`Entered: August 25, 2015
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`JDS UNIPHASE CORPORATION,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00731
`Patent RE42,368 E
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2015-00731
`Patent RE42,368 E
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`I.
`
`INTRODUCTION
`
`Petitioner, JDS Uniphase Corporation, filed a Petition requesting an
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`inter partes review of claims 1–6, 9–13, and 15–22 of U.S. Patent
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`No. RE42,368 E (“the ’368 patent”). Paper 1 (“Pet.”). Patent Owner,
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`Capella Photonics, Inc., filed a Preliminary Response. Paper 7 (“Prelim.
`
`Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that
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`an inter partes review may not be instituted “unless . . . the information
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`presented in the petition . . . shows that there is a reasonable likelihood that
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`the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.”
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`Upon consideration of the Petition and the Preliminary Response, we
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`conclude the information presented shows there is a reasonable likelihood
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`that Petitioner would prevail in showing the unpatentability of the
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`challenged claims. Accordingly, we authorize an inter partes review to be
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`instituted as to claims 1–6, 9–13, and 15–22 of the ’368 patent. Our factual
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`findings and conclusions at this stage of the proceeding are based on the
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`evidentiary record developed thus far (prior to Patent Owner’s Response).
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`This is not a final decision as to patentability of claims for which inter
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`partes review is instituted. Our final decision will be based on the record, as
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`fully developed during trial.
`
`II.
`
`BACKGROUND
`
`A.
`
`The ’368 patent (Ex. 1001)
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`The ’368 patent, titled “Reconfigurable Optical Add-Drop
`
`Multiplexers with Servo Control and Dynamic Spectral Power Management
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`Capabilities,” reissued May 17, 2011, from U.S. Patent No. 6,879,750 (“the
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`2
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`Patent RE42,368 E
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`’750 patent”). Ex. 1001. The ’750 patent issued April 12, 2005, from U.S.
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`Patent Application No. 10/745,364, filed December 22, 2003. Petitioner
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`contends the earliest facial priority date for the ’368 patent is a provisional
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`application filed on March 19, 2001. Pet. 18.
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`According to the ’368 patent, “fiber-optic communications networks
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`commonly employ wavelength division multiplexing (WDM), for it allows
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`multiple information (or data) channels to be simultaneously transmitted on
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`a single optical fiber by using different wavelengths and thereby
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`significantly enhances the information bandwidth of the fiber.” Ex. 1001,
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`1:37–42. An optical add-drop multiplexer (OADM) is used both to remove
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`wavelengths selectively from a multiplicity of wavelengths on an optical
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`fiber (taking away one or more data channels from the traffic stream on the
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`fiber), and to add wavelengths back onto the fiber (inserting new data
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`channels in the same stream of traffic). Id. at 1:45–51.
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`The ’368 patent describes a “wavelength-separating-routing (WSR)
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`apparatus that uses a diffraction grating to separate a multi-wavelength
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`optical signal by wavelength into multiple spectral channels, which are then
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`focused onto an array of corresponding channel micromirrors.” Id. at
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`Abstract. “The channel micromirrors are individually controllable and
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`continuously pivotable to reflect the spectral channels into selected output
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`ports.” Id. According to Petitioner, the small, tilting mirrors are sometimes
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`called Micro ElectroMechanical Systems or “MEMS.” Pet. 8.
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`The WSR described in the ’368 patent may be used to construct
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`dynamically reconfigurable OADMs for WDM optical networking
`
`applications. Id. at 7.
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`3
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`Patent RE42,368 E
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`Figure 1A of the ’368 patent is reproduced below.
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`
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`Figure 1A depicts wavelength-separating-routing (WSR) apparatus 100, in
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`accordance with the ’368 patent. WSR apparatus 100 is comprised of an
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`array of fiber collimators 110 (multiple input/output ports, including input
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`port 110-1 and output ports 110-2 through 110-N), diffraction grating 101 (a
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`wavelength separator), quarter wave plate 104, focusing lens 102 (a beam-
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`focuser), and array of channel micromirrors 103. Ex. 1001, 6:57–63, 7:55–
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`56.
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`
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`A multi-wavelength optical signal emerges from input port 110-1 and
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`is separated into multiple spectral channels by diffraction grating 101, which
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`are then focused by focusing lens 102 into a spatial array of distinct spectral
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`spots (not shown). Id. at 6:64–7:2. Channel micromirrors 103 are
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`positioned such that each channel micromirror receives one of the spectral
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`channels. Id. at 7:2–5.
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`4
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`IPR2015-00731
`Patent RE42,368 E
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`Figure 1B of the ’368 patent is reproduced below.
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`
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`Figure 1B depicts a close-up view of the array of channel
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`micromirrors 103 shown above in Figure 1A. Id. at 8:6–7. The channel
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`micromirrors “are individually controllable and movable, e.g., pivotable (or
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`rotatable) under analog (or continuous) control, such that, upon reflection,
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`the spectral channels are directed” into selected output ports by way of
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`focusing lens 102 and diffraction grating 101. Id. at 7:6–11. According to
`
`the ’368 patent:
`
`each micromirror may be pivoted about one or two axes. What
`is important is that the pivoting (or rotational) motion of each
`channel micromirror be individually controllable in an analog
`manner, whereby the pivoting angle can be continuously
`adjusted so as to enable the channel micromirror to scan a
`spectral
`channel
`across
`all
`possible
`output
`ports.
`
`Id. at 9:8–14.
`
`5
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`IPR2015-00731
`Patent RE42,368 E
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`Figure 3 of the ’368 patent is reproduced below.
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`
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`Similar to Figure 1A, above, Figure 3 also shows a WSR apparatus as
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`described by the ’368 patent. Ex. 1001, 10:25–26. In this embodiment, two
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`dimensional array of fiber collimators 350 provides an input port and
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`plurality of output ports. Id. at 10:31–32. First and second two-dimensional
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`arrays of imaging lenses 360, 370 are placed in a telecentric arrangement
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`between two-dimensional collimator-alignment mirror array 320 and two-
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`dimensional fiber collimator array 350. Id. at 10:37–43. “The channel
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`micromirrors 103 must be pivotable biaxially in this case (in order to direct
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`its corresponding spectral channel to any one of the output ports).” Id. at
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`10:43–46.
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`The WSR may also incorporate a servo-control assembly (together
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`termed a “WSR-S apparatus.”) Id. at 4:65–67. According to the ’368
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`patent:
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`The servo-control assembly serves to monitor the power levels
`of the spectral channels coupled into the output ports and
`further provide control of the channel micromirrors on an
`individual basis, so as to maintain a predetermined coupling
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`6
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`IPR2015-00731
`Patent RE42,368 E
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`efficiency of each spectral channel in one of the output ports.
`As such, the servo-control assembly provides dynamic control
`of the coupling of the spectral channels into the respective
`output ports and actively manages the power levels of the
`spectral
`channels
`coupled
`into
`the
`output
`ports.
`
`Id. at 4:47–56.
`
`Figure 5 of the ’368 patent is reproduced below.
`
`
`
`Figure 5 depicts OADM 500 in accordance with the ’368 patent
`
`comprised of WSR-S (or WSR) apparatus 510 and optical combiner 550.
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`Ex. 1001, 12:40–44. Input port 520 transmits a multi-wavelength optical
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`signal, which is separated and routed into a plurality of output ports,
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`including pass-through port 530 and one or more drop ports 540-1 through
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`540-N. Id. at 12:44–48. Pass-through port 530 is optically coupled to
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`optical combiner 550, which combines the pass-through spectral channels
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`with one or more add spectral channels provided by one or more add ports
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`560-1 through 560-M. Id. at 12:52–56. The combined optical signal is then
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`routed into existing port 570, providing an output multi-wavelength optical
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`signal. Id. at 12:56–58.
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`7
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`IPR2015-00731
`Patent RE42,368 E
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`B.
`
`Illustrative Claims
`
`Claims 1, 15, 16, and 17 of the ’368 patent are independent. Claims
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`2–6 and 9–13 ultimately depend from claim 1 and claims 18–22 ultimately
`
`depend from claim 17. Claims 1 and 17 of the ’368 patent are illustrative of
`
`the claims at issue:
`
`1. An optical add-drop apparatus comprising
`an input port for an input multi-wavelength optical signal
`having first spectral channels;
`one or more other ports for second spectral channels; an
`output port for an output multi-wavelength optical signal;
`a wavelength-selective device for spatially separating said
`spectral channels; [and]
`a spatial array of beam-deflecting elements positioned such
`that each element receives a corresponding one of said
`spectral channels, each of
`said elements being
`in
`two
`individually and continuously controllable
`dimensions to reflect its corresponding spectral channel
`to a selected one of said ports and to control the power of
`the spectral channel reflected to said selected port.
`
`Ex. 1001, 14:6–20.
`
`
`17. A method of performing dynamic add and drop in a
`WDM optical network, comprising
`separating an input multi-wavelength optical signal into
`spectral channels;
`imaging each of said spectral channels onto a corresponding
`beam-deflecting element; and
`controlling dynamically and continuously said beam-
`deflecting elements in two dimensions so as to combine
`selected ones of said spectral channels into an output
`multi-wavelength optical signal and to control the power
`of the spectral channels combined into said output multi-
`wavelength optical signal.
`
`Ex. 1001, 16:3–14.
`
`8
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`C.
`
`Related Proceedings
`
`According to the parties, the ’368 patent is a subject of the following
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`civil actions: Capella Photonics, Inc. v. Cisco Sys., Inc., No. 3:14-cv-03348
`
`(N.D. Cal.), Capella Photonics, Inc. v. Fujitsu Network Commc’ns, Inc., No.
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`3:14-cv-03349 (N.D. Cal.), Capella Photonics, Inc. v. Tellabs Ops., Inc., No.
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`3:14-cv-03350 (N.D. Cal.), Capella Photonics, Inc. v. Ciena Corp., No.
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`3:14-cv-03351 (N.D. Cal.), Capella Photonics, Inc. v. Columbus Networks
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`USA, Inc., No. 0:14-cv-61629 (S.D. Fla.), and Capella Photonics, Inc. v.
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`Telefonica Int’l Wholesale Servs. USA, Inc., No. 1:14-cv-22701 (S.D. Fla.).
`
`Pet. 2; Paper 6, 2–3.
`
`Claims 1–6, 9–13, and 15–22 of the ’368 patent are challenged in
`
`Cisco Systems, Inc. v. Capella Photonics, Inc., IPR2014-01166, instituted on
`
`January 30, 2015 (“IPR2014-01166”). The ’368 patent is also the subject of
`
`petitions for inter partes review in Fujitsu Network Communications, Inc. v.
`
`Capella Photonics, Inc., IPR2015-00726, and Ciena Corporation, Coriant
`
`Operations, Inc., Coriant (USA) Inc., and Fujitsu Network Communications,
`
`Inc. v. Capella Photonics, Inc., IPR2015-00816.
`
`9
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`IPR2015-00731
`Patent RE42,368 E
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`D.
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`Asserted Grounds of Unpatentability
`
`Petitioner contends that claims 1–6, 9–13, and 15–22 of the ’368
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`patent are unpatentable based on the following grounds:
`
`Reference[s]
`Bouevitch1 and Sparks2
`Bouevitch, Sparks, and Lin3
`Bouevitch, Sparks, and Dueck4
`Bouevitch, Sparks, Lin, and Dueck
`
`
`
`Basis
`
`Challenged Claims
`
`§ 103(a) 1–6, 9–13, and 15–22
`
`§ 103(a) 1–6, 9–13, and 15–22
`
`§ 103(a) 12
`
`§ 103(a) 12
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`III. ANALYSIS
`
`A.
`
`Claim Construction
`
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`
`No. 2014–1301, 2015 WL 4097949 at *5–8 (Fed. Cir., July 8, 2015).
`
`1.
`
`“to control”
`
`Independent claims 1, 15, and 16 each recite outside of the preamble:
`
`a spatial array of beam-deflecting elements positioned such that
`each element receives a corresponding one of said spectral
`channels, each of said elements being individually and
`continuously controllable in two dimensions to reflect its
`corresponding spectral channel to a selected one of said ports
`
`
`1 U.S. Patent No. 6,498,872 B2, issued December 24, 2002 (Ex. 1003,
`“Bouevitch”).
`2 U.S. Patent No. 6,625, 340 B1, issued September 23, 2003 (Ex. 1004,
`“Sparks”). Petitioner contends Sparks is 102(e) prior art as of its filing date
`of December 29, 1999. Pet. 18.
`3 U.S. Patent No. 5,661,591, issued August 26, 1997 (Ex. 1010, “Lin”).
`4 U.S. Patent No. 6,011,884, issued January 4, 2000 (Ex. 1021, “Dueck”).
`10
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`IPR2015-00731
`Patent RE42,368 E
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`and to control the power of the spectral channel reflected to
`said selected port.
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`Ex. 1001, 14:14– 20, 15:14–20, 15:31–37. Independent claim 17 contains a
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`similar limitation.5 Petitioner contends that the “to control” clause “refers
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`merely to intended use” and is limited “only to structure that may be capable
`
`of redirecting a spectral channel to a particular port.” Pet. 13. Petitioner
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`further asserts that the “to control” clause means “to change the power in the
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`spectral channel that is received by a particular port.” Id. Petitioner
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`identifies no sufficient evidence in support of construing “to control” as
`
`meaning “to change.” We determine no express construction of the “to
`
`control” clause is necessary for purposes of this decision.
`
` 2.
`
`“continuously controllable”
`
` Petitioner asserts that “continuously controllable” should be
`
`construed to mean “able to effect changes with fine precision.” Id. at 11.
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`Petitioner offers no sufficient explanation for how its proposed definition
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`accounts for the term “continuously” in “continuously controllable,” directs
`
`us to no portion of the specification of the ’368 patent that uses “fine
`
`precision,” and fails to explain what “fine precision” is intended to
`
`encompass or exclude. See id. at 11–12. Petitioner also, however, notes that
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`the ’368 patent identifies “under analog control” as an example of
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`continuous control. Id. at 12. Patent Owner disputes Petitioner’s proposed
`
`
`5 Claim 17 recites: “controlling dynamically and continuously said beam-
`deflecting elements in two dimensions so as to combine selected ones of said
`spectral channels into an output multi-wavelength optical signal and to
`control the power of the spectral channels combined into said output multi-
`wavelength optical signal.” Ex. 1001, 16:9–14.
`11
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`IPR2015-00731
`Patent RE42,368 E
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`construction, but offers no alternative construction of the term. See Prelim.
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`Resp. 51–52. We determine that no express construction is necessary for
`
`purposes of this decision.
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`3.
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`“servo-control assembly”
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`Petitioner asserts that “servo-control assembly” should be construed to
`
`mean “feedback-based control assembly.” Pet. 14. Patent Owner offers no
`
`alternative construction of the term.
`
`The ’368 patent states that a “skilled artisan will know how to
`
`implement a suitable spectral monitor along with an appropriate processing
`
`unit to provide a servo-control assembly in a WSP-S apparatus according to
`
`the present invention, for a given application.” Ex. 1001, 12:11–15. For
`
`purposes of this decision, no express construction of “servo-control
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`assembly” is necessary.
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`4.
`
`“spectral monitor”
`
`Petitioner asserts that “spectral monitor” should be construed to mean
`
`“a device for measuring power in a spectral channel.” Pet. 13. Claim 3
`
`recites “a spectral monitor for monitoring power levels.” As the claim itself
`
`identifies the function of the “spectral monitor,” no express construction of
`
`“spectral monitor” is necessary for purposes of this decision.
`
`5.
`
`Additional Claim Terms
`
`Petitioner addresses several additional claim terms, including “in two
`
`dimensions” and “beam-focuser.” Pet. 12–13, 16–17. For purposes of this
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`decision, no express construction of any additional claim term is necessary.
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`12
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`B.
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`References Asserted as Prior Art
`
`Petitioner relies on Bouevitch, Sparks, Lin, and Dueck with respect to
`
`its assertion that the challenged claims would have been obvious.
`
`1.
`
`Bouevitch
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`Bouevitch describes an optical device for rerouting and modifying an
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`optical signal, including modifying means such as a MEMS array and a
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`liquid crystal array which function as an attenuator when the device operates
`
`as a dynamic gain equalizer (DGE), and as a switching array when the
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`device operates as a configurable optical add/drop multiplexer (COADM).
`
`Ex. 1003, Abstract. According to Petitioner, the COADM described in
`
`Bouevitch “uses MEMS mirrors with 1 axis of rotation.” Pet. 20. Petitioner
`
`also contends that the Bouevitch COADM controls the power of its output
`
`channels by tilting beam-deflecting mirrors at varying angles. Id. at 19.
`
`2.
`
`Sparks
`
`Sparks describes an optical switch arranged to misalign the optical
`
`beam path to provide a predetermined optical output power. Ex. 1004,
`
`Abstract. According to Sparks, “[t]he system operates by controlling the
`
`movable micromirrors (16,26), which are fabricated using MEMS
`
`technology and are capable of two axis movement, to carefully align the
`
`beams so as to ensure that the maximum possible input optical signal is
`
`received at the output of the switch.” Id. at 4:43–48.
`
`3.
`
`Lin
`
`
`
`Lin describes a “spatial light modulator… operable in the analog
`
`mode for light beam steering or scanning applications.” Ex. 1010, Abstract.
`
`Lin explains that the angular deflection of a mirror about the torsional axis is
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`13
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`a function of the voltage potential applied to an address electrode. Id. at
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`6:29–32. Petitioner contends that Figure 3B of Lin depicts a continuous and
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`linear relationship between the deflection angle of the MEMS mirrors and
`
`the applied voltage. Pet. 31.
`
`
`
`
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`4.
`
`Dueck
`
`Dueck describes a wavelength division multiplexer that integrates an
`
`axial gradient refractive index element with a diffraction grating to provide
`
`efficient coupling from a plurality of input sources. Ex. 1021, Abstract.
`
`Petitioner contends that Dueck describes various diffraction gratings for use
`
`in WDM devices. Pet. 19.
`
`C.
`
`Asserted Obviousness Over Bouevitch, Sparks, and Lin
`
`Petitioner asserts that claims 1–6, 9–11, 13, and 15–22 would have
`
`been obvious over Bouevitch, Sparks, and Lin. Pet. 5.
`
`1.
`
`Claim 1
`
`Petitioner first argues that during reissue Patent Owner admitted that
`
`all elements of claim 1, except for two-axis mirrors, were disclosed by
`
`Bouevitch. Id. at 9–11. Rather than identify any such admission, Petitioner
`
`directs us to a Replacement Reissue Application Declaration by Assignee,
`
`which states:
`
`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 U.S. Patent No. 6,567,574 to
`Ma, U.S. Patent No. 6,256,430 to Jin, or 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
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`14
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`control the power of the spectral channels reflected to selected
`output ports, as indicated by the amendments to Claim 1 in the
`Preliminary Amendment referred to above.
`
`See Pet. 9, quoting Ex. 1002, 81–82 . Rather than admit that all original
`
`elements of claim 1 are disclosed by Bouevitch, the statement makes clear
`
`that three additional references not relied upon by Petitioner in this
`
`proceeding were considered in combination with Bouevitch. Moreover,
`
`Petitioner identifies no persuasive authority for the proposition that such a
`
`statement should be treated as an admission in this proceeding. As a result,
`
`we are not persuaded that Patent Owner has admitted all elements of claim
`
`1, except for two-axis mirrors, were disclosed by Bouevitch.
`
`
`
`Petitioner further asserts, with respect to the elements of claim 1, that
`
`Bouevitch discloses an optical add-drop apparatus, including an input port
`
`(labeled “IN”), one or more other ports (labeled 80b “IN ADD” and “OUT
`
`DROP”), and an output port (labeled “OUT EXPRESS”). Pet. 25–26 (citing
`
`Ex. 1003, Fig. 11). Petitioner’s contentions are supported by Sheldon
`
`McLaughlin, an employee of Petitioner. Ex. 1028 (Declaration of Sheldon
`
`McLaughlin) ¶¶ 2, 38–41.
`
`Grounds of unpatentability based on Bouevitch were instituted for
`
`trial currently proceeding in IPR2014-01166. Patent Owner continues to
`
`contest the sufficiency of Bouevitch at this initial stage of proceedings in
`
`support of its contention that Petitioner has not shown a reasonable
`
`likelihood of succeeding in demonstrating the challenged claims
`
`unpatentable over Bouevitch and other prior art. Patent Owner’s arguments
`
`include: that Bouevitch does not teach the claimed input, output, and one or
`
`more other ports (Prelim. Resp. 39–48), that the circulators of Bouevitch
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`15
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`IPR2015-00731
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`coupled to microlenses “do not meet the distinct structure” as claimed, (id. at
`
`41– 42); and that the ’368 patent disavows circulator-based optical systems
`
`(id. at 42–46). Patent Owner contends that a person of ordinary skill in the
`
`art would understand the meaning of “ports,” but provides no proposed
`
`definition, and instead suggests the definition does not include circulator
`
`ports. Id. at 46–47. Similarly, Patent Owner asserts that “Bouevitch, as
`
`understood by a [person of ordinary skill in the art], can at most have two
`
`ports.” Id. at 47–48. We have considered Patent Owner’s arguments,
`
`primarily supported only by attorney argument, and determine on the present
`
`record that they are not persuasive.6
`
`Patent Owner also argues that Petitioner improperly relies on
`
`disparate embodiments of Bouevitch without providing a rationale for their
`
`combination. Prelim. Resp. 24–30. On the present record, we are not
`
`persuaded by Patent Owner’s argument that Petitioner relies on modifying
`
`means 150 of Bouevitch to show claim limitations with respect to power
`
`control and continuous control. Id. at 25. The Petition relies on Sparks as
`
`disclosing power control, as well as Lin for the “continuously controllable”
`
`limitation. Pet. 31–32, 35. Moreover, Patent Owner’s argument that a
`
`person of ordinary skill in the art “would have understood that MEMS array
`
`50 does not require a predetermined polarization of an input beam, a
`
`
`6 Pursuant to 37 C.F.R. § 42.107(c), a patent owner preliminary response
`“shall not present new testimony evidence beyond that already of record,
`except as authorized by the Board.” Patent Owner did not request
`authorization, and was not authorized, to submit new testimony evidence in
`this proceeding. Accordingly, any testimony evidence obtained after the
`date of the Petition submitted with Patent Owner’s Preliminary Response is
`excluded from consideration for purposes of this Decision.
`16
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`birefringent element, a liquid crystal array, or a quarter waveplate as
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`required by modifying means 150,” for example, is unsupported attorney
`
`argument not persuasive on the present record. See Prelim. Resp. 27–28.
`
`Petitioner identifies Bouevitch’s diffraction grating 20 as a
`
`wavelength-selective device for spatially separating spectral channels, as
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`recited in claim 1. Pet. 27. Petitioner also identifies Bouevitch’s MEMS
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`mirror array 50 as a spatial array of beam-deflecting elements positioned
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`such that each element receives a corresponding one of said spectral
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`channels, as recited by claim 1. Id. at 27–28.
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`In addition to arguing that Bouevitch discloses the “continuously
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`controllable” limitation of claim 1, Petitioner also identifies descriptions in
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`Sparks and Lin as corresponding to this limitation. We are not persuaded by
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`Petitioner’s assertion that “continuously controllable” means “able to effect
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`changes with fine precision.” Petitioner, however, further contends that the
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`’368 patent provides analog control as an example of continuously
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`controllable, and argues that Bouevitch discloses continuously controllable
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`power attenuation as an analog function of the angle of the deflector, which
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`is also described as “variable.” Id. at 28–30. With respect to Sparks,
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`Petitioner argues that the “continuously controllable” limitation is disclosed
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`as reflectors which may attenuate “to whatever degree necessary to achieve
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`the desired effect.” Id. at 30. Petitioner identifies Lin as disclosing
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`continuous analog control of MEMS mirrors. Pet. 31. With respect to the
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`requirement of claim 1 that such beam-deflecting elements be continuously
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`controllable “in two dimensions,” Petitioner relies on the description in
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`Sparks of a 2-axis beam deflecting element. Id. at 33. Petitioner also
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`contends both Bouevitch and Sparks disclose switches to “redirect a spectral
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`channel to a particular port. Id. at 34.
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`Patent Owner makes various arguments, including: that Petitioner has
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`not shown how “deflecting” meets the claim element “reflecting” (Prelim.
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`Resp. 49); that Petitioner has not shown sufficiently that Sparks discloses
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`“beam-deflecting elements continuously controllable in two dimensions” (id.
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`at 52–53); “that analog control does not necessarily result in beam-deflecting
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`elements that are continuously controllable” (id. at 54); and that “no [person
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`of ordinary skill in the art] would have understood Lin” to show such control
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`in two dimensions (id. at 56). We have considered Patent Owner’s
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`arguments, primarily supported only by attorney argument, and determine on
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`the present record that they are not persuasive.
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`With respect to a rationale for combining Bouevitch and Sparks,
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`Petitioner contends, among various reasons, that (1) the use of the two-axis
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`mirror of Sparks in Bouevitch is a simple substitution of one known element
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`for another, yielding predictable results, including minimizing the device’s
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`size; (2) it would be obvious to try the two-axis mirror of Sparks in
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`Bouevitch because it is among a small number of identified, predictable
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`solutions for mirror attenuation with a high expectation of success; and, (3)
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`the use of a two-axis mirror in Bouevitch would overcome manufacturing
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`defects by being actuable. Pet. 21–24, 34. Petitioner also contends that
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`several reasons support the addition of Lin’s continuous, analog control to
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`the asserted combination, including interchangeability with discrete-step
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`mirrors and more precision in matching the optimal coupling value. Id. at
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`32.
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`Patent Owner argues that Petitioner’s rationale for combining
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`Bouevitch, Sparks, and Lin was insufficient, for, among other reasons, there
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`are many variables and technical challenges. Prelim. Resp. 30–39, 57–58.
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`Patent Owner argues that using the mirrors of Sparks in Bouevitch would
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`disrupt Bouevitch’s polarization-based switch and explicit teaching of
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`parallel alignment. Id. at 33–37. Patent Owner also argues only hindsight
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`would motivate the combination of Bouevitch and Sparks because Petitioner
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`contends Bouevitch can accomplish both switching and power-control using
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`a single-axis mirror. Id. at 38–39.
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`At this stage of the proceedings, absent sufficient additional
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`supporting evidence, we are not persuaded by Patent Owner’s attorney
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`arguments and credit the testimony of Petitioner’s declarant,
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`Mr. McLaughlin. Based on the information presented, Petitioner has
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`demonstrated a reasonable likelihood that it would prevail in showing claim
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`1 unpatentable as obvious over Bouevitch, Sparks, and Lin.
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`2. Claims 2–6, 9–11, 13, and 15–22.
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`
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`In addition to addressing the elements of claim 1, Petitioner also
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`identifies how claims 2–6, 9–11, 13, and 15–22 would have been obvious
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`over Bouevitch, Sparks, and Lin, as supported by the Declaration of
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`Mr. McLaughlin. Pet. 36–60.
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`
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`With respect to claim 17, Patent Owner argues that the Petition fails to
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`address the requirement that the method include controlling beam deflecting
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`elements “so as to combine selected ones of said spectral channels into an
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`output multi-wavelength optical signal.” Prelim. Resp. 58. Petitioner
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`implicitly argues that the “so as to combine” feature of claim 17 is not a
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`substantive difference from the requirement of claim 1 that the apparatus
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`include elements “being individually and continuously controllable in two
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`dimensions to reflect its corresponding spectral channel to a selected one of
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`said ports.” On the present record we are not persuaded by Patent Owner’s
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`argument.
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`
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`With respect to claims 3 and 22, Patent Owner argues that Sparks
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`does not teach servo control and spectral features, and that the Petition fails
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`to articulate how a person of ordinary skill in the art would have been able to
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`add servo control features to Bouevitch without disrupting Bouevitch’s
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`operation or why such a person would have done so. Prelim. Resp. 59.
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`Petitioner, as supported by Mr. McLaughlin, asserts that the servo control of
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`Sparks was an alternative to the external feedback for power control that
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`Bouevitch explains should be eliminated, and that there are limited
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`alternatives to provide such feedback. Pet. 40. As noted above, the ’368
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`patent also states a “skilled artisan will know how to implement a suitable
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`spectral monitor along with an appropriate processing unit to provide a
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`servo-control assembly in a WSP-S apparatus according to the present
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`invention, for a given application.” Ex. 1001, 12:11–15.
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`We determine, based on the present record, that Petitioner has
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`demonstrated a reasonable likelihood that it would prevail in showing claims
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`2–6, 9–11, 13, and 15–22 unpatentable as obvious over Bouevitch, Sparks,
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`and Lin.
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`D.
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`Asserted Obviousness Over Bouevitch, Sparks, Lin, and Dueck
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`Petitioner contends claim 12 would have been obvious over
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`Bouevitch, Sparks, Lin, and Dueck. Claim 12 recites the apparatus of claim
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`1, wherein the wavelength-selective device comprises a device selected from
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`the group consisting of ruled diffraction gratings, holographic diffraction
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`gratings, echelle gratings, curved diffraction gratings, and dispersing prisms.
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`Ex. 1001, 14:63–67. Petitioner contends that Dueck discloses “ruled
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`diffraction gratings,” as claimed. Pet. 48. Petitioner further asserts that it
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`would have been obvious to try Dueck’s ruled diffraction gratings in the
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`devices of Bouevitch and Sparks because it represents the “best mode” of
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`separating wavelengths in WDM devices. Id. at 48–49. Based on the
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`information presented, Petitioner has demonstrated a reasonable likelihood
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`that it would prevail in showing claim 12 unpatentable as obvious over
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`Bouevitch, Sparks, Lin, and Dueck.
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`E.
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`Additional Grounds of Unpatentability
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`Consistent with the statute and legislative history of the Leahy-Smith
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`America Invents Act, Pub. L. 112-29, 125 Stat. 284, 329 (2011) (“the AIA”),
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`the rules promulgated for post-grant proceedings, including those pertaining
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`to institution, are “construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” 37 C.F.R. § 42.1(b); see also 35 U.S.C. §
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`316(b) (regulations for AIA post-grant proceedings take into account “the
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`efficient administration of the Office” and “the ability of the Office to timely
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`complete [instituted] proceedings”). Therefore, we exercise our discretion
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`and, for reasons of administrative necessity to ensure timely completion of
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`the instituted proceeding, do not institute a review limited to the grounds
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`asserting unpatentability of claims 1–6, 9–13, and 15–22 as obvious over
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`Bouevitch and Sparks; claim 12 as obvious over Bouevitch, Sparks, and Lin;
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`and claim