provisional application no. 60/277,217 (the “’217 Provisional”) “criticized”
`
`the use of circulators. (PO Response, pg. 37.) PO’s expert states that the ’368
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`patent “teaches away from the use of circulators.” (Ex. 2022, ¶ 179.) PO also cites
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`to its own press release and product brochure (Business Wire, Ex. 2002;
`
`WavePath, Ex. 2003), and to a publication summarizing products offered by
`
`different optical networking equipment providers including Capella (Holliday R-
`
`OADMs, Ex. 2008). However, those publications do not even mention
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`collimators. PO’s evidence therefore falls short of the heavy burden required to
`
`show disavowal.
`
`
`
`
`
` b.
`
`The ’368 Patent Expressl
`
`y Encompasses Circulators
`
`The ’217 Provisional to which the ’368 patent claims priority shows that the
`
`purported invention encompasses the use of circulators to provide ports.
`
`Specifically, that application says that “[t]hree different OADM architectures
`
`disclosed in the present invention are shown in Figures 7-9.” (Ex. 1008, pg. 3.)
`
`Figure 9 of the ’217 Provisional, reproduced below, shows an embodiment where
`
`ports are provided by circulators.
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`
`
`
`
`Moreover, the ’217 Provisional used the term “add/drop ports” when
`
`referring to ports with circulators, and the term “physical input/output ports” for
`
`ports without circulators. (Ex. 1008, pg. 3.) But the patentee did not use the word
`
`“physical” in connection with the ports of claim 1, only the generic terms “input
`
`port,” “other ports,” and “output port.” (Ex. 1001, claim 1.) The patentee also
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`used the terms that the ’217 Provisional used to explicitly include circulators—
`
`“drop ports” and “add ports”—in claims 15 and 16. (Ex. 1001, claim 15, 16.) The
`
`’217 Provisional is therefore inconsistent with, and in fact undermines, PO’s
`
`contentions that it disavowed circulator ports from the scope of the term “ports.”
`
`
`
`
`
` c.
`
`The Claims’ Preambles Do
`
` Not Exclude Circulators
`
`Petitioners disagree with PO’s contention that a PHOSITA would have
`
`understood an optical add drop apparatus to never include circulators. (PO
`
`Response, pg. 39.) As Petitioners’ expert has testified, “Bouevitch discloses a
`
`‘Configurable Optical Add/Drop Multiplexer’ [that] is an optical add-drop
`
`apparatus.” (Ex. 1028, ¶ 38.) And that optical add-drop apparatus includes
`
`circulators. (See, e.g., Ex. 1003, Fig. 11.)
`
`F.
`
`Bouevitch Reflects Light Into the Ports [Corresponds to PO
`Response § III.F.]
`PO contends that Bouevitch teaches reflecting a light beam back to lens 90,
`
`having the light beam pass through a waveguide 99a or 99b, and then having the
`
`light beam propagate to the port. (PO Response, pp. 44-45.) In effect, PO’s
`
`argument implies a requirement that the beam be directly reflected to an output
`
`port. This position is wrong.
`
`PO offers no express construction of “to reflect” that excludes propagation
`
`or deflection following reflection. Nor does PO offer any explanation of why a
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`beam that is reflected and then propagated or deflected is excluded. Any such
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`construction would be inconsistent with the ordinary meaning of “reflect,” which
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`includes “to throw back light.” (Webster’s Ninth New Collegiate Dictionary, Ex.
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`1043, pg. 989) Furthermore, PO’s position is inconsistent with the ’368 patent,
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`which does not require reflecting light directly from the MEMS mirrors to the
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`ports. Fig. 1A of the ’368 patent, for example, discloses a light beam that reflects
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`off micromirror 103, and then propagates back though both focusing lens 102 and
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`quarter-wave plate 104 before being directed to an output port. (Ex. 1001, Fig.
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`1A.)
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`G. Continuous Two-Axis Mirror Control Was Obvious [Corresponds
`to PO Response § III.G.]
`PO Mischaracterizes the Challenge Bases of the Petition
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`1.
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`PO’s arguments that Bouevitch, Sparks and Lin do not teach mirrors that are
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`“continuously controllable in two dimensions” (PO Response, pp. 47-49)
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`mischaracterize the challenge bases advanced in the Petition and adopted by the
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`Board. Both the Petition and the Decision point only to Sparks as teaching MEMS
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`mirrors that are movable in two dimensions. (Petition, pg. 33 (“[T]he only portion
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`of this part of element 1[d] arguably not taught by Bouevitch is a beam deflecting
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`element with a second dimension .… But … Sparks discloses a 2-axis beam
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`deflecting element.”); Decision, pg. 17 (“Petitioner relies on the description in
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`Petitioners’ Reply to Patent Owner Response
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`Sparks of a 2-axis beam deflecting element.”).) There are no contentions that rely
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`on either Bouevitch or Lin alone to disclose continuous control in two dimensions.
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`2.
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`Construction of “Continuously Controllable”
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`
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`The Decision did not adopt Petitioners’ proposed construction of the term
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`“continuously controllable,” and instead determined that no express construction
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`was necessary. (Decision, pp. 11-12.) In the related proceeding IPR2014-01166,
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`the Board determined that “continuously controllable” means “under analog
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`control such that it can be continuously adjusted.” (IPR2014-01166, Final Written
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`Decision, Paper 44, pg. 12.) As discussed below, at least Sparks and Lin also teach
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`continuous control of MEMS mirrors per this construction.
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`
`
`
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`3.
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`Sparks Teaches Continuous Control
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`Sparks teaches a switch with two-axis mirrors “arranged to switch an optical
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`signal by redirection of the optical beam path of said signal, the method
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`comprising controlled misalignment of the optical beam path so as to achieve a
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`predetermined optical output power” and that “each of the channels passing
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`through the switch may be attenuated to whatever degree necessary to achieve the
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`desired effect.” (Ex. 1004, col. 2, ll. 22-35.) Furthermore, Sparks states that the
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`mirrors are actuatable “to achieve any desired optical beam power output less than
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`the maximum.” (Id., col. 4, ll. 54-55.) Since each channel can be attenuated to
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`whatever degree necessary, including to any power output less than the maximum,
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`Petitioners’ Reply to Patent Owner Response
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`the control is continuous. (Ex. 1028, McLaughlin Decl., ¶ 49.) (See also Ex. 2032,
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`McLaughlin Dep. Trans., pg. 59, ll. 20-23 (“[Continuous control] means that the []
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`MEMS can be set to any tilt angle within its operation to whatever degree of
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`precision is required in the application.”).) Furthermore, a PHOSITA would
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`understand that such a high level of precision over the mirror control is consistent
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`with analog control. (Ex. 1028, ¶ 49.)
`
`PO offers no substantive or persuasive arguments to refute Petitioners’
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`positions. Instead, it says only that Sparks “does not necessarily teach or suggest,”
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`and is “not sufficient to show,” continuously controllable beam deflecting
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`elements. (PO Response, pg. 48.)
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`
`
`
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`4.
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`Lin Teaches Continuous Control
`
`Lin also teaches continuous analog control of MEMS mirrors. (Ex. 1028, ¶
`
`51.) In particular, Lin teaches a spatial light modulator “operable in analog mode
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`for light beam steering or scanning applications.” (Ex. 1010, Abstract.) Figs. 3A
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`and 3B of Lin are reproduced below.
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`As shown in Fig. 3A, light can be steered through a range of 2θ. (Id., col. 7, ll. 3-
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`
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`4.) The amount of mirror deflection is proportional to the address voltage. (Id.,
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`col. 7, ll. 13-15.) Fig. 3B is a graph comparing the deflection to the applied
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`voltage, and shows the relationship as being continuous within the operating range
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`of the device. (Ex. 1028, ¶ 51.)
`
`
`
`PO argues that continuous control cannot be shown by the input signal
`
`alone, and that it would be necessary to look at how the voltage of the input signal
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`affects movement of the mirror. (PO Response, pg. 51.) Those arguments are
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`unpersuasive in view of the above-described disclosures of Lin and expert
`
`testimony. They are also contradicted by Lin, which expressly addresses control,
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`not just movement: “To operate the device as a … light switch, it is desirable to
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`precisely control the degree of deflection as so [sic] to precisely steer incident
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`light.” (Ex. 1010, col. 3, ll.46-49.)
`
`H.
`
`It Was Obvious to Combine Sparks and Lin [Corresponds to PO
`Response § III.H.]
`PO’s contention that Petitioners failed to provide a KSR rationale for the
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`combination of Sparks and Lin is wrong. Petitioners have demonstrated that it
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`would have been obvious to substitute the two-axis mirrors of Sparks into
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`Bouevitch for both switching and power control. (See, e.g., Sections II.A. – II.C.
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`above.) As discussed above in Section II.G.3., Sparks discloses continuous control
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`of two-axis mirrors.
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`Petitioners’ Reply to Patent Owner Response
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`Petitioners have also presented arguments and evidence that it would have
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`been obvious to incorporate the continuous control features taught by Lin into a
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`device having the combination of features of Bouevitch and Sparks. “[I]t would be
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`obvious to combine Lin’s continuous, analog control with Bouevitch and Sparks.”
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`(Petition, pg. 31.) Among the reasons provided for this asserted combination is
`
`that “Lin specifically teaches that its analog, continuous MEMS mirrors would be
`
`useful in optical switching applications like Bouevitch’s and Sparks’.” (Id., pg.
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`32.) These positions are supported by Petitioners’ expert, who testified that the
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`combination of Bouevitch, Sparks and Lin “would provide predictable results” and
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`“would be obvious to try.” (Ex. 1028, ¶¶ 52, 55; see also ¶¶ 53, 54.) Petitioners’
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`arguments and evidence that there were no technical obstacles to the substitution of
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`two-axis mirrors for one-axis mirrors, and that both of these types of mirrors were
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`recognized in the prior art as interchangeable options, is yet additional rationale
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`supporting this combination. (See, e.g., Petition, pp. 21-22; Ex. 1028, ¶¶ 30-32.)
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`As discussed above in Section II.A.2., the test for obviousness is not whether
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`the features of one reference can be bodily incorporated into the structure of
`
`another reference. Furthermore, PO does not provide persuasive evidence why
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`such a combination would be beyond the skills of a PHOSITA.
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`
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`Case No. IPR2015-00731
`Petitioners’ Reply to Patent Owner Response
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`
`I.
`
`It Was Obvious to Use Sparks’ Servo Control in Bouevitch
`[Corresponds to PO Response § III.I.]
`Petitioners’ expert provided over six pages of testimony explaining why and
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`how it was obvious to incorporate Sparks’ servo control and power measuring
`
`systems into Bouevitch (see, e.g., Ex. 1028, ¶¶ 74-84), and this testimony was used
`
`in the Petition to support the positions articulated with respect to claims 3 and 22
`
`(see, e.g., Petition, pp. 38-42, 59-60). For example, with respect to the “why,”
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`Petitioners’ expert testified that