Paper 12
`Entered: March 11, 2016
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`CORIANT OPERATIONS, INC., CORIANT (USA) INC.,
`CIENA CORPORATION, CISCO SYSTEMS, INC., and
`FUJITSU NETWORK COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01971
`Patent RE42,678 E
`_______________
`
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`Granting Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`Entered: March 11, 2016
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`CORIANT OPERATIONS, INC., CORIANT (USA) INC.,
`CIENA CORPORATION, CISCO SYSTEMS, INC., and
`FUJITSU NETWORK COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01971
`Patent RE42,678 E
`_______________
`
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`Granting Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`
`I. INTRODUCTION
`
`Petitioner, Coriant Operations, Inc., Coriant (USA) Inc., Ciena
`
`Corporation, Cisco Systems, Inc., and Fujitsu Network Communications,
`
`Inc., filed a Petition requesting an inter partes review of claims 1–4, 9, 10,
`
`13, 17, 19–23, 27, 29, 44–46, 53, and 61–65 of U.S. Patent No. RE42,678 E
`
`(“the ’678 patent”). Paper 6 (“Pet.”). Petitioner also filed a Motion for
`
`Joinder, pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and
`
`42.122(b), seeking to join this proceeding with JDS Uniphase Corporation
`
`v. Capella Photonics, Inc., Case IPR2015-00739 (“IPR-739”). Paper 7
`
`(“Motion” or “Mot.”). In IPR-739, inter partes review of the ’678 patent
`
`was instituted on August 25, 2015, on the same grounds asserted against the
`
`same claims challenged in this proceeding. See IPR-739, Paper 7.
`
`Patent Owner, Capella Photonics, Inc., did not file either a
`
`Preliminary Response to the Petition or an Opposition to the Motion for
`
`Joinder. Petitioner represents that the petitioner in IPR-739, Lumentum
`
`Holdings, Inc., Lumentum, Inc., and Lumentum Operations LLC,
`
`(collectively, “Lumentum,” formerly JDS Uniphase Corporation), does not
`
`oppose the Motion. Mot. 3.
`
`For the reasons described below, we institute an inter partes review of
`
`claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46, 53, and 61–65 of the ’678
`
`patent and grant Petitioner’s Motion for Joinder.
`
`
`
`
`
`
`
`IPR2015-01971
`Patent RE42,678 E
`
`
`II. INSTITUTION OF INTER PARTES REVIEW
`
`A.
`
`The ’678 patent (Ex. 1001)
`
`The ’678 patent, titled “Reconfigurable Optical Add-Drop
`
`Multiplexers with Servo Control and Dynamic Spectral Power Management
`
`Capabilities,” reissued September 6, 2011, from U.S. Patent No. RE 39,397
`
`(“the ’397 patent”). Ex. 1001. The ’397 patent reissued November 14,
`
`2006, from U.S. Patent No. 6,625,346 (“the ’346 patent”). Id. The ’346
`
`patent issued September 23, 2003, from U.S. Patent Application
`
`No. 09/938,426, filed August 23, 2001.
`
`The ’678 patent describes a “wavelength-separating-routing (WSR)
`
`apparatus that uses a diffraction grating to separate a multi-wavelength
`
`optical signal by wavelength into multiple spectral characters, which are
`
`then focused onto an array of corresponding channel micromirrors.” Id. at
`
`Abstract. “The channel micromirrors are individually controllable and
`
`continuously pivotable to reflect the spectral channels into selected output
`
`ports.” Id. According to Petitioner, the small, tilting mirrors are sometimes
`
`called Micro ElectroMechanical Systems or “MEMS.” Pet. 9. The WSR
`
`described in the ’678 patent may be used to construct a dynamically
`
`reconfigurable optical add-drop multiplexer (“ROADM”) for wavelength
`
`division multiplexing (“WDM”) optical networking applications. Ex. 1001,
`
`Abstract.
`
` 3
`
`
`
`
`
`
`
`IPR2015-01971
`Patent RE42,678 E
`
`
`Figure 1A of the ’678 patent is reproduced below.
`
`
`
`Figure 1A depicts WSR apparatus 100, in accordance with the ’678
`
`patent. WSR apparatus 100 is comprised of an array of fiber collimators 110
`
`(multiple input/output ports, including input port 110-1 and output ports
`
`110-2 through 110-N), diffraction grating 101 (a wavelength separator),
`
`quarter wave plate 104, focusing lens 102 (a beam-focuser), and array of
`
`channel micromirrors 103. Ex. 1001, 6:57–63, 7:55–56.
`
`
`
`A multi-wavelength optical signal emerges from input port 110-1 and
`
`is separated into multiple spectral channels by diffraction grating 101, which
`
`are then focused by focusing lens 102 into a spatial array of distinct spectral
`
`spots (not shown). Id. at 6:64–7:2. Channel micromirrors 103 are
`
`positioned such that each channel micromirror receives one of the spectral
`
`channels. Id. at 7:2–5.
`
` 4
`
`
`
`
`
`
`
`IPR2015-01971
`Patent RE42,678 E
`
`
`The WSR may also incorporate a servo-control assembly (together
`
`termed a “WSR-S apparatus.”) Ex. 1001, 4:65–67. According to the ’678
`
`patent:
`
`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
`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.
`
`B.
`
`Illustrative Claims
`
`Claims 1, 21, 44, and 61 of the ’678 patent are independent. Claims
`
`2–4, 9, 10, 13, 17, 19, and 20 ultimately depend from claim 1; claims 22, 23,
`
`27, and 29 ultimately depend from claim 21; claims 45, 46, and 53
`
`ultimately depend from claim 44; and, claims 62–65 ultimately depend from
`
`claim 61. Claims 1, 21, and 61 of the ’678 patent are illustrative of the
`
`claims at issue:
`
`apparatus,
`
`1. A wavelength-separating-routing
`comprising:
`a) multiple fiber collimators, providing an input port
`for a multi-wavelength optical signal and a plurality of
`output ports;
`b) a wavelength-separator, for separating said multi-
`wavelength optical signal from said input port into multiple
`spectral channels;
`c) a beam-focuser, for focusing said spectral channels
`into corresponding spectral spots; and
`d) a spatial array of channel micromirrors positioned
`such that each channel micromirror receives one of said
`spectral channels, said channel micromirrors being pivotal
`
` 5
`
`
`
`
`
`
`
`IPR2015-01971
`Patent RE42,678 E
`
`
`about two axes and being individually and continuously
`to reflect [[said]] corresponding received
`controllable
`spectral channels into any selected ones of said output ports
`and to control the power of said received spectral channels
`coupled into said output ports.
`
`Ex. 1001, 14:6–23 (“[[ ]]” indicating matter in the first reissue that
`
`forms no part of the second reissue, and matter in italics indicating
`
`additions made by second reissue).
`
`21. A servo-based optical apparatus comprising:
`a) multiple fiber collimators, providing an input port
`for a multi-wavelength optical signal and a plurality of
`output ports;
`b) a wavelength-separator, for separating said multi-
`wave-length optical signal from said input port into multiple
`spectral channels;
`c) a beam-focuser, for focusing said spectral channels
`into corresponding spectral spots; and
`d) a spatial array of channel micromirrors positioned
`such that each channel micromirror receives one of said
`spectral channels,
`said channel micromirrors being
`individually controllable to reflect said spectral channels
`into selected ones of said output ports; and
`e) a servo-control assembly, in communication with
`said channel micromirrors and said output ports, for
`maintaining a predetermined coupling of each reflected
`spectral channel
`into one of
`said output ports.
`
`Id. at 15:30–48.
`
`
`61. A method of performing dynamic wavelength
`separating and routing, comprising:
`a) receiving a multi-wavelength optical signal from an
`input port;
`b) separating said multi-wavelength optical signal into
`multiple spectral channels;
`
` 6
`
`
`
`
`
`
`
`IPR2015-01971
`Patent RE42,678 E
`
`
`c) focusing said spectral channels onto a spatial array
`of corresponding beam-deflecting elements, whereby each
`beam-deflecting element receives one of said spectral
`channels; and
`d) dynamically and continuously controlling said
`beam-deflecting elements [[, thereby directing]] in two
`dimensions
`to direct said spectral channels
`into [[a
`plurality]] any selected ones of said output ports and to
`control the power of the spectral channels coupled into said
`selected output ports.
`
`Ex. 1001, 18:55–19:3 (“[[ ]]” indicating matter in the first reissue that
`
`forms no part of the second reissue, and matter in italics indicating additions
`
`made by second reissue).
`
`C.
`
`Related Proceedings
`
`According to the parties, the ’678 patent is a subject of the following
`
`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.
`
`3:14-cv-03349 (N.D. Cal.), Capella Photonics, Inc. v. Tellabs Ops., Inc., No.
`
`3:14-cv-03350 (N.D. Cal.), Capella Photonics, Inc. v. Ciena Corp., No.
`
`5:14-cv-03351 (N.D. Cal.), Capella Photonics, Inc. v. Columbus Networks
`
`USA, Inc., No. 0:14-cv-61629 (S.D. Fla.), and Capella Photonics, Inc. v.
`
`Telefonica Int’l Wholesale Servs. USA, Inc., No. 1:14-cv-22701 (S.D. Fla.).
`
`Pet. 2; Paper 11, 2–3.
`
`In addition to IPR-739, the ’678 patent is also the subject of the
`
`following inter partes review proceedings: Cisco Systems, Inc. v. Capella
`
`Photonics, Inc., IPR2014-01276 (to which Ciena Corporation, Coriant
`
`Operations, Inc., Coriant (USA) Inc., and Fujitsu Network Communications,
`
`Inc. v. Capella Photonics, Inc., IPR2015-00894 was joined), and Fujitsu
`
`Network Communications, Inc. v. Capella Photonics, Inc., IPR2015-00727.
`
` 7
`
`
`
`
`
`
`
`IPR2015-01971
`Patent RE42,678 E
`
`The ’678 patent is also the subject of a petition for inter partes review in
`
`Ciena Corporation, Coriant Operations, Inc., and Coriant (USA) Inc., v.
`
`Capella Photonics, Inc., IPR2015-01961. On February 2, 2016, a Final
`
`Written Decision in IPR2014-01276 held claims 1–4, 9, 10, 13, 17, 19–23,
`
`27, 29, 44–46, 53, and 61–65 of the ’678 patent unpatentable.
`
`D.
`
`Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds, mirroring those instituted in
`
`IPR-739. See Pet. 6; see also IPR-739, Paper 7.
`
`References
`
`Basis
`
`Claims Challenged
`
`Bouevitch,1 Sparks,2 and Lin3
`
`§ 103
`
`Bouevitch, Sparks, Lin, and Dueck4 § 103
`
`1–4, 9, 10, 13, 19–23,
`27, 44–46, and 61–65
`17, 29, and 53
`
`E.
`
`Analysis
`
`
`
`Petitioner sets forth how it contends claims 1–4, 9, 10, 13, 19–23,
`
`27, 44–46, and 61–65 would have been obvious over Bouevitch, Sparks, and
`
`Lin, as well as how claims 17, 29, and 53 would have been obvious over the
`
`same references and Dueck. Pet. 17–60. Petitioner submits arguments and
`
`evidence, which mirror what was submitted in IPR-739, including the same
`
`claim construction and rationale of unpatentability. See Ex. 1048
`
`(comparing the Petition to the petition filed as paper 1 in IPR-739). In
`
`
`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”).
`
` 8
`
`
`
`
`
`
`
`IPR2015-01971
`Patent RE42,678 E
`
`support of the Petition, Petitioner relies on the same declaration of Sheldon
`
`McLaughlin filed in IPR-739. Ex. 1028.
`
`In IPR-739, we determined that Lumentum demonstrated a reasonable
`
`likelihood of prevailing in establishing the unpatentability of claims 1–4, 9,
`
`10, 13, 17, 19–23, 27, 29, 44–46, 53, and 61–65 of the ’678 patent. IPR-
`
`739, Paper 7. We granted the petition in IPR-739 and instituted inter partes
`
`review of claims 1–4, 9, 10, 13, 19–23, 27, 44–46, and 61–65 as
`
`unpatentable under 35 U.S.C. § 103(a) as obvious over Bouevitch, Sparks,
`
`and Lin, as well as claims 17, 29, and 53 over Bouevitch, Sparks, Lin, and
`
`Dueck. Id. at 20.
`
`We have reviewed the Petition in this matter, and the evidence cited
`
`therein. Petitioner states, and Patent Owner has not disputed, that the
`
`grounds asserted in this Petition are substantively identical to the grounds of
`
`unpatentability instituted in IPR-739, and those grounds are supported by the
`
`same McLaughlin Declaration submitted in IPR-739. Pet. 6, Ex. 1028.
`
`Accordingly, in view of the identity of the challenges to the ’678
`
`patent in this Petition and in the petition in IPR-739, we incorporate our
`
`previous analysis from our institution decision in IPR-739, and we determine
`
`that the information presented in the Petition establishes that there is a
`
`reasonable likelihood that Petitioner would prevail in establishing
`
`unpatentability of claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46, 53, and
`
`61–65 of the ’678 patent.
`
`III. MOTION FOR JOINDER
`
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`
`284 (2011) (“AIA”) permits joinder of like review proceedings. The Board,
`
`acting on behalf of the Director, has the discretion to join an inter partes
`
` 9
`
`
`
`
`
`
`
`IPR2015-01971
`Patent RE42,678 E
`
`review with another inter partes review. See 35 U.S.C. § 315(c).5 Joinder
`
`may be authorized when warranted, but the decision to grant joinder is
`
`discretionary.
`
`As the moving party, Petitioner bears the burden of proving that it is
`
`entitled to the requested relief. See 37 C.F.R. § 42.20(c). A motion for
`
`joinder should: (1) set forth the reasons joinder is appropriate; (2) identify
`
`any new ground(s) of unpatentability asserted in the petition; and (3) explain
`
`what impact (if any) joinder would have on the trial schedule for the existing
`
`review. See Kyocera Corporation v. Softview LLC, Case IPR2013-00004,
`
`slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`To be considered timely, a motion for joinder must be filed no later
`
`than one month after the institution date of the inter partes review for which
`
`joinder is requested. 37 C.F.R. § 42.122(b). The Petition in this proceeding
`
`has been accorded a filing date of September 25, 2015. Paper 9, 1. This
`
`date is within one month after the date of institution in IPR-739, which was
`
`instituted on August 25, 2015. The Petition, therefore, is timely.
`
`Petitioner states that the Petition copies the petition in IPR-739 for
`
`“simplicity and efficiency,” and “presents no new substantive issues relative
`
`to [IPR-739] and does not seek to broaden the scope of [IPR-739] or request
`
`
`5 35 U.S.C. § 315(c) reads:
`
`Joinder.–If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311
`that
`the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
`
`
`
`10
`
`
`
`
`
`IPR2015-01971
`Patent RE42,678 E
`
`additional discovery.” Mot. 5–6. Petitioner further states that “the current
`
`schedule in [IPR-739] can stay unchanged,” and further agrees that
`
`Lumentum’s counsel will act as lead counsel as long as Lumentum remains
`
`in the proceeding. Id.
`
`IV. CONCLUSION
`
`Based on the record before us, we institute an inter partes review in
`
`IPR2015-01971 and grant Petitioner’s motion to join this case to IPR2015-
`
`00739.
`
`V. ORDER
`
`Accordingly, it is
`
`ORDERED that inter partes review of U.S. Patent No. RE42,678 E is
`
`instituted in IPR2015-01971 with respect to the following grounds of
`
`unpatentability:
`
`(1) claims 1–4, 9, 10, 13, 19–23, 27, 44–46, and 61–65 as obvious
`
`over Bouevitch, Sparks, and Lin under 35 U.S.C. § 103(a); and
`
`(2) claims 17, 29, and 53 as obvious over Bouevitch, Sparks, Lin, and
`
`Dueck under 35 U.S.C. § 103(a);
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of U.S. Patent No. RE42,678 E is hereby instituted in
`
`IPR2015-01971, commencing on the entry date of this Order, and pursuant
`
`to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the
`
`institution of a trial;
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`
`IPR2015-00739 is granted;
`
`FURTHER ORDERED that the instant proceeding is joined with
`
`IPR2015-00739;
`
`
`
`
`
`11
`
`
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`IPR2015-01971
`Patent RE42,678 E
`
`
`FURTHER ORDERED that the grounds of unpatentability on which
`
`trial was instituted in IPR2015-00739 are unchanged, and trial will proceed
`
`on those grounds based on the record in IPR2015-00739;
`
`FURTHER ORDERED that the parties will file all papers in
`
`IPR2015-00739, and that IPR2015-01971 is hereby terminated under
`
`37 C.F.R. § 42.72;
`
`FURTHER ORDERED that the joined proceeding will follow the
`
`schedule effective in IPR2015-00739 as of the date of this Decision;
`
`FURTHER ORDERED that in IPR2015-00739, Lumentum Holdings,
`
`Inc., Lumentum, Inc., and Lumentum Operations LLC, (collectively,
`
`“Lumentum”), and Coriant Operations, Inc., Coriant (USA) Inc., Ciena
`
`Corporation, Cisco Systems, Inc., and Fujitsu Network Communications,
`
`Inc. (collectively “Coriant”) will file papers, except for motions that do not
`
`involve the other party, as consolidated filings. Lumentum will identify
`
`each such filing as a consolidated filing and will be responsible for
`
`completing all consolidated filings. Coriant may file an additional paper, not
`
`to exceed five pages, which may address only points of disagreement with
`
`contentions in Lumentum’s consolidated filing. Any such filing by Coriant
`
`must identify specifically and explain each point of disagreement. Coriant
`
`may not file separate arguments in support of points made in Lumentum’s
`
`consolidated filing;
`
`FURTHER ORDERED that, in addition to responding to any
`
`consolidated filing, Patent Owner may respond separately to any separate
`
`Coriant filing. Any such response by Patent Owner to a Coriant filing may
`
`not exceed the number of pages in the Coriant filing, and is limited to issues
`
`raised in the Coriant filing;
`
`
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`12
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`IPR2015-01971
`Patent RE42,678 E
`
`
`FURTHER ORDERED that Lumentum and Coriant will designate
`
`attorneys to conduct cross-examination of any witnesses produced by Patent
`
`Owner and redirect any witnesses produced by Lumentum and Coriant
`
`within the timeframe normally allotted by the rules to one party. Lumentum
`
`and Coriant will not receive any separate cross-examination or redirect time.
`
`Lumentum is permitted to ask questions before Coriant at depositions if it so
`
`choses;
`
`FURTHER ORDERED that Lumentum is permitted to present
`
`argument before Coriant at any oral argument if it so chooses;
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`
`into the file of Case IPR2015-00739; and
`
`FURTHER ORDERED that the case caption in IPR2015-00739 shall
`
`be changed to reflect the joinder with this proceeding in accordance with the
`
`attached example.
`
`
`
`
`
`
`
`13
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`
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`IPR2015-01971
`Patent RE42,678 E
`
`
`
`
`PETITIONER:
`
`Peter van Es
`pvanes@bannerwitcoff.com
`
`Thomas Pratt
`TPratt@bannerwitcoff.com
`
`Jordan Bodner
`JBodner@bannerwitcoff.com
`
`Michael Cuviello
`Banner-Tellabs@bannerwitcoff.com
`
`
`
`PATENT OWNER:
`
`Jason Eisenberg
`Jasone-ptab@skgf.com
`
`Robert Sterne
`rsterne-PTAB@skgf.com
`
`Jon Wright
`jwright-PTAB@skgf.com
`
`
`
`
`
`14
`
`
`
`
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`IPR2015-01971
`Patent RE42,678 E
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`LUMENTUM HOLDINGS, INC., LUMENTUM, INC.,
`LUMENTUM OPERATIONS LLC, CORIANT OPERATIONS, INC.,
`CORIANT (USA) INC., CIENA CORPORATION,
`CISCO SYSTEMS, INC., and
`FUJITSU NETWORK COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-007391
`Patent RE42,678 E
`_______________
`
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`
`
`
`
`1 Case IPR2015-01971 has been joined with this proceeding.
`
`
`
`15
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