`CORIANT OPERATIONS, INC., CORIANT (USA) INC., CIENA CORPORATION,
`CISCO SYSTEMS, INC., AND FUJITSU NETWORK COMMUNICATIONS, INC.
`Petitioners
`v.
`CAPELLA PHOTONICS, INC.
`Patent Owner
`________________________________
`
`IPR2015-007311 Patent RE42,368
`IPR2015-007392 Patent RE42,678
`
`1 IPR2015-01969 has been joined with this proceeding
`2 IPR2015-01971 has been joined with this proceeding
`_______________________________
`
`Petitioners’ Oral Hearing Demonstratives
`
`* The word-for-word identical paper is being filed in each proceeding identified in the heading
`** All references herein to IPR papers and associated exhibits are to those in IPR2015-00739 unless otherwise noted
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`Table of Contents
`
`I.
`II.
`III.
`
`Introduction……………………………………………………………………………….…………………3
`Overview of Adopted Challenge Bases………………………………..…….……...………...7
`Response to PO’s Arguments……………………………………………………………..…..…..15
`Challenge Basis Does Not Combine Disparate Elements of Bouevitch……….…..…..15
`It Was Obvious to Combine Sparks’ Two-Axis Mirrors with Bouevitch Fig. 11……..20
`Bouevitch Does Not Teach Away From Misalignment for Power Control………..….23
`Bouevitch and Sparks are Not Incompatible Technologies……………………….…………25
`Bouevitch and Dueck are Not Incompatible Technologies……………………...…………..26
`Bouevitch Teaches Multiple Fiber Collimators Providing Ports………….…….………….28
`1.
`Bouevitch’s Collimators “Provide” the Ports………………………,…………..29
`2.
`“Ports” Include Circulator Ports………………………………….…..….…………..34
`3.
`PO Did Not Disavow Circulator Ports……………………………...…….………..35
`Bouevitch Reflects Light Into the Ports………………………………………………….…..………38
`Continuous Control of Two-Axis Mirrors Was Obvious………………………….…..….…..39
`It Was Obvious to Combine Sparks and Lin……………………………………………….……….44
`It Was Obvious to Use Sparks’ Servo Control in Bouevitch……………….………………..46
`PO’s Evidence of “Industry Adoption” is Irrelevant……………………………..……………..47
`
`2
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`I. Introduction
`
`►Challenged claims (“xx” = independent claims)
` IPR2015-00731 / RE 42,368: 1-6, 9-13, 15, 16, 17-22
` IPR2015-00739 / RE 42,678: 1-4, 9, 10, 13, 17, 19, 20, 21-23,
`27, 29, 44-46, 53, 61-65
`
`►Prior art: Bouevitch, Sparks, Lin, Dueck
`
`►Related Proceedings: IPR2014-01166 (RE 42,368) / IPR2014-
`01276 (RE 42,678)
` Identical challenged claims
` Prior art: Bouevitch, Smith, Lin, Dueck
` Final Written Decisions finding all claims unpatentable
`
`3
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`I. Introduction
`
`Representative claims for discussion:
`RE 42,678 Claims 1, 3, 17
`
`Include key limitations
`Encompass all key issues
`
`4
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`I. Introduction
`
`►Claim 1:
`A wavelength-separating-routing apparatus, comprising:
`“multiple fiber collimators, providing an input port … and a plurality of
`output ports” i.e.,
` collimators providing ports
`
`“a spatial array of channel micromirrors … being pivotal about two axes
`and … continuously controllable to reflect … received spectral
`channels into any selected ones of said output ports … to control the
`power of said received spectral channels” i.e.,
` 2-axis mirrors that are
`•
`continuously controllable
`•
`for switching
`•
`to control power
`
`Ex. 1001, p. 21
`
`5
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`I. Introduction
`
`►Dependent Claim 3:
`The wavelength-separation-routing apparatus of claim 2
`wherein
`
`“said servo-control assembly comprises … a processing unit … for
`providing control of said channel micromirrors”
` servo-control
`►Dependent Claim 17:
`The wavelength-separating-routing apparatus of claim 1
`wherein
`
`“said wavelength-separator comprises … ruled diffraction grating”
` ruled diffraction grating
`
`Ex. 1001, p. 21-22
`
`6
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`II. Overview of Adopted Challenge Bases
`
`Bouevitch Patent
`
`RE 42,678 Claim 1
`
`microlenses 12a, 12b
`
`multiple fiber collimators
`
`E.g., Petition, pp. 24-25; Decision, pp. 13-14
`
`7
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`II. Overview of Adopted Challenge Bases
`
`Bouevitch Patent
`
`RE 42,678 Claim 1
`
`IN port 1
`
`input port
`
`E.g., Petition, p. 25; Decision, pp. 13-14
`
`8
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`II. Overview of Adopted Challenge Bases
`
`Bouevitch Patent
`
`RE 42,678 Claim 1
`
`OUT EXPRESS port 3
`OUT DROP port 3
`
`plurality of output ports
`
`E.g., Petition, p. 25-26; Decision, pp. 13-14
`
`9
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`II. Overview of Adopted Challenge Bases
`
`Bouevitch Patent
`
`RE 42,678 Claim 1
`
`diffraction grating 20
`
`wavelength-separator
`
`E.g., Petition, p. 26; Decision, pp. 15-17
`
`10
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`II. Overview of Adopted Challenge Bases
`
`Bouevitch Patent
`
`RE 42,678 Claim 1
`
`spherical reflector 10
`
`beam-focuser
`
`E.g., Petition, pp. 26-27; Decision, pp. 15-17
`
`11
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`II. Overview of Adopted Challenge Bases
`
`Bouevitch Patent
`
`RE 42,678 Claim 1
`
`reflectors 51, 52 of MEMS array 50
`
`micromirrors
`• for switching
`
`E.g., Petition, pp. 26, 28; Decision, pp. 15-17
`
`12
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`II. Overview of Adopted Challenge Bases
`Sparks Patent
`RE 42,678 Claim 1
`
`micromirrors (16, 26) capable
`of two axis movement
`• for switching
`• for power control
`• continuously controllable
`
`micromirrors … pivotal
`about two axes
`• for switching
`• to control the power
`• continuously controllable
`
`E.g., Petition, p. 19, 29-31; Decision, pp. 15-17
`
`13
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`II. Overview of Adopted Challenge Bases
`
`Lin Patent
`
`RE 42,678 Claim 1
`
`mirror 42
`• continuously controllable
`
`micromirrors
`• continuously controllable
`
`E.g., Petition, p. 31-37; Decision, pp. 15-17
`
`14
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Challenge Basis Does Not Combine Disparate Elements of
`Bouevitch
` Fig. 11 of Bouevitch discloses all features of claim 1 except:
`•
`Two Axis Mirrors for Power Control
`• Continuous Control of the Mirrors
`
` However:
`• Per Ground 1, Sparks discloses
` Two Axis Mirrors for Switching and Power Control
` Continuous Control of Mirrors
`
`• Per Ground 2, Lin Discloses
` Continuous Control of Mirrors
`
`Petition, pp. 19, 24-29, 31-37; Decision, pp. 13-17; Pet. Reply § II.A.1., pp. 1-2
`
`15
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Challenge Basis Does Not Combine Disparate Elements of
`Bouevitch
` Petitioner points to Sparks for two-axis mirrors for power control:
` “Thus, to the extent Bouevitch does not disclose 2-axis mirrors and
`their intended use for power control, Sparks does.” Petition, pg. 19
`
` “To any extent that Bouevitch does not teach continuous control,
`Sparks does and such continuous control would be obvious to
`implement in the MEMS mirrors of Bouevitch.” Petition, pg. 30
`
` “Sparks discusses 2-axis (two dimensional) mirror actuation for
`both switching [ ] and power control.” Petition, pg. 35
`
`Petition, pp. 19, 24-29, 31-37; Decision, pp. 13-17; Pet. Reply § II.A.1., pp. 1-2
`
`16
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Challenge Basis Does Not Combine Disparate Elements of
`Bouevitch
` Petitioner also points to Lin for continuous control of MEMS
`mirrors:
` “Under Ground 2, [Lin] also teaches continuous, analog control of
`MEMS mirrors…. As discussed below, it would have been obvious
`to combine Lin’s continuous, analog control with Bouevitch and
`Sparks.” Petition, pg. 31
`
`Petition, pp. 19, 24-29, 31-37; Decision, pp. 13-17; Pet. Reply § II.A.1., pp. 1-2
`
`17
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Challenge Basis Does Not Combine Disparate Elements of
`Bouevitch
` References to other Bouevitch embodiments are in addition to and
`ancillary to Fig. 11 challenge bases
` Presented generally as additional support of rationale for combining
`Bouevitch and power control feature of Sparks
` “Referring now to [Bouevitch] FIG. 1, an optical device for rerouting and
`modifying an optical signal … is shown that is capable of operating as a
`Dynamic Gain/Channel Equalizer (DGE) [i.e., for power control] and/or a
`Configurable Optical Add/Drop Multiplexer (COADM) [i.e., for switching]”
`Bouevitch, col. 5, ll. 15-20 (emphasis added)
`
`Petition, pp. 19, 24-37, 39-40; Decision, pp. 13-17; Pet. Reply § II.A.1., pp. 1-2
`
`18
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Challenge Basis Does Not Combine Disparate Elements of
`Bouevitch
` References to other Bouevitch embodiments are in addition to and
`ancillary to Fig. 11 challenge bases
` Presented generally as additional support of rationale for combining
`Bouevitch and power control feature of Sparks
` “[Bouevitch]FIG. 5 is a schematic diagram of another embodiment … which
`is particularly useful when the device is used as a DGE…. The degree of
`attenuation [i.e., power control] is based on the degree of deflection
`provided by the reflector… Accordingly, each sub-beam of light follows a
`first optical path to the modifying means where it is selectively switched.”
`Bouevitch, col. 7, ll. 23-60.
`
`Petition, pp. 19, 24-37, 39-40; Decision, pp. 13-17; Pet. Reply § II.A.1., pp. 1-2
`
`19
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►It Was Obvious to Combine Sparks’ Two-Axis Mirrors with
`Bouevitch Fig. 11
` “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 assertion that two-axis mirrors were complex and hard to
`implement is irrelevant under the proper obviousness test.
` PHOSITAS were capable of overcoming problems presented by technical
`issues.
`McLaughlin Depo Transcript, Ex. 2032, 125:18 – 126, ln. 10; pg. 134, ll. 11-
`19; pg. 137, ll. 16-23
`
`Petition, pp. 19-23, 28-31; Pet. Reply § II.A.2., pp. 3-4
`
`20
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►It Was Obvious to Combine Sparks’ Two-Axis Mirrors with
`Bouevitch Fig. 11
` PO’s arguments ignore express statements in Sparks of
`advantages of using two-axis mirrors for power control.
` “Utilizing an optical switch in this format alleviates the
`requirement for separate optical attenuators ….” Sparks, Ex.
`1004, col. 2, ll. 28-30
` “Such attenuation is achieved without incorporating separate
`attenuator(s) within the system.” Id., col. 4, ll. 55-58
`
`Petition, pp. 19-23, 28-31; Pet. Reply § II.A.2., pp. 3-4
`
`21
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►It Was Obvious to Combine Sparks’ Two-Axis Mirrors with
`Bouevitch Fig. 11
` Obvious to try
` Two-axis mirrors among a small number of known beam directing
`technologies. McLaughlin Decl., Ex. 1028, ¶ 32
` High expectation of combination success. McLaughlin Decl., Ex.
`1028, ¶ 32
`
`22
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Bouevitch Does Not Teach Away From Misalignment for Power
`Control
` PO’s Bouevitch FIG. 9 embodiment illustrates a DGE for power control having modifying
`means 950 having liquid crystal array 930 and flat mirror 940. Bouevitch, col. 12, ll. 18-37
`
` Alternative Bouevitch FIG. 9 embodiment has a modifying means comprising a MEMS
`array. Bouevitch, col. 12, ll. 35-39. Alternative embodiment with MEMS array is
`
` Substantially similar in structure to COADM switch of FIG. 11 embodiment
` Uses MEMs mirrors (instead of liquid crystal array) for power control
`McLaughlin Depo Transcript, Ex. 2032, pg. 105, ln. 6 – pg. 106, ln. 21
`
`Petition, pp. 18-23; Pet. Reply § II.B, pp. 4-5
`
`23
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Bouevitch Does Not Teach Away From Misalignment for Power
`Control
` Alternative Bouevitch FIG. 9 embodiment
` Is a DGE using MEMS
` Uses MEMs mirrors (instead of liquid crystal array) for power control
`McLaughlin Depo Transcript, Ex. 2032, pg. 105, ln. 6 – pg. 106, ln. 21
` “The prior art’s mere disclosure of more than one 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)
`
`Petition, pp. 18-23; Pet. Reply § II.B, pp. 4-5
`
`24
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Bouevitch and Sparks are Not Incompatible Technologies
` Alternative PO’s Contention that Bouevitch and Sparks are
`incompatible because they perform attenuation “at opposite
`ends of the optical system” is untenable in view of contrary
`evidence
` Alternative Bouevitch FIG. 9 embodiment (DGE with MEMS)
`performs power control by angular misalignment of the
`mirrors
` Sparks expressly states that two-axis mirrors can be used for
`both switching and power control
`Sparks, Abstract
`
`Petition, pp. 18-23, 29-31; Pet. Reply § II.C, pp. 6-7
`
`25
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Bouevitch and Dueck are Not Incompatible Technologies
` PO’s Contention that Bouevitch and Dueck are incompatible is based
`substantially, if not solely, on the angles of light beams shown in Figs. 1A
`and 1B of Dueck and Fig. 1 of Bouevitch.
`
` However, “it is well established that patent drawings do not define the
`precise proportions of the elements and may not be relied upon to show
`particular sizes if the specification is completely silent on the issue.”
`Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, 222 F.3d 951, 956 (Fed.
`Cir. 2000)
`
`Petition, pp. 18-23; Pet. Reply § II.D, pp. 7-8
`
`26
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Bouevitch and Dueck are Not Incompatible Technologies
` Dueck shows that ruled diffraction gratings are in a small set
`of known interchangeable choices of wavelength separators
`
` “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)
`
`Petition, pp. 18-23; Pet. Reply § II.D, pp. 7-8
`
`27
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Bouevitch Teaches Multiple Fiber Collimators Providing Ports
` PO’s contention that Bouevitch does not teach or suggest
`the claimed ports is based on assertions that
`
`1. Bouevitch’s collimators do not “provide” ports
`
`2. The “circulator ports” in Bouevitch are not the claimed
`“ports”
`
`3. The challenged patents disavow circulator ports
`
` Each contention is at odds with substantial evidence
`
`Petition, pp. 18, 24-26; Pet. Reply § II.E, p. 9
`
`28
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Bouevitch Teaches Multiple Fiber Collimators Providing Ports
`1. Bouevitch’s Collimators “Provide” the Ports
`
` Ordinary Meaning of “Providing”: “to supply or make
`available.” Webster’s, Ex. 1052, pg. 948
`
` PO offers no express definition of “providing”
`•
`Implicitly argues it requires a 1:1 correspondence between
`collimators and ports
`
`Petition, pp. 18, 24-26; Pet. Reply § II.E, p. 9-10
`
`29
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Bouevitch Teaches Multiple Fiber Collimators Providing Ports
`1. Bouevitch’s Collimators “Provide” the Ports
` Bouevitch ‘s microlenses 12a and 12b are fiber collimators
`McLaughlin Decl., Ex. 1028, ¶ 43
` Microlens 12a provides input port IN in conjunction with waveguide 99a
`and circulator 80a
` Microlens 12a provides output port OUT EXPRESS in conjunction with
`waveguide 99a and circulator 80a
` Microlens 12b provides output port OUT DROP in conjunction with
`waveguide 99b and circulator 80b
`
`Petition, pp. 18, 24-26; Pet. Reply § II.E, p. 10-11
`
`30
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Bouevitch Teaches Multiple Fiber Collimators Providing Ports
`1. Bouevitch’s Collimators “Provide” the Ports
` PO’s argument that Bouevitch does not disclose fiber collimators
`that “provide” the ports is
`•
`Based on the drawing figures of the challenged patent
`•
`Based on an interpretation requiring a 1:1 correspondence between
`the collimators and the ports
` PO’s argument is
`X At odds with plain and ordinary meaning of “providing”
`X At odds with the law that “it is improper to read limitations from a
`preferred embodiment described in the specification-even if it is the
`only embodiment-into the claims absent a clear indication in the
`intrinsic record that patentee intended the claims to be so limited.”
`Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004)
`
`Petition, pp. 18, 24-26; Pet. Reply § II.E, p. 11-12
`
`31
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Bouevitch Teaches Multiple Fiber Collimators Providing Ports
`1. Bouevitch’s Collimators “Provide” the Ports
` PO’s argument is at odds with RE 42,678, as it would exclude the Fig. 9
`embodiment of the incorporated ‘217 provisional application that shows input
`(i.e., “Add”) and output (i.e., “Drop”) ports supplied or made available through
`both physical ports and circulators (i.e., has no 1:1 relationship between ports
`and collimators)
` Such a claim interpretation that would exclude a disclosed embodiment “is
`rarely, if ever, correct and would require highly persuasive evidentiary support.”
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996)
`
`Petition, pp. 18, 24-26; Pet. Reply § II.E, p. 12-13
`
`32
`
`Provisional Appl. No. 60/277,217, Fig. 9
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Bouevitch Teaches Multiple Fiber Collimators Providing Ports
`1. Bouevitch’s Collimators “Provide” the Ports
` The claims do not recite “collimator ports”
` The challenge patents do not equate the term “port” to “collimator”
`•
`Terms “input/output ports,” “input port” and “output ports” are used
`throughout the RE 42,678 specification
`(e.g., Ex. 1001, col. 6, ll. 54-63; col. 8, ll. 17-20; col. 9, ll. 44-54)
`Term “collimator” is used separately from “port”
`(e.g., Ex. 1001, col. 6, ll. 54-63; col. 9, ll. 44-54)
` Term “collimator” is not found in RE 42, 678 challenged claims 61-65
`•
`“It is settled law that when a patent claim does not contain a certain limitation
`and another claim does, that limitation cannot be read into the former claim in
`determining either validity or infringement.”
`SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1958)
`
`•
`
`Petition, pp. 18, 24-26; Pet. Reply § II.E, p. 13-14
`
`33
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Bouevitch Teaches Multiple Fiber Collimators Providing Ports
`2. “Ports” Include Circulator Ports
` Bouevitch explicitly refers to the “IN,” “IN ADD,” “OUT DROP” and
`“OUT EXPRESS” ports on the circulators shown in Fig. 11 as “ports.”
`Bouevitch, Ex. 1003, col. 14, ll. 27-36
` Articles and textbooks use the generic term “port” to define the
`points at which light enters and exits circulators.
`Ex. 1053, “Al-Assawi,” pp. 127-129
` “A three-port circulator”
`Ex. 1054, “Ramaswami,” pp. 113, 127
` “circulators: (a) three-port and
`(b) four-port”
`
`Petition, pp. 18, 24-26; Pet. Reply § II.E, p. 14
`
`34
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`35
`
`•
`
`•
`
`►Bouevitch Teaches Multiple Fiber Collimators Providing Ports
`3. PO Did Not Disavow Circulator Ports
` An intention to disavow claim scope must meet high standards
`•
`“[M]ust be clear.”
`Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1357 (Fed. Cir. 2006)
`Can be demonstrated by “expression 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)
` PO’s evidence falls short of this heavy burden, and only
`•
`Asserts the ‘217 provisional application “criticized” the use of circulators.
`PO Response, pg. 38
`Refers to its expert testimony that RE 42,678 “teaches away from the use of
`circulators.” Ex. 2022, ¶ 179
`Cites to its own press release (Business Wire, Ex. 2002) and product brochure
`(WavePath, Ex. 2003), neither of which mention “circulators”
`Cites to a publication summarizing PO’s product (Holliday R-OADMs, Ex. 2008)
`that does not mention “circulators”
`Petition, pp. 18, 24-26; Pet. Reply § II.E, pp. 14-15
`
`•
`
`•
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Bouevitch Teaches Multiple Fiber Collimators Providing Ports
`3. PO Did Not Disavow Circulator Ports
`The ‘217 provisional application that is incorporated into RE 42,678 undermines PO’s
`contentions that it disavowed circulator ports:
` Fig. 9 of the ‘217 provisional application shows circulators to provide ports
`
`Provisional Appl. No. 60/277,217, Fig. 9
`
` The ‘217 provisional application:
`•
`Used the terms “add/drop ports” when referring to ports with circulators
`•
`Used the term “physical input/output ports” for ports without circulators. Ex. 1008, pg. 3
` But the patentee chose not to use the word “physical” in connection with the
`claimed “ports” (i.e., did not distinguish between “circulator ports” and other
`“ports”)
`
`Petition, pp. 18, 24-26; Pet. Reply § II.E, pp. 14-16
`
`36
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Bouevitch Teaches Multiple Fiber Collimators Providing Ports
`3. PO Did Not Disavow Circulator Ports
` PO contends that the claim preambles exclude circulators because
`•
`They require all elements to be either in a “wavelength-separating-
`apparatus” or an “optical apparatus”
`• Which a PHOSITA would have understood to never include circulators
`Patent Owner Response, pp. 40-41
` Contention is at odds with PO’s own expert, who testified that
`“Bouevitch discloses a ‘Configurable Optical Add/Drop Multiplexer’
`[that] constitutes a ‘wavelength-separating-routing apparatus.’”
`Ex. 1028, ¶ 40
`• And the Bouevitch apparatus includes circulators.
`Bouevitch, Ex. 1003, Fig. 11
`
`Petition, pp. 18, 24-26; Pet. Reply § II.E, pp. 16
`
`37
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Bouevitch Reflects Light into the Ports
` PO contends that Bouevitch teaches reflecting a light beam to a lens 90, and having the
`light beam pass through a waveguide 99a or 99b, before propagating to the port. PO
`Response, pp. 45-46
`X
`In effect, PO’s argument implies a requirement that the beam be directly reflected to an
`output port
` However, PO’s contention is
`X
`Not supported by any express construction of “to reflect” that excludes propagation or
`deflection following reflection
`Inconsistent with ordinary meaning of “reflect” which includes “to throw back light.”
`Webster’s. Ex. 1052, pg. 989
`Inconsistent with RE 42,678, that shows an embodiment in Fig. 1A having a light beam that
`reflects off micromirror 103, then propagates back through both focusing lens 102 and
`quarter-wave plate 104 before being directed to an output port.
`
`X
`
`X
`
`Petition, pp. 18, 29-30; Pet. Reply § II.F, pp. 16-17
`
`RE 43,678 Fig. 1A
`
`38
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Continuous Control of Two-Axis Mirrors Was Obvious
` PO mischaracterizes the challenge bases presented in the petition and
`adopted by the Board by its arguments that Bouevitch, Sparks and Lin do
`not teach “micromirrors being pivotal about two axes and being
`continuously controllable.” PO Response, pp. 47-53
` Both the Petition and the Decision point only to Sparks as teaching MEMS
`mirrors movable in two dimensions.
`•
`“[T]he only portion of the second part of element 1[d] not taught by
`Bouevitch is a micromirror ‘pivotable about two axes.’ …. But … Sparks
`discloses such a micromirror.” Petition, pg. 33
`“Petitioner relies on the description in Sparks of a 2-axis beam deflecting
`element.” Decision, pg. 16
` There are no contentions that rely on either Bouevitch or Lin alone to
`disclose continuous control in two dimensions.
`
`•
`
`Petition, pp. 28-33; Pet. Reply § II.G, p. 17-18
`
`39
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Continuous Control of Two-Axis Mirrors Was Obvious
`
` Construction of “Continuously Controllable”
`• Board determined that no express construction was
`necessary
`Decision, pg. 10
`• Board determined that “continuously controllable” means
`“under analog control such that it can be continuously
`adjusted” in related proceeding
`IPR2014-01276, Final Written Decision, Paper 40, pg. 13
`
`Petition, pp. 28-33; Decision, p. 10; Pet. Reply § II.G, p. 17-18
`
`40
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Continuous Control of Two-Axis Mirrors Was Obvious
` Sparks teaches continuous control. McLaughlin Decl., Ex. 1028, ¶ 57
` “[C]ontrolled misalignment of the optical beam path so as to achieve a
`predetermined optical output power.”
`Sparks, Ex. 1004, col. 2, ll. 22-35
` “[E]ach of the channels passing through the switch may be attenuated to
`whatever degree necessary to achieve the desired effect.”
`Id., col. 2, ll. 22-35
` Mirrors are actuatable “to achieve any desired optical beam power output
`less than the maximum.”
`Id., col. 4, ll. 54-55
`
` PO offers no substantive contrary arguments. Says only that Sparks
`•
`“[D]oes not necessarily teach or suggest” a continuously controllable mirror
`•
`Is “not sufficient to show,” a continuously controllable mirror.
`PO Response, pp. 49-50
`
`Petition, pp. 28-33; Pet. Reply § II.G, pp. 18-19
`
`41
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Continuous Control of Two-Axis Mirrors Was Obvious
` Lin teaches continuous control. McLaughlin Decl., Ex. 1028, ¶ 59
`
` Spatial light modulator is:
` “[O]perable in analog mode for light beam steering or scanning applications.” Lin, Ex.
`1010, Abstract
` “This analog operating range is represented as angle θ, as shown in FIG. 3A. This
`corresponds to an input voltage of between 0 and 20 volts. As pixel 42 deflects angle θ,
`incident light is steered through a range of 2θ.” Id., col. 6, ln 67 – col. 7, ln. 4; Fig. 3A
` “With an address voltage being applied … from 0 to 20 volts, mirror 42 is deflected
`proportional to the address voltage.” Id., col. 7, ll. 13-15.
` Fig. 3B shows continuous relationship between deflection and applied voltage with
`the device operating range. McLaughlin Decl., Ex. 1028, ¶ 51
`Petition, pp. 28-33; Pet. Reply § II.G, pp. 19-20
`
`42
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►Continuous Control of Two-Axis Mirrors Was Obvious
` Lin teaches continuous control. McLaughlin Decl., Ex. 1028, ¶ 59
`
` PO’s contention is that continuous control cannot be shown by input signal alone,
`and that it would be necessary to look at how the voltage of the input signal
`affects movement of the mirror (PO’s Response, pg. 52)
`•
`Contention is at odds with Lin, which expressly addresses control and
`movement:
` “To operate the device as a … light switch, it is desirable to precisely control the
`degree of deflection as so [sic] to precisely steer incident light.”
`Lin, Ex. 1010, col. 3, ll. 46-49
`Contention is unpersuasive in view of above-described disclosures of Lin and
`Petitioners’ expert testimony
`Petition, pp. 28-33; Pet. Reply § II.G, pp. 19-20
`
`•
`
`43
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►It Was Obvious to Combine Sparks and Lin
`Petitioners have shown that it would have been obvious to substitute
`Sparks’ two-axis mirrors for the one-axis mirrors of Bouevitch for both
`switching and power control. E.g.:
` “The PHOSITA would be motivated to use the 2-axis system of Sparks
`within the system of Bouevitch for power control. “ Petition, pg. 36
` Sparks expressly states that an advantage of optical switches with two-
`axis mirrors is that attenuation (i.e., power control) can be achieved
`without the need for separate attenuators in the system. Sparks, Ex.
`1004, col. 2, ll. 28-30
` Two-axis mirrors were among a small number of well-known and
`predictable solutions for beam steering. McLaughlin Decl., Ex. 1028, ¶32
` The test for obviousness does not require a “bodily incorporation”
`standard. In re Keller, Id.
`
`Petition, pp. 20, 31-37; Pet. Reply § II.A-C, H, pp. 1-7, 20-21
`
`44
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►It Was Obvious to Combine Sparks and Lin
`Petitioners have shown that it would have been obvious to incorporate Lin’s
`continuous control features into the Bouevitch and Sparks device (to the
`extent Sparks is found not to disclose that feature) E.g.:
` “[I]t would be obvious to combine Lin’s continuous, analog control with
`Bouevitch and Sparks.” Petition, pg. 31
` “Lin specifically teaches that its analog, continuous MEMS mirrors would
`be useful in optical switching applications like Bouevitch’s and Sparks’.”
`Petition, pg. 32
` The combination of Bouevitch, Sparks and Lin “would provide predictable
`results” and “would be obvious to try.” McLaughlin Decl., Ex. 1028, ¶¶ 60,
`63
` PO has not provided persuasive evidence why such a combination would
`be beyond the skills of a PHOSITA
`
`Petition, pp. 20, 31-37; Pet. Reply § II.H, pp. 21-22
`
`45
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►It Was Obvious to Use Sparks’ Servo Control in Bouevitch
` Petitioners provided extensive evidence on why and how it was obvious to
`incorporate Sparks’ servo control into Bouevitch. Petition, pp. 37-44, 51, 55, 58-59.
`E.g.:
` A “PHOSITA would appreciate that the feedback-driven control of Sparks would
`improve the precision of the mirror-based switching system of Bouevitch.”
` The combination “would be straightforward and predictable.”
` “It would have been obvious to the PHOSITA to try.” McLaughlin Decl., ¶¶ 86, 93,
`78
` PO’s contentions are in conflict with express statements to the contrary in RE
`42,678:
` “The electronic circuitry and the associated signal processing algorithm/software
`for such processing unit in a servo-control system are known in the art. A skilled
`artisan will know how to implement a suitable spectral monitor along with an
`appropriate processing unit to provide a servo-control assembly in a WSP-S
`apparatus according to the present invention.” Ex. 1001, col. 12, ll. 9-15
`
`Petition, pp. 37-44, 51, 55, 58-59; Pet. Reply § II.I, pp. 22-23
`
`46
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►PO’s Evidence of “Industry Adoption” is Irrelevant
` PO’s arguments regarding “industry adoption” are legally
`insufficient to overcome the strong prima facie case of obviousness
` PO offers no support that “industry adoption” constitutes evidence
`of secondary considerations.
`•
`“[O]bjective evidence of non-obviousness [] includes factors such as
`‘commercial success, long-felt but unresolved need, failure of others,
`copying and unexpected results.’” ABT Sys. LLC v. Emerson Elec. Co.,
`797 F.3d 1350, 1361 (Fed. Cir. 2015)
`• PO’s arguments do not refer to “secondary considerations” or
`“objective indicia of non-obviousness”
`• PO does not cite any legal authority
`
`Pet. Reply § II.J, pp. 23
`
`47
`
`PETITIONERS LUMENTUM HOLDINGS
`Exhibit 1045, IPR2015-00731
`
`
`
`III. Response to PO’s Arguments
`
`►PO’s Evidence of “Industry Adoption” is Irrelevant
` Secondary considerations require demonstration of a nexus
`between the evid