Paper 7
`Entered: August 25, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`JDS UNIPHASE CORPORATION,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00739
`Patent RE42,678 E
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`Entered: August 25, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`JDS UNIPHASE CORPORATION,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00739
`Patent RE42,678 E
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`DECISION
`
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2015-00739
`Patent RE42,678 E
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, JDS Uniphase Corporation, filed a Petition (Paper 1,
`
`“Pet.”) 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 (Ex. 1001,
`
`“the ’678 patent”). Paper 1 (“Pet.”). Patent Owner, Capella Photonics, Inc.,
`
`filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have
`
`jurisdiction under 35 U.S.C. § 314(a), which provides that inter partes
`
`review may not be instituted unless the information presented in the petition
`
`and any preliminary response shows that there is a reasonable likelihood that
`
`the petitioner would prevail with respect to at least one of the claims
`
`challenged in the petition.
`
`Upon consideration of the Petition and the Preliminary Response, we
`
`conclude the information presented shows there is a reasonable likelihood
`
`that Petitioner would prevail in showing the unpatentability of the
`
`challenged claims. Accordingly, we authorize an inter partes review to be
`
`instituted as to claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46, 53, and
`
`61–65 of the ’678 patent. Our factual findings and conclusions at this stage
`
`of the proceeding are based on the evidentiary record developed thus far
`
`(prior to Patent Owner’s Response). This is not a final decision as to
`
`patentability of claims for which inter partes review is instituted. Our final
`
`decision will be based on the record, as fully developed during trial.
`
`
`
`
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`2
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`IPR2015-00739
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`II.
`
`BACKGROUND
`
`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. 7. 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,
`
`3
`
`Abstract.
`
`
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`IPR2015-00739
`Patent RE42,678 E
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`
`
`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.
`
`The WSR may also incorporate a servo-control assembly (together
`
`termed a “WSR-S apparatus.”) Id. at 4:65–67. According to the ’678
`
`patent:
`
`4
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`IPR2015-00739
`Patent RE42,678 E
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`
`The servo-control assembly serves to monitor the power levels
`of the spectral channels coupled into the output ports and
`further provide control of the channel micromirrors on an
`individual basis, so as to maintain a predetermined coupling
`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
`about two axes and being individually and continuously
`to reflect [[said]] corresponding received
`controllable
`spectral channels into any selected ones of said output ports
`5
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`IPR2015-00739
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`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.
`
`Ex. 1001, 15:29–48.
`
`
`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;
`c) focusing said spectral channels onto a spatial array
`of corresponding beam-deflecting elements, whereby each
`
`6
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`IPR2015-00739
`Patent RE42,678 E
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`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.
`
`3:14-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 5, 2–3.
`
`Claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46, 53, and 61–65 of the
`
`’678 patent are challenged in Cisco Systems, Inc. v. Capella Photonics, Inc.,
`
`IPR2014-01276, instituted on February 18, 2015 (“IPR2014-01276”). The
`
`’678 patent is also the subject of petitions for inter partes review in Fujitsu
`
`Network Communications, Inc. v. Capella Photonics, Inc., IPR2015-00727,
`
`and Ciena Corporation, Coriant Operations, Inc., Coriant (USA) Inc., and
`
`7
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`IPR2015-00739
`Patent RE42,678 E
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`Fujitsu Network Communications, Inc. v. Capella Photonics, Inc.,
`
`IPR2015-00894.
`
`D.
`
`Asserted Grounds of Unpatentability
`
`Petitioner contends that claims 1–4, 9, 10, 13, 17, 19–23, 27, 29,
`
`44–46, 53, and 61–65 of the ’678 patent are unpatentable based on the
`
`following grounds:
`
`Reference[s]
`Bouevitch1 and Sparks2
`
`Bouevitch, Sparks, and Lin3
`
`Bouevitch, Sparks, and Dueck4
`Bouevitch, Sparks, Lin, and Dueck
`
`
`Challenged Claims
`Basis
`§ 103(a) 1–4, 9, 10, 13, 17, 19–
`23, 27, 29, 44–46, 53,
`and 61–65
`§ 103(a) 1–4, 9, 10, 13, 17, 19–
`23, 27, 29, 44–46, 53,
`and 61–65
`§ 103(a) 17, 29, and 53
`
`§ 103(a) 17, 29, and 53
`
`III. ANALYSIS
`
`A.
`
`Claim Construction
`
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC,
`
`No. 2014–1301, 2015 WL 4097949 at *5–8 (Fed. Cir., July 8, 2015).
`
`
`1 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. 17.
`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
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`IPR2015-00739
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`
`1.
`
`“servo-control assembly” and “servo-based”
`
`Challenged claims 2–4, 21–23, and 45 recite a “servo-control
`
`assembly.” Petitioner asserts “servo-control assembly” means “feedback-
`
`based control assembly,” thereby suggesting “servo” means “feedback-
`
`based.” Pet. 12. Challenged claims 21–25, 27, and 29 recite a “servo-based
`
`optical apparatus.” Petitioner asserts that “servo-based” means “feedback-
`
`based control.” Id. Patent Owner offers no construction of the terms. We
`
`are not persuaded that “servo” necessarily means “feedback” or “feedback-
`
`based” merely because the ’678 patent describes a processing unit within a
`
`servo-control assembly as using power measurements from the spectral
`
`monitor to provide feedback control of the channel mirrors. See Pet. 13–14.
`
`The ’678 patent does not use the term “servo-based” outside of the
`
`preamble of challenged claims 21–25, 27, and 29. “If . . . the body of the
`
`claim fully and intrinsically sets forth the complete invention, including all
`
`of its limitations, and the preamble offers no distinct definition of any of the
`
`claimed invention’s limitations, . . . then the preamble is of no significance
`
`to claim construction because it cannot be said to constitute or explain a
`
`claim limitation.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
`
`1298, 1305, (Fed. Cir. 1999) (citations omitted). The bodies of claims
`
`21–25, 27, and 29 fully and intrinsically set forth the complete invention;
`
`therefore, the use of “servo-based” in the preamble does not serve as a
`
`limitation and need not be construed.
`
`With respect to “servo-control assembly,” the ’678 patent states that it
`
`“serves to monitor the power levels of the spectral channels coupled into the
`
`output ports and further provide control of the channel micro-mirrors on an
`
`9
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`IPR2015-00739
`Patent RE42,678 E
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`individual basis.” Ex. 1001, 4:47–50. Further, “[i]f the WSR apparatus
`
`includes an array of collimator-alignment mirrors . . . the servo-control
`
`assembly may additionally provide dynamic control of the collimator-
`
`alignment mirrors. Id. at 4:56–60. According to the ’678 patent, “[a] skilled
`
`artisan will know how to implement a suitable spectral monitor along with
`
`an appropriate processing unit to provide a servo-control assembly in a
`
`WSP-S apparatus according to the present invention, for a given
`
`application.” Ex. 1001, 12:11–15.
`
`Based on the specification and the present record, a “servo-control
`
`assembly” encompasses a spectral monitor and processing unit to monitor
`
`spectral channel power levels and control channel micro mirrors on an
`
`individual basis. See id. at 11:10–36.
`
`2.
`
`“continuously controllable”
`
`Petitioner asserts that “continuously controllable” should be construed
`
`to mean “able to effect changes with fine precision.” Pet. 11. Petitioner
`
`offers no sufficient explanation for how its proposed definition accounts for
`
`the term “continuously” in “continuously controllable,” directs us to no
`
`portion of the specification of the ’368 patent that uses “fine precision,” and
`
`fails to explain what “fine precision” is intended to encompass or exclude.
`
`See id. at 11–12. Petitioner also, however, notes that the ’368 patent
`
`identifies “under analog control” as an example of continuous control. Id. at
`
`11. Patent Owner disputes Petitioner’s proposed construction, but offers no
`
`alternative construction of the term. See Prelim. Resp. 52. We determine
`
`that no express construction is necessary for purposes of this decision.
`
`10
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`IPR2015-00739
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`3.
`
`Additional Claim Terms
`
`Petitioner addresses several additional claim terms, including
`
`“continuously pivotable,” “spectral monitor,” “beam-focuser,” “in two
`
`dimensions,” “control the power…,” “optical sensor,” and “fiber collimators
`
`are arranged in a one-dimensional array.” Pet. 11–16. For purposes of this
`
`decision, no express construction of any additional claim term is necessary.
`
`B.
`
`References Asserted as Prior Art
`
`Petitioner relies on Bouevitch, Sparks, Lin, and Dueck with respect to
`
`its assertion that the challenged claims would have been obvious.
`
`1.
`
`Bouevitch
`
`Bouevitch describes an optical device for rerouting and modifying an
`
`optical signal, including modifying means such as a MEMS array and a
`
`liquid crystal array which functions as an attenuator when the device
`
`operates as a dynamic gain equalizer, and as a switching array when the
`
`device operates as a configurable optical add/drop multiplexer (“COADM”).
`
`Ex. 1003, Abstract.
`
`2.
`
`Sparks
`
`Sparks describes an optical switch arranged to misalign the optical
`
`beam path to provide a predetermined optical output power. Ex. 1004,
`
`Abstract. According to Sparks, “[t]he system operates by controlling the
`
`movable micromirrors (16,26), which are fabricated using MEMS
`
`technology and are capable of two axis movement, to carefully align the
`
`beams so as to ensure that the maximum possible input optical signal is
`
`received at the output of the switch.” Id. at 4:43–46.
`
`11
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`3.
`
`Lin
`
`
`
`Lin describes a “spatial light modulator . . . operable in the analog
`
`mode for light beam steering or scanning applications.” Ex. 1010, Abstract.
`
`Lin explains that the angular deflection of a mirror about the torsional axis is
`
`a function of the voltage potential applied to an address electrode. Id. at
`
`6:29–32. Petitioner contends that Figure 3B of Lin depicts a continuous and
`
`linear relationship between the deflection angle of the MEMS mirrors and
`
`the applied voltage. Pet. 31–32.
`
`
`
`
`
`4.
`
`Dueck
`
`Dueck describes a wavelength division multiplexer that integrates an
`
`axial gradient refractive index element with a diffraction grating to provide
`
`efficient coupling from a plurality of input sources. Ex. 1021, Abstract.
`
`Petitioner contends that Dueck describes various diffraction gratings for use
`
`in WDM devices. Pet. 18.
`
`C.
`
`Asserted Obviousness Over Bouevitch, Sparks, and Lin
`
`Petitioner asserts that claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46,
`
`53, and 61–65 would have been obvious over Bouevitch, Sparks, and Lin.
`
`Pet. 24–60.
`
`1.
`
`Claim 1
`
`Petitioner first argues that during reissue Patent Owner admitted that
`
`all elements of claim 1, except for two-axis mirrors, were disclosed by
`
`Bouevitch. Pet. 9–11. Rather than identify any such admission, Petitioner
`
`directs us to a Replacement Reissue Application Declaration by Assignee
`
`which states:
`
`12
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`At least one error upon which reissue is based is
`described as follows: Claim 1 is deemed to be too broad and
`invalid in view of U.S. Patent No. 6,498,872 to Bouevitch and
`further in view of one or more of U.S. Patent No. 6,567,574 to
`Ma, U.S. Patent No. 6,256,430 to Jin, or U.S. Patent No.
`6,631,222 to Wagener by failing
`to
`include limitations
`regarding the spatial array of beam deflecting elements being
`individually and continuously controllable in two dimensions to
`control the power of the spectral channels reflected to selected
`output ports, as indicated by the amendments to Claim 1 in the
`Preliminary Amendment [referred to above].
`
`See Pet. 9, quoting Ex. 1002, 104. Rather than admit that all original
`
`elements of claim 1 are disclosed by Bouevitch, the statement makes clear
`
`that three additional references not relied upon by Petitioner in this
`
`proceeding were considered in combination with Bouevitch. Moreover,
`
`Petitioner identifies no persuasive authority for the proposition that such a
`
`statement should be treated as an admission in this proceeding. As a result,
`
`we are not persuaded that Patent Owner has admitted all elements of claim
`
`1, except for two-axis mirrors, were disclosed by Bouevitch.
`
`
`
`Petitioner also provides contentions as to how the relied upon prior art
`
`describes the elements of claim 1. Petitioner contends that Bouevitch
`
`describes microlenses 12a and 12b, corresponding to the recited “multiple
`
`fiber collimators.” Pet. 24–25. Petitioner’s declarant, Sheldon McLaughlin,
`
`an employee of Petitioner, equates microlenses 12a and 12b to fiber
`
`collimators. Ex. 1028 ¶43. Petitioner further asserts that the microlenses of
`
`Bouevitch, in conjunction with fiber waveguides and circulators, provide an
`
`input port (labeled “IN”), and a plurality of output ports (labeled “OUT
`
`EXPRESS” and “OUT DROP”). Pet. 25–26 (citing Ex. 1003, Fig. 11).
`
`13
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`Petitioner’s contentions are supported by Mr. McLaughlin. Ex. 1028
`
`¶¶ 44–45.
`
`Grounds of unpatentability based on Bouevitch were instituted for
`
`trial currently proceeding in IPR2014-01276. Patent Owner continues to
`
`contest the sufficiency of Bouevitch at this initial stage of proceedings in
`
`support of its contention that Petitioner has not shown a reasonable
`
`likelihood of succeeding in demonstrating the challenged claims
`
`unpatentable over Bouevitch and other prior art. Patent Owner’s arguments
`
`include: that Bouevitch does not teach the claimed “multiple fiber
`
`collimators, providing an input port … and a plurality of output ports”
`
`(Prelim. Resp. 40–49); that the circulators of Bouevitch coupled to
`
`microlenses “do not meet the distinct structure” as claimed, (id. at 41– 42);
`
`and that the ’678 patent disavows circulator-based optical systems (id. at
`
`42–47). Patent Owner contends that a person of ordinary skill in the art
`
`would understand the meaning of “ports,” but provides no proposed
`
`definition, and instead suggests the definition does not include circulator
`
`ports. Id. at 47–48. Similarly, Patent Owner asserts that “Bouevitch, as
`
`understood by a [person of ordinary skill in the art], can at most have two
`
`ports.” Id. at 48–49. We have considered Patent Owner’s arguments,
`
`primarily supported only by attorney argument, and determine on the present
`
`record that they are not persuasive.5
`
`
`5 Pursuant to 37 C.F.R. § 42.107(c), a patent owner preliminary response
`“shall not present new testimony evidence beyond that already of record,
`except as authorized by the Board.” Patent Owner did not request
`authorization, and was not authorized, to submit new testimony evidence in
`this proceeding. Accordingly, any testimony evidence obtained after the
`14
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`Patent Owner also argues that Petitioner improperly relies on
`
`disparate embodiments of Bouevitch without providing a rationale for their
`
`combination. Prelim. Resp. 24–30. On the present record, we are not
`
`persuaded by Patent Owner’s argument that Petitioner relies on modifying
`
`means 150 of Bouevitch to show claim limitations with respect to power
`
`control and continuous control. Id. at 25. The Petition relies on Sparks as
`
`disclosing power control, as well as Lin for the “continuously controllable”
`
`limitation. Pet. 31–32, 35–36. Moreover, Patent Owner’s argument that a
`
`person of ordinary skill in the art “would have understood that MEMS array
`
`50 does not require a predetermined polarization of an input beam, a
`
`birefringent element, a liquid crystal array, or a quarter waveplate as
`
`required by modifying means 150,” for example, is unsupported attorney
`
`argument not persuasive on the present record. See Prelim. Resp. 27–28.
`
`Petitioner identifies Bouevitch’s diffraction grating 20 as a
`
`“wavelength-separator,” as recited in claim 1. Pet. 26. Petitioner also
`
`identifies Bouevitch’s reflector 10 as a “beam-focuser,” as recited in claim 1.
`
`Id. at 27. Further, according to Petitioner, MEMS array 50 and reflectors 51
`
`and 52 of Bouevitch correspond to “a spatial array of channel micromirrors
`
`positioned such that each channel micromirror receives a corresponding one
`
`of said spectral channels.” Id. at 28.
`
`In addition to arguing that Bouevitch discloses the “continuously
`
`controllable” limitation of claim 1, Petitioner also identifies descriptions in
`
`Sparks and Lin as corresponding to this limitation. Pet. 30. We are not
`
`
`date of the Petition submitted with Patent Owner’s Preliminary Response is
`excluded from consideration for purposes of this Decision.
`15
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`IPR2015-00739
`Patent RE42,678 E
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`persuaded by Petitioner’s assertion that “continuously controllable” means
`
`“able to effect changes with fine precision.” Petitioner, however, further
`
`contends that the ’678 patent provides analog control as an example of
`
`continuously controllable, and argues that Bouevitch discloses continuously
`
`controllable power attenuation as an analog function of the angle of the
`
`deflector, which is also described as “variable.” Id. With respect to Sparks,
`
`Petitioner argues that the “continuously controllable” limitation is disclosed
`
`as reflectors which may attenuate “to whatever degree necessary to achieve
`
`the desired effect.” Id. at 30–31. Petitioner identifies Lin as disclosing
`
`continuous analog control of MEMS mirrors. Id. at 31. With respect to the
`
`requirement of claim 1 that such beam-deflecting elements be continuously
`
`controllable “in two dimensions,” Petitioner relies on the description in
`
`Sparks of a 2-axis beam deflecting element. Id. at 33–34. Petitioner also
`
`contends both Bouevitch and Sparks disclose switches to “redirect a spectral
`
`channel to a particular port. Pet. 34–35.
`
`Patent Owner makes various arguments, including that: Petitioner has
`
`not shown how “deflecting” meets the claim element “reflecting” (Prelim.
`
`Resp. 49–50); (2) that no person of ordinary skill in the art would have
`
`understood parks or Lin to teach micromirrors being pivotal about two axes
`
`and continuously controllable (id. at 50–58); “that analog control does not
`
`necessarily result in micromirrors that are continuously controllable” (id. at
`
`55); and that “no [person of ordinary skill in the art] would have understood
`
`Lin” to show micromirrors being pivotable about two axes (id. at 57). We
`
`have considered Patent Owner’s arguments, primarily supported only by
`
`16
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`IPR2015-00739
`Patent RE42,678 E
`
`attorney argument, and determine on the present record that they are not
`
`persuasive.
`
`With respect to a rationale for combining Bouevitch and Sparks,
`
`Petitioner contends, among various reasons, that (1) the use of the two-axis
`
`mirror of Sparks in Bouevitch is a simple substitution of one known element
`
`for another, yielding predictable results; (2) it would be obvious to try
`
`Spark’s two-axis mirror in Bouevitch because it is among a small number of
`
`identified, predictable solutions for mirror attenuation with a high
`
`expectation of success; and, (3) the use of a two-axis mirror in Bouevitch
`
`would overcome manufacturing defects by being actuable.6 Pet. 20–23.
`
`Petitioner also contends that several reasons support the addition of Lin’s
`
`continuous, analog control to the asserted combination, including
`
`interchangeability with discrete-step mirrors and more precision in matching
`
`the optimal coupling value. Pet. 32.
`
`Patent Owner argues that Petitioner’s rationale for combining
`
`Bouevitch, Sparks, and Lin was insufficient for, among other reasons, there
`
`are many variables and technical challenges. Prelim. Resp. 30–39,
`
`58–60. Patent Owner argues that using the mirrors of Sparks in Bouevitch
`
`would disrupt Bouevitch’s polarization-based switch and explicit teaching of
`
`parallel alignment. Id. at 34–38. Patent Owner also argues only hindsight
`
`would motivate the combination of Bouevitch and Sparks because Petitioner
`
`
`6 Petitioner also argues, without citing authority, that Patent Owner admitted
`the “combinability” of references during prosecution, and that such
`admission applies to the references identified by Petitioner in “the identical
`technology area.” Pet. 23. We find no such admission.
`17
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`IPR2015-00739
`Patent RE42,678 E
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`contends Bouevitch can accomplish both switching and power-control using
`
`a single-axis mirror. Id. at 39–40.
`
`At this stage of the proceedings, absent sufficient additional
`
`supporting evidence, we are not persuaded by Patent Owner’s attorney
`
`arguments and credit the testimony of Petitioner’s declarant,
`
`Mr. McLaughlin. Accordingly, based on the information presented,
`
`Petitioner has demonstrated a reasonable likelihood that it would prevail in
`
`showing claim 1 unpatentable as obvious over Bouevitch, Sparks, and Lin.
`
`2. Claims 2–4, 9, 10, 13, 19–23, 27, 44–46, and 61–65.
`
`
`
`In addition to addressing the elements of claim 1, Petitioner also
`
`identifies how claims 2–4, 9, 10, 13, 19–23, 27, 44–46, and 61–65 would
`
`have been obvious over Bouevitch, Sparks, and Lin, as supported by the
`
`Declaration of Mr. McLaughlin. Pet. 37–60. Patent Owner has not raised
`
`additional arguments with regard to the additional challenged claims beyond
`
`those arguments addressed above with respect to claim 1. Based on the
`
`information presented, Petitioner has demonstrated a reasonable likelihood
`
`that it would prevail in showing claims 2–4, 9, 10, 13, 19–23, 27, 44–46, and
`
`61–65 unpatentable as obvious over Bouevitch, Sparks, and Lin.
`
`D.
`
`Asserted Obviousness Over Bouevitch, Sparks, Lin, and Dueck
`
`Petitioner contends claims 17, 29, and 53 would have been obvious
`
`over Bouevitch, Sparks, Lin, and Dueck. Claim 17 recites the device of
`
`claim 1, wherein the “wavelength-separator comprises an element selected
`
`from the group consisting of ruled diffraction gratings, holographic
`
`diffraction gratings, echelle gratings, curved diffraction gratings, and
`
`dispersing gratings.” Ex. 1001, 15:14–18. Claims 29 and 53 recite similar
`
`18
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`IPR2015-00739
`Patent RE42,678 E
`
`limitations. Petitioner contends that Dueck discloses ruled diffraction
`
`gratings, as claimed. Pet. 47. Petitioner further asserts that it would have
`
`been obvious to try Dueck’s ruled diffraction gratings in the devices of
`
`Bouevitch and Sparks because it represents the “best mode” of separating
`
`wavelengths in WDM devices. Id. at 47–48. Based on the information
`
`presented, Petitioner has demonstrated a reasonable likelihood that it would
`
`prevail in showing claims 17, 29, and 53 unpatentable as obvious over
`
`Bouevitch, Sparks, Lin, and Dueck.
`
`E.
`
`Additional Grounds of Unpatentability
`
`Consistent with the statute and legislative history of the Leahy-Smith
`
`America Invents Act, Pub. L. 112-29, 125 Stat. 284, 329 (2011) (“the AIA”),
`
`the rules promulgated for post-grant proceedings, including those pertaining
`
`to institution, are “construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” 37 C.F.R. § 42.1(b); see also 35 U.S.C.
`
`§ 316(b) (regulations for AIA post-grant proceedings take into account “the
`
`efficient administration of the Office” and “the ability of the Office to timely
`
`complete [instituted] proceedings”). Therefore, we exercise our discretion
`
`and, for reasons of administrative necessity to ensure timely completion of
`
`the instituted proceeding, do not institute a review limited to the grounds
`
`asserting unpatentability of claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46,
`
`53, and 61–65 as obvious over Bouevitch and Sparks; claims 17, 29, and 53
`
`as obvious over Bouevitch, Sparks, and Lin; and, claims 17, 29, and 53 as
`
`obvious over Bouevitch, Sparks, and Dueck. See 37 C.F.R. § 42.108(a).
`
`
`
`
`
`19
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`IPR2015-00739
`Patent RE42,678 E
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that inter partes review of U.S. Patent No. RE42,678 E is
`
`instituted in IPR2015-00739 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);
`
`(2) claims 17, 29, and 53 as obvious over Bouevitch, Sparks, Lin, and
`
`Dueck under 35 U.S.C. § 103(a);
`
`FURTHER ORDERED that no ground other than those specifically
`
`instituted above is authorized for the inter partes review; and
`
`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
`
`IPR2015-00739 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.
`
`20
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`
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`IPR2015-00739
`Patent RE42,678 E
`
`For PETITIONER:
`
`Walter C. Linder
`Paul Sherburne
`FAEGRE BAKER DANIELS LLP
`walter.linder@faegrebd.comken.liebman@faegrebd.com
`paul.sherburne@faegrebd.com
`
`
`
`For PATENT OWNER:
`
`Jason D. Eisenberg
`Robert Greene Sterne
`Jon E. Wright
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-PTAB@skgf.com
`rsterne-PTAB@skgf.com
`jwright-PTAB@skgf.com
`
`
`21
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