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
`___________________
`
`DECLARATION OF DR. ALEXANDER V. SERGIENKO
`IN SUPPORT OF THE PATENT OWNER RESPONSE
`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Capella 2022
`JDS Uniphase v. Capella
`IPR2015-00731
`
`

`
`Case IPR2015-00731
`Patent RE42,368
`
`Table of Contents
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. QUALIFICATIONS ............................................................................................ 1
`
`III. INFORMATION CONSIDERED FOR THIS DECLARATION ....................... 4
`
`IV. OVERVIEW OF THE LAW USED FOR THIS DECLARATION ................... 9
`
`A.
`
`B.
`
`C.
`
`Level of Skill in the Art .......................................................................10
`
`Obviousness .........................................................................................11
`
`Claim Construction..............................................................................14
`
`V. INSTITUTED GROUNDS ................................................................................14
`
`VI. TECHNOLOGY ................................................................................................14
`
`A. General Overview of OADMs, COADMs, and ROADMs ................14
`
`B.
`
`Use of Circulators at the Time of the Invention ..................................18
`
`VII.THE ’368 PATENT AND THE APPLIED REFERENCES ............................24
`
`A.
`
`The ’678 Patent ...................................................................................25
`
`1.
`2.
`3.
`
`Reconfigurability ......................................................................25
`Scalability ..................................................................................32
`Controllability to Couple Spectral Channels Into the
`Output Ports ..............................................................................35
`The Claims ................................................................................37
`4.
`Bouevitch .............................................................................................38
`
`Embodiments Bouevitch Calls Prior Art ..................................39
`1.
`Embodiments with a GRIN Lens ..............................................47
`2.
`Sparks ..................................................................................................53
`
`Lin ........................................................................................................56
`
`Dueck ...................................................................................................58
`
`B.
`
`C.
`
`D.
`
`E.
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`Case IPR2015-00731
`Patent RE42,368
`VIII.THE COMBINATION WOULD NOT HAVE BEEN OBVIOUS .................60
`
`A.
`
`Petitioner’s Proposed Combination Would Have Only Been
`Done Through Impermissible Hindsight .............................................60
`
`1.
`2.
`3.
`
`Petitioner Relies on Multiple Embodiments of Bouevitch .......61
`Petitioner then Relies on Sparks and Lin ..................................63
`A POSA Would Have Had No Motivation to Combine
`the References Absent Hindsight ..............................................64
`A POSA Would Not Have Needed a Two-Axis Mirror in
`Bouevitch to Perform Switching and Power Control ...............69
`Bouevitch Teaches Away from Misalignment for Power
`Control .................................................................................................70
`
`4.
`
`Bouevitch and Sparks Use Different Methods to Control
`Power ...................................................................................................77
`
`B.
`
`C.
`
`D. Dueck’s Ruled Diffraction Grating is Incompatible with
`Bouevitch .............................................................................................79
`
`IX. BOUEVITCH DOES NOT HAVE ALL OF THE CLAIMED
`PORTS ...............................................................................................................81
`
`A.
`
`B.
`
`C.
`
`Fiber Collimators, Providing an Input Port and a Plurality of
`Output Ports .........................................................................................82
`
`Bouevitch Does Not Teach Three Ports as Ports That are
`Claimed in the ’368 Patent ..................................................................84
`
`The ’368 Patent’s Provisional Application is Consistent with
`the Construction that the Claimed Ports are Not Circulator
`Ports .....................................................................................................95
`
`X. PETITIONER HAS NOT SHOWN MICROMIRRORS
`PIVOTABLE ABOUT TWO AXES AND CONTINUOUSLY
`CONTROLLABLE ............................................................................................98
`
`XI. INDUSTRY ADOPTION ................................................................................103
`
`A.
`
`The Industry Recognized these Advantages .....................................103
`
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`Case IPR2015-00731
`Patent RE42,368
`Experts, Including Petitioner’s Expert, Adopted Capella’s
`ROADM Configuration in Their Research .......................................104
`
`B.
`
`XII.REFERENCES IN PROSECUTION ..............................................................110
`
`XIII.CONCLUSION ..............................................................................................112
`
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`Case IPR2015-00731
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`I, Dr. Alexander V. Sergienko, declare as follows:
`
`
`INTRODUCTION
`
`I.
`1. My name is Alexander V. Sergienko. Capella Photonics, Inc. has retained
`
`me as an expert witness. I have been asked to provide my expert opinion on the
`
`validity of claims 1-6, 9-13, and 15-22 of U.S. Patent No. RE42,368 to Chen et al.
`
`(“’368 patent”).
`
`2.
`
`I am being compensated for my work at a rate of $400 per hour. My
`
`compensation is not contingent upon and in no way affects the substance of my
`
`testimony.
`
`II. QUALIFICATIONS
`I received my Ph.D. in Physics from Moscow State University in 1987 and
`3.
`
`my Master of Science Degree in Physics from Moscow State University in 1981.
`
`4.
`
`I am currently a full professor at Boston University where I hold joint
`
`appointments in the Photonics Center, the Department of Electrical and Computer
`
`Engineering, and the Department of Physics. My expertise and research interests
`
`include optics, photonics, quantum physics, laser physics, nonlinear optics, and
`
`precise optical measurement in telecommunication and optical engineering.
`
`5.
`
`I have experience and familiarity with the technical areas involved in this
`
`case. With over 30 years of research experience in the field of optics, I have
`
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`Case IPR2015-00731
`Patent RE42,368
`studied and worked with optical components such as those at issue in this case. For
`
`example, during my tenure as a Director of the Quantum Communication and
`
`Measurement Laboratory at the Boston University Photonics Center, I developed
`
`quantum optical technologies for high-resolution evaluation of optical device
`
`parameters (e.g., fibers, switches, and amplifiers). With this research, I have
`
`evaluated the differences in wavelength selective switches produced by
`
`commercial vendors. I have thus studied switching technologies such as
`
`microelectromechanical (“MEMS”) mirrors, liquid crystal (“LC”), combined
`
`MEMS+LC, and liquid crystal on silicon (“LCOS”).
`
`6.
`
`For more than a decade, my focus has been on high-resolution measurement
`
`of polarization mode dispersion (“PMD”) in modern wavelength selective switches
`
`operating in 40 Gb/s and 100 Gb/c telecommunication reconfigurable optical add-
`
`drop multiplexer networks. I have developed measurement technologies that are
`
`based on the use of quantum properties of light and enable measurement of PMD
`
`in discrete telecommunication devices, fibers, and switches with a superior
`
`resolution of < 1fs. For details on my research regarding high-resolution
`
`measurement of PMD, see, e.g., A. Fraine, D.S. Simon, O. Minaeva, R. Egorov,
`
`and A.V. Sergienko, Precise Evaluation of Polarization Mode Dispersion by
`
`Separation of Even- and Odd-Order Effects in Quantum Interferometry, OPTICS
`
`EXPRESS, v. 19, no. 21, 22820 (2011), attached as Exhibit 2019.
`
`
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`Case IPR2015-00731
`Patent RE42,368
`I have published 132 technical papers in research journals in the area of
`
`7.
`
`photonics, physics, and optical technology. Several of these research journals
`
`include: Nature Communications; Journal of the Optical Society of America;
`
`Physical Review Letters; and Physical Review A. I have presented more than 300
`
`research papers at major international research conferences. I have contributed 7
`
`book chapters on precise optical measurement and quantum optics. I have also
`
`served as the sole editor of a book titled Quantum Communications and
`
`Cryptography.
`
`8.
`
`I have taught courses in optical measurement, quantum optics, photonics,
`
`electrical circuit theory, and analog electronics. I have also been an advisor to
`
`graduate students researching various subjects in physics, electrical engineering,
`
`and photonics.
`
`9.
`
`I am a Fellow of the Optical Society of America (“OSA”) (<10% of total
`
`OSA members) and have been a lead of Quantum Computing and Communication
`
`Technical Group at OSA for several years. I am a member of the American
`
`Physical Society and a member of IEEE.
`
`10. From 1990 to 1996, I worked for the University of Maryland and the
`
`National Institute of Standards and Technology (“NIST”). While at NIST, I
`
`developed several novel optical measurement technologies that outperformed
`
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`Patent RE42,368
`existing conventional approaches both in resolution and in accuracy. In 1996, I
`
`joined the Photonics Center and the Department of Electrical and Computer
`
`Engineering at Boston University. I since have been a member of the Boston
`
`University faculty.
`
`11. My curriculum vitae contains further details on my education, experience,
`
`publications, patents, and other qualifications. A copy is provided as Exhibit 2023.
`
`III.
`12.
`
`INFORMATION CONSIDERED FOR THIS DECLARATION
`
`I have been asked to provide a technical review, analysis, insights, and
`
`opinions. My technical review, analysis, insights, and opinions are based on over
`
`30 years of education, research, and experience, as well as my study of relevant
`
`materials.
`
`13.
`
`I have reviewed and am familiar with the ’368 patent specification, claims,
`
`and prosecution history. I understand that the ’368 patent claims the benefit of U.S.
`
`Provisional App. No. 60/277,217 (“’217 provisional”), filed on March 19, 2001.
`
`14.
`
`I have reviewed and am familiar with the Petition for Inter Partes Review
`
`(Paper 1, “Petition”), the Patent Owner Preliminary Response (Paper 7, “POPR”),
`
`and the Board’s Decision to Institute Inter Partes Review (Paper 8, “Decision”).
`
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`Case IPR2015-00731
`Patent RE42,368
`I am aware that in addition to IPR2015-00731, the ’368 patent is at issue in
`
`15.
`
`the following inter partes review proceedings: IPR2014-01166; IPR2015-00726;
`
`IPR2015-00816; IPR2015-01958; and IPR2015-01969. I am also aware that the
`
`’368 patent is at issue in district court litigation.
`
`16.
`
`I have reviewed the declarations of Mr. Sheldon McLaughlin (Ex. 1028,
`
`“McLaughlin Declaration”) and Dr. Dan Marom (Ex. 1029, “Marom
`
`Declaration”).
`
`17.
`
`I was present during the depositions of Dr. Marom and Mr. McLaughlin.
`
`18.
`
`I have reviewed and am familiar with the following listed references. The
`
`references are true and accurate copies of what they appear to be. I may rely upon
`
`these materials to respond to arguments raised by Petitioner.
`
`Reference
`Exhibit
`U.S. Patent No. RE42,368 to Chen et al.
`1001
`Prosecution File History for U.S. Patent No. RE42,368.
`1002
`1003
`U.S. Patent No. 6,498,872 to Bouevitch et al.
`1004
`U.S. Patent No. 6,625,340 to Sparks et al.
`1005 Max Born & Emil Wolf, Principles of Optics v-viii, 615-19
`(Pergammon Press, 6th ed. 1984) (Excerpts).
`U.S. Patent No. 6,798,992 to Bishop et al.
`U.S. Patent No. 6,507,421 to Bishop et al.
`U.S. Provisional Patent App. No. 60/277,217
`U.S. Patent No. 6,253,001 to Hoen.
`
`1006
`1007
`1008
`1009
`
`
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`Case IPR2015-00731
`Patent RE42,368
`
`Exhibit
`1010
`1011
`
`1012
`1013
`1014
`1015
`
`1016
`1017
`1018
`1019
`
`Reference
`U.S. Patent No. 5,661,591 to Lin et al.
`C. R. Doerr et al., An Automatic 40-Wavelength Channelized
`Equalizer, 12 IEEE Photonics Tech. Letters, no. 9, 1195 (2000).
`U.S. Patent No. 5,936,752 to Bishop et al.
`Servo / Servomechanism, Dictionary.com (2014).
`Feedback, Dictionary.com (2014).
`Joseph E. Ford et al., Wavelength Add-Drop Switching Using Tilting
`Micromirrors, 17 J. Lightwave Tech., no. 5, 904 (1999).
`U.S. Patent No. 6,069,719 to Mizrahi.
`U.S. Patent No. 6,204,946 to Aksyuk et al.
`U.S. Patent App. Pub. No. 2002/0105692 to Lauder et al.
`C. R. Giles et al., Reconfigurable 16-Channel WDM DROP Module
`Using Silicon MEMS Optical Switches, 11 IEEE Photonics Tech.
`Letters, no. 1, 63 (1999).
`Andrew S. Dewa et al., Development of a Silicon Two-Axis
`Micromirror for an Optical Cross-Connect, 21 Applied Optics, no. 15,
`2671 (1982).
`U.S. Patent No. 6,011,884 to Dueck et al.
`U.S. Patent No. 6,243,507 to Goldstein et al.
`U.S. Patent No. 6,567,574 to Ma et al.
`U.S. Patent No. 6,256,430 to Jin et al.
`U.S. Patent No. 6,631,222 to Wagener et al.
`U.S. Patent No. 5,875,272 to Kewitsch et al.
`U.S. Patent No. 6,285,500 to Ranalli et al.
`Declaration of Mr. Sheldon McLaughlin
`Declaration of Dr. Dan Marom from IPR2014-01276.
`James A. Walker, Fabrication of a Mechanical Antireflection Switch
`for Fiber-to-the-Home Systems, 5 J. Microelectromechanical Systems,
`no. 1, 45 (1996).
`U.S. Patent No. 5,414,540 to Patel et al.
`1031
`1032 Michael S. Borella et al., Optical Components for WDM Lightwave
`Networks, 85 Proceedings of the IEEE, no. 8, 1274 (1997).
`
`1020
`
`1021
`1022
`1023
`1024
`1025
`1026
`1027
`1028
`1029
`1030
`
`
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`Case IPR2015-00731
`Patent RE42,368
`
`Exhibit
`1033
`1034
`
`1035
`
`1036
`2002
`
`2004
`2005
`2006
`
`Reference
`U.S. Patent No. 6,928,244 to Goldstein et al.
`Steffen Kurth et al., Silicon Mirrors and Micromirror Arrays for
`Spatial Laser Beam Modulation, A 66 Sensors and Actuators, 76
`(1998).
`C. Randy Giles & Magaly Spector, The Wavelength Add/Drop
`Multiplexer for Lightwave Communication Networks, Bell Labs Tech.
`J. (1999).
`U.S. Patent No. 5,872,880 to Maynard.
`Capella Photonics Launches Dynamically Reconfigurable Wavelength
`Routing Subsystems, Offering Unprecedented Operating Cost Savings
`and Flexibility for Telecom Service Providers, Business Wire (June 2,
`2003, 8:16 AM),
`http://www.businesswire.com/news/home/20030602005554/en/Capell
`a-Photonics-Launches-Dynamically-Reconfigurable-Wavelength-
`Routing.
`2003 WavePath 4500 Product Brief, Capella,
`http://www.capellainc.com/downloads/WavePath%204500%20Produc
`t%20Brief%20030206B.pdf.
`U.S. Provisional Patent Application No. 60/183,155
`Deposition Transcript of Dan M. Marom, Ph.D.
`Benjamin B. Dingel & Achyut Dutta, Photonic Add-Drop Multiplexing
`Perspective for Next Generation Optical Networks, 4532 SPIE 394
`(2001).
`Tze-Wei Yeow, K. L. Eddie Law, & Andrew Goldenberg, MEMS
`Optical Switches, 39 IEEE Comm. I Mag. no. 11, 158 (2001).
`Clifford Holliday, Components for R-OADMs ’05 (B & C Consulting
`Services & IGI Consulting Inc. 2005) (Excerpts).
`Patrick B. Chu et al., MEMS: the Path to Large Optical
`Crossconnects, 40 IEEE Comm. I Mag. no. 3, 80 (2002).
`Clifford Holliday, Switching the Lightwave: OXC’s – The Centerpiece
`of All Optical Network (IGI Consulting Inc. & B & C Consulting
`Services 2001) (Excerpts).
`An Vu Tran et al., Reconfigurable Multichannel Optical Add-Drop
`Multiplexers Incorporating Eight-Port Optical Circulators and Fiber
`Bragg Gratings, 13 Photonics Tech. Letters, IEEE, no. 10, 1100
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`
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`Case IPR2015-00731
`Patent RE42,368
`
`Reference
`
`Exhibit
`
`2012
`
`2017
`2018
`2019
`
`2020
`
`2024
`
`2025
`
`(2001).
`Jungho Kim & Byoungho Lee, Bidirectional Wavelength Add-Drop
`Multiplexer Using Multiport Optical Circulators and Fiber Bragg
`Gratings, 12 IEEE Photonics Tech. Letters no. 5, 561 (2000).
`U.S. Patent No. 6,984,917 to Greywall & Marom.
`2013
`U.S. Patent No. 6,657,770 to Marom et al.
`2014
`2016 Max Born & Emil Wolf, Principles of Optics (Cambridge Univ. Press,
`6th Corrected Ed. 1986) (Excerpts).
`U.S. Patent No. 6,543,286 to Garverick et al.
`U.S. Patent No. 5,629,790 to Neukermans et al.
`Fraine, D.S. Simon, O. Minaeva, R. Egorov, and A.V. Sergienko,
`Precise evaluation of polarization mode dispersion by separation of
`even- and odd-order effects in quantum interferometry, Optics Express
`v. 19, no. 21, 22820 (2011).
`Abdul Al-Azzawi, Fiber Optics: Principles and Practices (CRC Press
`2006).
`2021 Metallic Coatings, Eksma Optics, available at
`http://eksmaoptics.com/optical-components/coatings/metallic-
`coatings/.
`Network Strategy Partners, LLC, The Business Case for ROADM
`Technology (2006), available at
`https://web.archive.org/web/20130605173554/http://www.cisco.com/e
`n/US/prod/collateral/optical/ps5724/ps2006/prod_white_paper0900aec
`d8052b792.pdf.
`Herzel Laor et al., Construction and Performance of a 576x576 Single-
`Stage OXC, in 2 IEEE Lasers and Electro-Optics Society 1999 12th
`Annual Meeting, at 481 (1999).
`2026
`U.S. Patent No. 6,798,941 to Smith et al.
`2027 Ming C. Wu, Olav Solgaard, & Joseph E. Ford, Optical MEMS for
`Lightwave Communication, 24 J. Lightwave Tech. 4433 (2006).
`U.S. Patent No. 6,178,284 to Bergmann & Joseph E. Ford et al.
`U.S. Patent No. 6,178,033 to Joseph E. Ford et al.
`U.S. Patent No. 6,859,573 to Bouevitch et al.
`J. E. Ford, Optical MEMS: Legacy of the telecom boom, Solid-State
`
`2028
`2029
`2030
`2031
`
`
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`Case IPR2015-00731
`Patent RE42,368
`
`Exhibit
`
`2032
`2033
`2034
`
`
`
`Reference
`Sensor, Actuator and Microsystems Workshop, Hilton Head, SC, Jun.
`6-10 (2004).
`Deposition Transcript of Mr. Sheldon McLaughlin
`U.S. Patent No. 7,676,126 to McLaughlin et al.
`U.S. Patent No. 8,233,794 to Colbourne & McLaughlin et al.
`
`19. This declaration represents only the opinions I have formed to date. I may
`
`consider additional documents as they become available or other documents that
`
`are necessary to form my opinions. I reserve the right to revise, supplement, or
`
`amend my opinions based on new information and on my continuing analysis.
`
`IV. OVERVIEW OF THE LAW USED FOR THIS DECLARATION
`20. When considering the ’368 patent and stating my opinions, I am relying on
`
`legal principles that have been explained to me by counsel.
`
`21.
`
`I understand that for a claim to be found patentable, the claims must be,
`
`among other requirements, nonobvious from what was known at the time of the
`
`invention.
`
`22.
`
`I understand that the information that is used to evaluate whether a claim is
`
`nonobvious is referred to as prior art.
`
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`I understand that in this proceeding the Petitioner has the burden of proving
`
`23.
`
`that each claim element of the challenged claims is rendered obvious by the alleged
`
`prior art references.
`
`A. Level of Skill in the Art
`I have been asked to consider the level of ordinary skill in the art that
`
`24.
`
`someone would have had in 2001. With over 30 years of experience in physics and
`
`optical communications, I am well informed with the level of ordinary skill, which
`
`takes into consideration:
`
`• Levels of education and experience of persons working in the field;
`
`• Types of problems encountered in the field; and
`
`• Sophistication of the technology.
`
`
`
`25. Based on the technologies disclosed in the ’368 patent and the
`
`considerations listed above, a person having ordinary skill in the art (“POSA”)
`
`would have had a Master of Science degree in Electrical Engineering, Physics, or
`
`an equivalent field, as well as at least three years of industry experience designing
`
`optical systems. Less education could be compensated by more direct experience
`
`and vice versa.
`
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`26. Throughout my declaration, even if I discuss my analysis in the present
`
`tense, I am always making my determinations based on what a POSA would have
`
`known at the time of the invention. Additionally, throughout my declaration, even
`
`if I discuss something stating “I,” I am referring to a POSA’s understanding at the
`
`time of the invention.
`
`B. Obviousness
`I understand that a patent claim is invalid if the claims would have been
`
`27.
`
`obvious to a POSA at the time of the invention. I understand that the obviousness
`
`inquiry should not be done in hindsight but rather from the perspective of a POSA
`
`as of the time of the invention.
`
`28.
`
`I understand that to obtain a patent, the claims must have, as of the time of
`
`the invention, been nonobvious in view of the prior art.
`
`29.
`
`I understand that a claim is obvious when the differences between the
`
`subject matter sought to be patented and the prior art are such that the subject
`
`matter as a whole would have been obvious to a POSA at the time the invention.
`
`30.
`
`I understand that certain objective indicia can be important evidence
`
`regarding whether a patent is obvious. Such indicia include: industry acceptance;
`
`commercial success of products covered by the patent claims; long-felt need for
`
`the invention; failed attempts by others to make the invention; copying of the
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`invention by others in the field; unexpected results achieved by the invention as
`
`compared to the closest prior art; praise of the invention by the infringer or others
`
`in the field; taking of licenses under the patent by others; expressions of surprise
`
`by experts and those skilled in the art at making the invention; and the patentee
`
`proceeded contrary to the accepted wisdom of the prior art.
`
`31.
`
`I understand that obviousness can be established by combining multiple
`
`prior art references to meet each and every claim element, but I also understand
`
`that a proposed combination of references can be susceptible to hindsight bias.
`
`When it appears hindsight bias is being used, I understand the modification or
`
`combination is not considered obvious.
`
`32.
`
`I understand that exemplary rationales that may support a conclusion of
`
`obviousness include: combining prior art elements according to known methods to
`
`yield predictable results; simple substitutions of one known element for another to
`
`obtain predictable results; using a known technique to improve similar devices in
`
`the same way; applying a known technique to a known device ready for
`
`improvement to yield predicable results; choosing from a finite number of
`
`identified, predicable solutions, with a reasonable expectation of success; known
`
`work in one field of endeavor may prompt variations of it for use in either the same
`
`field or a different one based on design incentives or other market forces if the
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`variations are predicable to one of ordinary skill in the art; and some teaching,
`
`suggestion, or motivation in the prior art that would have led one of ordinary skill
`
`to modify the prior art reference or to combine prior art teachings to arrive at the
`
`claimed invention.
`
`33.
`
`I understand that if the proposed combination results in one or both of the
`
`references being unsatisfactory for its intended purpose, a POSA would not have
`
`had a motivation to combine or modify the reference(s).
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`34.
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`I understand that if the proposed combination changes the principle of
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`operation of one or both references, a POSA would not have had a motivation to
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`combine or modify the reference(s).
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`35.
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`I understand that teaching away, e.g., discouragement from making the
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`proposed modification, is strong evidence that the references are not combinable. I
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`also understand that a disclosure of more than one alternative does not necessarily
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`constitute a teaching away.
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`36.
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`I understand that the combination does not need to result in the most
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`desirable embodiment, but if the proposed combination does not have a reasonable
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`expectation of success at the time of the invention, a POSA would not have a
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`teaching, suggestion, or motivation to combine the references.
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`Case IPR2015-00731
`Patent RE42,368
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`C. Claim Construction
`I understand that in this inter partes review the claims must be given their
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`37.
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`broadest reasonable interpretation, but that interpretation must be consistent with
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`the specification.
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`38.
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`I understand that if there are specific statements in the specification define
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`the invention, those statements are strong evidence of a definition for a term. In
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`this declaration, I have used the broadest reasonable interpretation standard when
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`interpreting the claim terms.
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`V.
`39.
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`INSTITUTED GROUNDS
`I understand that in IPR2015-00731, the Board instituted inter partes review
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`of claims 1-6, 9-13, and 15-22 of the ’368 patent in the manner shown in the table
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`below.
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`Claims
`1-6, 9-11, 13,
`and 15-22
`12
`
`Type
`Obviousness
`§ 103
`Obviousness
`§ 103
`
`Primary Reference Secondary References
`Sparks and Lin
`Bouevitch
`
`Bouevitch
`
`Sparks, Lin, and Dueck
`
`VI. TECHNOLOGY
`A. General Overview of OADMs, COADMs, and ROADMs
`40. Telecommunication companies use optical fiber to transmit and receive
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`communication signals for the telephone, cable television, and the Internet.
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`Various wavelengths of light (i.e., channels) simultaneously travel along an optical
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`fiber. Each wavelength carries data intended for a specific location. To serve many
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`locations, optical fibers form a network spanning across the country. Optical fibers
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`intersect at nodes, and optical switching devices at the nodes redirect signals in the
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`network, add signals to the network, and drop signals from the network. The ’368
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`patent is directed to these switching devices. (See, e.g., Ex. 1001, Abstract.)
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`41. Before the ’368 patented technology, these switching devices were
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`commonly called optical add drop multiplexers (“OADMs”). (See id. at 1:24-28.)
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`The figure (reproduced below) shows how OADMs interconnected different
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`optical networks. (See Ex. 1008, FIG. 2.) The network, as shown in the figure
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`below, formed a ring network.
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`(Id.)
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`In reference to the figure reproduced above, an OADM could connect a wide
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`42.
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`area (or long haul) network to a metropolitan area network. Another OADM could
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`connect a metropolitan area network to a local access network, for example, a local
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`network in a neighborhood. During switching, OADMs separated all wavelengths
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`of light entering the device and routed the wavelengths of light to different
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`endpoints, depending on the OADM’s configuration. An OADM, for example,
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`switched wavelengths from optical fibers of the wide area network to optical fibers
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`of a metro area network. An OADM could also switch wavelengths from optical
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`fibers of a metro area network to optical fibers of a wide area network.
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`43. These OADMs were also called configurable optical add drop multiplexers
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`(“COADMs”). (See Ex. 1003, Abstract.) These switches were configurable in the
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`sense that engineers could manually adjust the switches. (See Ex. 2024, pp. 3-4.)
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`But compared to today’s technology, these OADMs were fixed. (See id. at 3-5; Ex.
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`1001, 3:22-23 (“The wavelength routing is intrinsically static, rendering it difficult
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`to dynamically reconfigure these OADMs.”).) These switches were fixed because
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`to make any change to the system, experienced engineers needed to manually
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`readjust the optical configuration. (Ex. 2024, pp. 2-4.) This readjustment was
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`problematic because making adjustments affected the service to the end user, and
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`service providers needed to staff each site with experienced engineers. (See id. at
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`2-4.)
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`44. To improve existing OADMs/COADMs, the inventors of the ’368 patent
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`designed an optical configuration that was dynamic, reconfigurable, and scalable to
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`a large number of channels. (See Ex. 1001, 5:49-6:20.) The invention employed
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`“an array of fiber collimators serving as an input port and a plurality of output
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`ports; a wavelength-separator; a beam-focuser; and an array of channel
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`micromirrors.” (Id. at 3:54-58.) This optical configuration would become known in
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`the industry as a reconfigurable optical add drop multiplexer (“ROADM”). (See
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`Id. at Title; Ex. 2024, p. 3.)
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`45.
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`In 2006, over five years after the effective filing date of the ’368 patent, the
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`industry was still deciding whether to deploy ROADM architectures. (See Ex.
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`2024, p. 1 (“One of the key questions facing service providers is: Should we deploy
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`a Fixed OADM or a Reconfigurable OADM (ROADM) DWDM network
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`architecture in our metro areas?”) (emphasis in original).) However, as the
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`existing optical ring networks evolved to optical mesh networks, optical switches
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`with more than two ports were necessary to route different wavelengths to multiple
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`nodes within the mesh network. (See Ex. 2027, p. 4439.) To meet this need, the
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`industry adopted the ROADM architecture because a larger port count (e.g., N ≥ 8)
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`was “necessary to provide two-way links to three or four adjacent neighboring
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`nodes. (See id.)
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`46. The inventors of the ’368 patent were well ahead of the industry. Capella
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`was the first company to offer a 10-fiber port optical switch. (See Ex. 2008, p. 61
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`(The same year the USPTO issued the patent that led to the ’368 reissue, a
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`consultant report said, “Capella is the only company to offer a 10-fiber port
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`solution, i.e., one input, one express output, and 8 service ports.”). Further, the
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`optical configuration disclosed in the ’368 patent paved the path to turn the then-
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`existing ring networks into the mesh networks we have today. (See Ex. 2027, p.
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`4439 (“As optical networks evolve from a simple ring topology with WADM
`
`nodes to optical mesh networks, WSSs with more than one output port are needed
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`to link the node to three or four neighboring nodes with each link carrying two-
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`way traffic . . . . A larger port count (N ≥ 8) is desirable for mesh optical networks,
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`where it is necessary to provide two-way links to three of four adjacent
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`neighboring nodes.”).)
`
`B. Use of Circulators at the Time of the Invention
`47. At the time of the ’678 patent’s effective filing date, the demand for
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`bandwidth was increasing, even as much as 400% per year. (Ex. 2010, p. 12.) The
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`growth is partially attributed to an increasing popularity of bandwidth-heavy
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`applications such as video streams. With an increase in demand, the ability to
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`effectively switch data streams having multiple wavelengths, while
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`accommodating an increase in optical input and output ports, became critical. As
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`researchers published in 2001, having an optical switch scalable to a large number
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`of channels was the number one concern for fiber optic carriers.
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`The ability to incorporate more port counts when needed is the
`number one concern of carriers. The increasing amount of data traffic
`in communication networks, especially for long-distance carriers, will
`demand even more wavelengths to be deployed. Therefore, optical
`switches need the capability to scale in order to manipulate the
`increased number of wavelengths. MEMS-based optical switches
`must incorporate this key feature to gain widespread acceptance of the
`carriers.
`
`(Ex. 2007, p. 163.)
`
`48. Many OADMs at the time of the invention were limited to two input/output
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`ports. (See, e.g., Ex. 1003, 14:27-33 (disclosing a 2x2 bypass configuration having
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`two input/output ports); Ex. 1017, FIG. 4.) To separate input and output signals on
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`each port, these OADMs used peripheral devices, such as optical circulators,
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`coupled to and downstream from the ports. (See, e.g., Ex. 1001, 1:63-2:64
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`(disclosing sever