UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`LUMENTUM HOLDINGS, INC., LUMENTUM, INC.
`AND LUMENTUM OPERATIONS, LLC
`Petitioners
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`
`
`Case No. IPR2015-00739
`
`Patent No. RE 42,678
`
`__________________
`
`
`
`PETITIONERS’ REPLY
`TO PATENT OWNER RESPONSE
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`

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`Case No. IPR2015-00739
`Petitioners’ Reply to Patent Owner Response
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`
`Table of Contents
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`I. INTRODUCTION ............................................................................................. 1
`II. RESPONSES TO PATENT OWNER’S ARGUMENTS............................... 1
`A. It Was Obvious and Not Hindsight to Combine Features of
`Bouevitch, Sparks, Lin and Dueck [Corresponds to PO Response §
`III.A.] .......................................................................................................... 1
`1. Petitioners Do Not Combine Disparate Embodiments of
`Bouevitch ............................................................................................... 1
`2. It Was Obvious to Combine Sparks Two-Axis Mirrors with the
`Fig. 11 Embodiment of Bouevitch ........................................................ 3
`B. Bouevitch Does Not Teach Away From Misalignment for Power
`Control [Corresponds to PO Response § III.B.] ......................................... 4
`C. Bouevitch and Sparks are Not Incompatible Technologies
`[Corresponds to PO Response § III.C.] ...................................................... 6
`D. Bouevitch and Dueck are Not Incompatible Technologies
`[Corresponds to PO Response § III.D.] ...................................................... 7
`E. Bouevitch Teaches Multiple Fiber Collimators Providing Input,
`Output and Other Ports [Corresponds to PO Response § III.E.] ................ 9
`1. Bouevitch’s Collimators “Provide” the Ports ....................................... 9
`a. The Ordinary Meaning of “Providing” ............................................ 9
`b. Bouevitch’s Microlenses “Provide” the Ports ................................ 10
`c. The Claims Do Not Recite “Collimator Ports” .............................. 13
`2. “Ports” Include Circulator Ports .......................................................... 14
`3. The Patentee Did Not Disavow Circulator Ports ................................ 14
`a. PO’s Evidence Does Not Meet the High Standard for
`Disavowal ....................................................................................... 14
`b. The ’678 Patent Expressly Encompasses Circulators .................... 15
`c. The Claims’ Preambles Do Not Exclude Circulators .................... 16
`F. Bouevitch Reflects Light Into the Ports [Corresponds to PO
`Response § III.F.] ................................................................................ 16
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`G. Continuous Two-Axis Mirror Control Was Obvious [Corresponds
`to PO Response § III.G.] .......................................................................... 17
`1. PO Mischaracterizes the Challenge Bases of the Petition .................. 17
`2. Construction of “Continuously Controllable” ..................................... 18
`3. Sparks Teaches Continuous Control ................................................... 18
`4. Lin Teaches Continuous Control......................................................... 19
`H. It Was Obvious to Combine Sparks and Lin [Corresponds to PO
`Response § III.H.] ..................................................................................... 20
`I. It Was Obvious to Use Sparks’ Servo Control in Bouevitch
`[Corresponds to PO Response § III.I.] ..................................................... 22
`J. PO’s Evidence of “Industry Adoption” Does Not Demonstrate
`Secondary Considerations [Corresponds to PO Response § IV.] ............ 23
`III. CONCLUSION ................................................................................................ 25
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`Case No. IPR2015-00739
`Petitioners’ Reply to Patent Owner Response
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`List of Exhibits Cited in this Reply
`Exhibit 1051: June 30, 2015 Deposition transcript of Dr. Alexander V.Sergienko
`from related proceeding IPR2014-01276
`
`Exhibit 1052: Excerpts from Webster’s Ninth New Collegiate Dictionary,
`(Miriam-Webster, Inc., 1991) (“providing” and “reflect”)
`
`Exhibit 1053: Excerpts from Abdul Al-Azzawi, Fibre Optics Principles and
`Practices (CRC Press, Taylor & Francis Group, 2007) (containing
`additional excerpts to the copy produced by Patent Owner at Ex.
`2020
`
`Exhibit 1054: Excerpts from Rajiv Ranaswami & Kumar N. Sivarajan, Optical
`Networks, A Practical Perspective, (2nd Ex., Morgan Kaufmann
`Publishers, 2002)
`Petitioner also incorporates herein all exhibits from the IPR2015-00739 petition
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`Case No. IPR2015-00739
`Petitioners’ Reply to Patent Owner Response
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`I.
`
`
`INTRODUCTION
`The arguments presented by Patent Owner (“PO”) in its Patent Owner
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`Response (“PO Response”) do not warrant any change to the Board’s
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`determination in the Decision (Paper no. 7), ordering inter partes review of
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`challenged claims 1-4, 9, 10, 13, 17, 19-23, 27, 29, 44-46, 53 and 61-65. All of the
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`challenged claims are obvious and unpatentable.
`
`Petitioners point out that the issues in this proceeding are substantially the
`
`same as those in Inter Partes Review No. 2014-01276, a related proceeding in
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`which the Board issued a Final Written Decision on February 17, 2016, (Paper 40)
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`finding the identical set of challenged claims unpatentable over combinations of
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`Bouevitch, Smith, Lin and Dueck. The challenge bases in the present proceeding
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`are similar to those in Inter Partes Review No. 2014-01276, except that Petitioners
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`rely upon Sparks instead of Smith for disclosure of a two-axis MEMS mirror that
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`is used for both switching and power control in optical switching devices.
`
`II. RESPONSES TO PATENT OWNER’S ARGUMENTS
`
`A.
`
`1.
`
`It Was Obvious and Not Hindsight to Combine Features of
`Bouevitch, Sparks, Lin and Dueck [Corresponds to PO Response
`§ III.A.]
`Petitioners Do Not Combine Disparate Embodiments of Bouevitch
`
`
`
`Petitioners rely only on the Fig. 11 embodiment of Bouevitch in connection
`
`with the challenge bases asserted in the Petition. In particular, and contrary to the
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`position asserted in the PO Response at page 17, Petitioners do not rely upon either
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`the Fig. 1 or the Fig. 5 embodiments of Bouevitch for the claim 1 element “to
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`control the power of said received spectral channels.”
`
`
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`Bouevitch Fig. 11 and the associated description include all of the relevant
`
`disclosure. The combination of Bouevitch and Sparks substitutes only the two-axis
`
`MEMS modifying means of Sparks to replace the one-axis mirrors of Bouevitch
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`Fig. 11. In that combination, Bouevitch Fig. 11 discloses a configurable optical
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`add/drop multiplexer (COADM) using MEMS mirrors that tilt in one axis for
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`switching. Sparks discloses MEMS mirrors that move about two axes as a
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`substitute for one-axis mirrors for both switching and power control. (Petition, pp.
`
`33-37.) “The PHOSITA would be motivated to use the 2-axis system of Sparks
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`within the system of Bouevitch for power control.” (Petition, p. 36.)
`
`The Petition does include some discussion of the power control features in
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`other embodiments of Bouevitch. (See, e.g., pg. 35, citing to col. 5, ll. 16-46 and
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`col. 7, ll. 34-37 that describe the Figs. 1 and 5 embodiments, respectively.)
`
`However, this discussion is presented for purposes of supporting the rationale to
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`combine Bouevitch and Sparks, and is ancillary to the asserted challenge bases.
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`
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`For this reason, and since the challenge bases do not rely upon the other
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`Bouevitch embodiments, there was no reason for Petitioners to articulate a
`
`rationale for combining the different Bouevitch embodiments.
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`2.
`
`It Was Obvious to Combine Sparks’ Two-Axis Mirrors with the Fig.
`11 Embodiment of Bouevitch
`
`
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`PO’s arguments that a PHOSITA "would not have used a more complex
`
`two-axis mirror [of Sparks] to achieve the same function as a one-axis mirror [of
`
`Bouevitch]” (PO Response, pp. 18-20) and that “[r]eplacing the single-axis mirror
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`in Bouevitch with the two-axis mirror of Sparks is not a simple substitution” (PO
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`Response, pp. 20-24) fail because they are based on an incorrect test for
`
`obviousness. “The test for obviousness is not whether the features of a secondary
`
`reference may be bodily incorporated into the structure of the primary reference.
`
`… Rather, the test is what the combined teaching of those references would have
`
`suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425
`
`(CCPA 1981).
`
`
`
`PO’s arguments about the complexity of Sparks’ two-axis mirrors ignore the
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`benefits provided by those mirrors. Sparks expressly states that an advantage of
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`the optical switches with two-axis mirrors is that attenuation (i.e., power control)
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`can be achieved without incorporating separate attenuators within the system.
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`(See, e.g., Sparks, Ex. 1004, col. 2, ll. 28-30, col. 4, ll. 55-58.) Because these
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`benefits are expressly disclosed by Sparks, they would have been apparent to a
`
`PHOSITA without hindsight.
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`
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`
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`Furthermore, it would have been obvious for a PHOSITA to try Sparks’ two-
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`axis mirrors in Bouevitch. Two-axis mirrors were among a small number of well-
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`known and predictable solutions for beam directing. One-axis and two-axis
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`mirrors were recognized as interchangeable options. And a PHOSITA would have
`
`had a high expectation of success in combining a two-axis mirror with the
`
`Bouevitch device. (McLaughlin Decl., Ex. 1028, ¶ 32.)
`
`
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`PO’s assertion that two-axis mirrors were complex and hard to implement is
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`irrelevant under the proper obviousness test. Petitioners’ expert Mr. McLaughlin
`
`has testified that PHOSITAS were capable of overcoming any problems presented
`
`by these technical issues. (McLaughlin Deposition Transcript, Ex. 2032, pg. 125,
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`ln. 18 – pg. 126, ln. 10; pg. 134, ll. 11-19; pg. 137, ll. 16-23.) PO provides no
`
`persuasive contrary evidence.
`
`B.
`
`Bouevitch Does Not Teach Away From Misalignment for Power
`Control [Corresponds to PO Response § III.B.]
`PO’s argument that Bouevitch teaches away from misalignment for power
`
`
`
`control is wrong. Bouevitch discloses a number of different embodiments. The
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`embodiment of Fig. 11, for example, is described as being designed to operate as a
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`COADM (i.e., a switch). (Ex. 1003, col. 14, ll. 14-16.) The embodiment of Fig. 5
`
`(which includes a MEMS array 155) is said to be “particularly useful” as a DGE
`
`(dynamic gain equalizer, i.e., an attenuator or power controller). (Ex. 1003, col. 7,
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`ll. 23-26.) Yet others such as the embodiment of Fig. 6a can be operated as both a
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`COADM and a DGE. (Ex. 1003, col. 10, ll. 17-28.)
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`
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`Of particular relevance with respect to this issue is the DGE embodiment
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`shown in Fig. 9. The Fig. 9 DGE includes a modifying means 950 that provides
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`variable attenuation (i.e., power control) by selectively reflecting the incident beam
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`“back … at a predetermined angle, generally along a different optical path from
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`which it came” (i.e., by misalignment). (Ex. 1003, col. 12, ll. 55-60.) Although
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`the illustrated embodiment in Fig. 9 includes a modifying means 950 having a
`
`liquid crystal array 930 and a flat mirror 940, Bouevitch expressly states that the
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`modifying means 950 can alternatively comprise a MEMS array. (Ex. 1003, col.
`
`12, ll. 35-39.) The alternative Fig. 9 embodiment having a MEMS array, which is
`
`substantially similar in structure to the COADM of the Fig. 11 embodiment, uses
`
`the MEMS to selectively misalign the beams for purposes of power control. (See,
`
`e.g., McLaughlin Deposition Transcript, Ex. 2032, pg. 105, ln. 6 – pg. 106, ln. 21.)
`
`(See also Deposition Transcript of PO’s expert, Dr. Sergienko, in related
`
`proceeding IPR2014-01276, Ex. 1051, pg. 130, ln. 7 – pg. 131, ln. 6; pg. 145, ll.
`
`11-24.)
`
`
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`In summary, Bouevitch clearly teaches embodiments that use angular
`
`misalignment of the beams to control power. It therefore does not teach away from
`
`misalignment for this purpose. “The prior art’s mere disclosure of more than one
`
`alternative does not constitute a teaching away from any of these alternatives
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`because such disclosure does not criticize, discredit, or otherwise discourage the
`
`solution claimed in the application.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
`
`2004).
`
`C.
`
`Bouevitch and Sparks are Not Incompatible Technologies
`[Corresponds to PO Response § III.C.]
`PO contends that Bouevitch and Sparks are incompatible because they
`
`
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`perform attenuation “at opposite ends of the optical system.” (PO Response, pg.
`
`29.) Specifically, PO asserts that Bouevitch accomplishes power control or
`
`attenuation at the modifying means via polarization based optics or liquid crystal
`
`arrays, whereas Sparks performs attenuation at the output port via misalignment of
`
`the beam. As discussed immediately above in Section II.B., however, a premise of
`
`this contention is wrong. Bouevitch clearly discloses embodiments that perform
`
`power attenuation by angular misalignment of the beam using MEMS mirrors.
`
`Furthermore, as discussed above in Section II.A., the Bouevitch Fig. 11
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`switch includes all the relevant features with the exception of a two-axis mirror
`
`that provides power control. Sparks expressly states that the two-axis mirror
`
`disclosed therein can be used for both switching and power control, and describes
`
`the benefits of using such a mirror for that purpose. (Ex. 1004, Abstract.)
`
`Petitioners’ expert has provided an extensive discussion with a large number of
`
`reasons why a PHOSITA would have found it obvious to substitute the Sparks
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`two-axis mirror for the one-axis mirror of Bouevitch. (Ex. 1028, ¶¶ 30-38.) Those
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`reasons include the fact that it would have been obvious to try that substitution in
`
`view of the small number of other approaches, and the express teachings of Sparks.
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`(Ex. 1028, ¶¶ 32-33.) Petitioners’ expert also testified that the results from this
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`substitution were entirely predictable, and that a PHOSITA would have had a high
`
`expectation of success. (Ex. 1028, ¶¶ 31-32; Ex. 2032, pg. 131, ll. 19-25.)
`
`PO asserts that the modification of Bouevitch in light of Sparks would have
`
`rendered Bouevitch unsatisfactory for its intended purpose because of the alleged
`
`incompatibilities. (PO Response, pg. 29.) That contention, however, is untenable
`
`in view of the reasons and the weight of the contrary evidence discussed above.
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`D.
`
`Bouevitch and Dueck are Not Incompatible Technologies
`[Corresponds to PO Response § III.D.]
`PO’s contention that it would not have been obvious to substitute the ruled
`
`diffraction grating of Dueck into Bouevitch is also untenable. PO’s arguments are
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`based substantially, if not solely, on the angles of the light beams shown in the
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`diagrammatic illustrations of Figs. 1A and 1B of Dueck and Fig. 1 of Bouevitch.
`
`However, neither Dueck nor Bouevitch disclose specific dimensions for those
`
`illustrations, so the associated arguments have little if any merit. It is well-
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`established that arguments of this type cannot be relied upon to invalidate a claim.
`
`See, e.g., Nystrom v. Trex Co., 424 F.3d 1136, 1149 (Fed. Circ. 2005)
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`(“[A]rguments based on drawings not explicitly made to scale in issued patents are
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`unavailing”); Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, 222 F.3d 951, 956
`
`(Fed. Cir. 2000) (“[I]t is well established that patent drawings do not define the
`
`precise proportions of the elements and may not be relied on to show particular
`
`sizes if the specification is completely silent on the issue.”); MPEP § 2125 (“When
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`the reference does not disclose that the drawings are to scale and is silent as to
`
`dimensions, arguments based on measurement of the drawing features are of little
`
`value.”).
`
`Petitioners pointed to Dueck to show that ruled diffraction gratings were one
`
`of a small set of known and interchangeable choices. (Petition, pg. 47; Ex. 1028,
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`¶¶ 101-102.) As discussed above, the obviousness test has no bodily incorporation
`
`requirement. Instead, the test focuses on what the combined teachings of those
`
`references would have suggested to a PHOSITA. In re Keller, 642 F.2d 413, 425
`
`(CCPA 1981). Even assuming arguendo that the particular configuration of the
`
`ruled diffraction grating in Dueck might not have been bodily incorporated into
`
`Bouevitch, a PHOSITA would have been motivated to use a grating of this type
`
`because Dueck teaches the use of a ruled diffraction grating as part of the “best
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`mode” of separating wavelengths in wavelength division multiplexing (WDM)
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`devices, which include Bouevitch and Sparks. (Ex. 1028, ¶ 102.)
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`E.
`
`Bouevitch Teaches Multiple Fiber Collimators Providing Input,
`Output and Other Ports [Corresponds to PO Response § III.E.]
`PO’s contention that Bouevitch does not teach or suggest the ports recited by
`
`the claims is based on its assertions that (1) Bouevitch’s collimators do not
`
`“provide” ports1, (2) the “circulator ports” disclosed in Bouevitch are not the type
`
`of “ports” recited by the claims,2 and (3) the ’678 patent disavows circulator ports.
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`Each of these contentions is addressed below.
`
`1.
`
`
`
`Bouevitch’s Collimators “Provide” the Ports
`
`a.
`
`The Ordinary Meaning of “Providing”
`
`The ordinary and customary meaning of the term “providing” is “to supply
`
`or make available.” (Webster’s Ninth New Collegiate Dictionary, Ex. 1052, pg.
`
`948.) No different definition is provided by the ’678 patent. (See, e.g., Ex. 1001,
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`col. 6, ll. 54-60, col. 10, ll. 29-32.) PO does not offer an express definition of
`
`“providing,” although as discussed below, it implicitly argues that it requires a
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`one-to-one correspondence between collimators and ports. (PO Response, pp. 32-
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`
`1 PO’s “providing” argument does not affect claims 61-65, which do not include
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`that term. Nor do claims 61-65 include the term “collimator.”
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`2 PO does not offer an express definition of the term “port.” Nor does it suggest
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`that the ’678 patent provides an express definition of that term. PO asserts only
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`that the term does not include “circulator ports.”
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`35.) Nor does PO’s expert offer any special meaning for the term “providing.”
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`(See, e.g., Ex. 2022, ¶¶ 168-191.) The plain and ordinary meaning of “providing”
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`as “to supply or make available” should therefore be used in this proceeding.
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`b.
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`Bouevitch’s Microlenses “Provide” the Ports
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`
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`An annotated version of Bouevitch Fig. 11 is reproduced below. Under the
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`dictionary definition of “supply or make available,” microlenses 12a and 12b (“M”
`
`in annotated Fig. 11) are “fiber collimators” that “provide” the claimed input and
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`plurality of output ports.
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`
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`Microlenses such as 12a and 12b are fiber collimators. (McLaughlin Decl.,
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`Ex. 1028, ¶ 43.) In conjunction with waveguide 99a and circulator 80a, the
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`microlens collimators provide an input port “IN” (“A” in annotated Fig. 11). (Ex.
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`1028, ¶ 44.) In conjunction with waveguide 99a and circulator 80a, microlens 12a
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`provides one output port “Out Express” (“E” in annotated Fig. 11). In conjunction
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`with waveguide 99b and circulator 80b, microlens 12b provides a second output
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`port “Out Drop” (“D” in annotated Fig. 11). (Ex. 1028, ¶ 45.) (See also
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`Deposition Transcript of PO’s expert, Dr. Sergienko, in related proceeding
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`IPR2014-01276, Ex. 1051, pg. 240, ln. 19 – pg. 241, ln. 9 (agreeing that
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`microlenses 12a and 12b “helped to provide the functionality of [waveguides] 99a
`
`and 99b”).)
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`
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`PO’s argument that Bouevitch does not disclose fiber collimators that
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`“provide” the ports appears to be based on certain drawing figures in the ’678
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`patent, and an interpretation of that term as requiring a one-to-one correspondence
`
`between the collimators and ports. (See, e.g., PO Response, pg. 35 (“As a result,
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`the system, as described, has one collimator providing one input port and five
`
`collimators providing five output ports.”); pg. 44 (“Bouevitch does not have
`
`collimators providing an input port and output ports.” (emphasis in original)); pg.
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`45 (“Because Bouevitch discloses two microlenses … [it] can at most have two
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`ports.”).) However, that interpretation is at odds with the plain and ordinary
`
`meaning of “providing” that should be applied in this proceeding. Furthermore,
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`any such interpretation would run afoul of the law prohibiting the reading of
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`limitations from the specification into the claims. Liebel-Flarsheim Co. v. Medrad,
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`Inc., 358 F.3d 898, 913 (Fed. Cir. 2004) (“[I]t is improper to read limitations from
`
`a preferred embodiment described in the specification—even if it is the only
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`embodiment—into the claims absent a clear indication in the intrinsic record that
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`patentee intended the claims to be so limited.”)
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`
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`PO’s interpretation of “providing” as requiring a one-to-one correspondence
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`is also at odds with the ’678 patent, as it would exclude the Fig. 9 embodiment of
`
`the provisional application no. 60/277,217 (the “’217 Provisional”) that the ’678
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`patent incorporates by reference. (Ex. 1001, col. 1, ll. 18-19.) Specifically, Fig. 9
`
`of the ’217 Provisional, reproduced below, was one of “[t]hree different OADM
`
`architectures disclosed in the present invention.” (Ex. 1008, pg. 3.)
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`
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`Fig. 9 shows the input and output (i.e., “Add,” “Drop”) ports being supplied or
`
`made available through both the physical ports and circulators. (Id., pg. 3
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`(“Circulators are situated on all of the physical input/output ports, allowing for
`
`two-way optical propagation.”).) The input and output ports of this embodiment of
`
`the ’678 invention are not in a one-to-one relationship with collimators. PO’s
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`interpretation of “providing” is therefore incorrect because it would exclude a
`
`disclosed embodiment. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583
`
`(Fed. Cir. 1996) (“Such an interpretation is rarely, if ever, correct and would
`
`require highly persuasive evidentiary support.”)
`
`c.
`
`The Claims Do Not Recite “Collimator Ports”
`
`
`
`Although PO has not offered an express definition of port (see footnote 2
`
`above), it suggests that the term means “collimator ports.” (See PO Response, pp.
`
`43-44 (“[T]he ’678 patent describes fiber collimators serving as ports.”).)
`
`Petitioners disagree with this suggestion. The terms “input/output ports,” “input
`
`port” and “output ports” are used throughout the ’678 patent specification. (See,
`
`e.g., Ex. 1001, col. 6, ll. 54-63; col. 8, ll. 17-20; col. 9, ll. 44-54.) The
`
`specification uses the term “collimator” separately from the term “port.” (See, e.g.,
`
`Ex. 1001, col. 6, ll. 54-63; col. 9, ll. 44-54.) The ’678 patent therefore does not
`
`equate the term “port” to “collimator.”
`
`Furthermore, and as noted above in footnote 1, the term “collimator” is
`
`nowhere to be found in claims 61-65. (Ex. 1001, claims 61-65.) Because the word
`
`“collimator” is used in other challenged claims, for this additional reason claims
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`61-65 cannot be construed to include that limitation. SRI Int’l v. Matsushita Elec.
`
`Corp., 775 F.2d 1107, 1122 (Fed. Cir. 1985) (“It is settled law that when a patent
`
`claim does not contain a certain limitation and another claim does, that limitation
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`cannot be read into the former claim in determining either validity or
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`infringement.”)
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`2.
`
`“Ports” Include Circulator Ports
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`Bouevitch explicitly refers to the “In,” “In Add,” “Out Drop” and “Out
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`Express” ports of the circulators shown in Fig. 11 as “ports.” (Ex. 1003, col. 14, ll.
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`27-36.) Articles and textbooks use the generic term “port” to define the points at
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`which light enters or comes in, and exits or comes out of, circulators. (Ex. 1053,
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`“Al-Azzawi,” pp. 127-129; Ex. 1054, “Ramaswami,” pp 113, 127.) Petitioners’
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`expert has testified that the ports of the circulator in Fig. 11 correspond to the
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`claimed ports. (Ex. 1028, ¶¶ 41-45.)
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`
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`3.
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`The Patentee Did Not Disavow Circulator Ports
`
`a.
`
`PO’s Evidence Does Not Meet the High Standard for
`Disavowal
`Although a patentee can intentionally disavow the scope of a claim term,
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`that “intention must be clear.” Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460
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`F.3d 1349, 1357 (Fed. Cir. 2006). Such an intention can be demonstrated by
`
`“expressions of manifest exclusion or restriction, representing clear disavowal of
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`claim scope.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed.
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`Cir. 2002).
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`
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`In support of its disavowal argument, PO asserts that both the ’678 patent
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`and the ’217 Provisional “criticized” the use of circulators. (PO Response, pg. 38.)
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`PO’s expert states that the ’678 patent “teaches away from the use of circulators.”
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`(Ex. 2022, ¶ 179.) PO also cites to its own press release and product brochure
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`(Business Wire, Ex. 2002; WavePath, Ex. 2003), and to a publication summarizing
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`products offered by different optical networking equipment providers including
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`Capella (Holliday R-OADMs, Ex. 2008). However, those publications do not even
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`mention collimators. PO’s evidence therefore falls short of the heavy burden
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`required to show disavowal.
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`
`
`
`
`
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`The ’678 Patent Expressly Encompasses Circulators
` b.
`The ’217 Provisional that the ’678 patent incorporates by reference shows
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`that the purported invention encompasses the use of circulators to provide ports.
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`Specifically, that application says that “[t]hree different OADM architectures
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`disclosed in the present invention are shown in Figures 7-9.” (Ex. 1008, pg. 3.)
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`Figure 9 of the ’217 Provisional, reproduced below, shows an embodiment where
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`ports are provided by circulators.
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`Moreover, the ’217 Provisional used the term “add/drop ports” when
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`referring to ports with circulators, and the term “physical input/output ports” for
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`ports without circulators. (Ex. 1008, pg. 3.) But the patentee did not use the word
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`“physical” in connection with the claimed ports. (See e.g., Ex. 1001, claims 1, 21,
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`44, 61.) The patentee did use the terms that the ’217 Provisional used to explicitly
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`include circulators—“drop” and “pass-through” ports—in claim 44. (Ex. 1001,
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`claim 44.) The ’217 Provisional is therefore inconsistent with, and in fact
`
`undermines, PO’s contentions that it disavowed circulator ports from the scope of
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`the term “ports.”
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`
`
`
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` c.
`
`The Claims’ Preambles Do
`
` Not Exclude Circulators
`
`Petitioners disagree with PO’s contention that a PHOSITA would have
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`understood a wavelength-separating-routing apparatus to never include circulators.
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`(PO Response, pg. 40.) As Petitioners’ expert has testified, “Bouevitch discloses a
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`‘Configurable Optical Add/Drop Multiplexer’ [that] constitutes a ‘wavelength-
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`separating-routing apparatus.’” (Ex. 1028, ¶ 40.) And that apparatus includes
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`circulators. (See, e.g., Ex. 1003, Fig. 11.)
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`F.
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`Bouevitch Reflects Light Into the Ports [Corresponds to PO
`Response § III.F.]
`PO contends that Bouevitch teaches reflecting a light beam back to lens 90,
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`having the light beam pass through a waveguide 99a or 99b, and then having the
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`light beam propagate to the port. (PO Response, pp. 45-46.) In effect, PO’s
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`argument implies a requirement that the beam be directly reflected to an output
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`port. This position is wrong.
`
`PO offers no express construction of “to reflect” that excludes propagation
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`or deflection following reflection. Nor does PO offer any explanation of why a
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`beam that is reflected and then propagated or deflected is excluded. Any such
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`construction would be inconsistent with the ordinary meaning of “reflect,” which
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`includes “to throw back light.” (Webster’s Ninth New Collegiate Dictionary, Ex.
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`1052, pg. 989.) Furthermore, PO’s position is inconsistent with the ’678 patent,
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`which does not require reflecting light directly from the MEMS mirrors to the
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`ports. Fig. 1A of the ’678 patent, for example, discloses a light beam that reflects
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`off micromirror 103, and then propagates back though both focusing lens 102 and
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`quarter-wave plate 104 before being directed to an output port. (Ex. 1001, Fig.
`
`1A.)
`
`G. Continuous Two-Axis Mirror Control Was Obvious [Corresponds
`to PO Response § III.G.]
`PO Mischaracterizes the Challenge Bases of the Petition
`
`1.
`
`PO’s arguments that Bouevitch, Sparks and Lin do not teach “micromirrors
`
`being pivotable about two axes and being continuously controllable” (PO
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`Response, pp. 47-53) mischaracterize the challenge bases advanced in the Petition
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`and adopted by the Board. Both the Petition and the Decision point only to Sparks
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`as teaching MEMS mirrors that are movable in two dimensions. (Petition, pg. 33
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`(“[T]he only portion of the second part of element 1[d] not taught by Bouevitch is
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`a micromirror ‘pivotable about two axes.’ .… But … Sparks discloses such a
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`micromirror.”); Decision, pg. 16 (“Petitioner relies on the description in Sparks of
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`a 2-axis beam deflecting element.”).) There are no contentions that rely on either
`
`Bouevitch or Lin alone to disclose continuous control in two dimensions.
`
`2.
`
`Construction of “Continuously Controllable”
`
`
`
`The Decision did not adopt Petitioners’ proposed construction of the term
`
`“continuously controllable,” and instead determined that no express construction
`
`was necessary. (Decision, pg. 10.) In the related proceeding IPR2014-01276, the
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`Board determined that “continuously controllable” means “under analog control
`
`such that it can be continuously adjusted.” (IPR2014-01276, Final Written
`
`Decision, Paper 40, pg. 13.) As discussed below, at least Sparks and Lin also teach
`
`continuous control of MEMS mirrors per this construction.
`
`
`
`
`
`3.
`
`Sparks Teaches Continuous Control
`
`Sparks teaches a switch with two-axis mirrors “arranged to switch an optical
`
`signal by redirection of the optical beam path of said signal, the method
`
`comprising controlled misalignment of the optical beam path so as to achieve a
`
`predetermined optical output power” and that “each of the channels passing
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`through the switch may be attenuated to whatever degree necessary to achieve the
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`desired effect.” (Ex. 1004, col. 2, ll. 22-35.) Furthermore, Sparks states that the
`
`mirrors are actuatable “to achieve any desired optical beam power output less than
`
`the maximum.” (Id., col. 4, ll. 54-55.) Since each channel can be attenuated to
`
`whatever degree necessary, including to any power output less than the maximum,
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`the control is continuous. (Ex. 1028, McLaughlin Decl., ¶ 57.) (See, also, Ex.
`
`2032, McLaughlin Dep. Trans., pg. 59, ll. 20-23 (“[Continuous control] means that
`
`the [] MEMS can be set to any tilt angle within its operation to whatever degree of
`
`precision is required in the application.”).) Furthermore, a PHOSITA would
`
`understand tha