Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`JDS UNIPHASE CORPORATION
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`____________________
`
`Case IPR2015-00739
`Patent RE42,678
`____________________
`
`
`PATENT OWNER RESPONSE
`
`

`
`Case IPR2015-00739 of
`U.S. Patent No. RE42,678
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND ............................................................................................. 8
`
`I.
`
`II.
`
`A. Optical circulators limited the scalability of optical switches .............. 8
`
`B.
`
`The ’678 patent captured a novel switch scalable to a large number of
`ports and to a large number of spectral channels ................................ 10
`
`C.
`
`Claims .................................................................................................. 13
`
`III. CLAIMS 1-4, 9, 10, 13, 17, 19-23, 27, 29, 44-46, 53, AND 61-65 ARE NOT
`OBVIOUS OVER THE COMBINATION OF BOUEVITCH, SPARKS,
`AND LIN ....................................................................................................... 14
`
`A.
`
`Petitioner’s obviousness challenge is based on impermissible
`hindsight .............................................................................................. 14
`
`1.
`
`2.
`
`3.
`
`Petitioner’s obviousness challenge relies on various elements
`pulled from distinctly different embodiments .......................... 15
`
`A POSA would not have used a more complex two-axis mirror
`to achieve the same function as a one-axis mirror .................... 18
`
`Replacing the single-axis mirror in Bouevitch with the two-axis
`mirror of Sparks is not a simple substitution ............................ 20
`
`Bouevitch teaches away from misalignment for power control as
`described in Sparks .............................................................................. 24
`
`Bouevitch and Sparks are incompatible technologies ......................... 28
`
`Bouevitch and Dueck are incompatible technologies ......................... 30
`
`Bouevitch does not teach or suggest “multiple fiber collimators,
`providing an input port . . . and a plurality of output ports” as recited
`in independent claims 1, 21, and 44. ................................................... 32
`
`1.
`
`Petitioner incorrectly maps the ’678 patent’s claimed “ports” to
`Bouevitch’s “circulator ports” .................................................. 32
`
`B.
`
`C.
`
`D.
`
`E.
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`Case IPR2015-00739 of
`U.S. Patent No. RE42,678
`Proper meaning of the term “port,” as recited in the ’678 patent
`claims ........................................................................................ 34
`
`The ’678 patent disavows circulator ports ................................ 35
`
`The claimed preamble requires all elements to be either in a
`“wavelength-separating-routing apparatus” or an “optical
`apparatus,” so a POSA would have not construed the claimed
`ports to include circulator ports ................................................ 40
`
`The ’678 patent’s provisional application is consistent with the
`construction that the claimed ports are not circulator ports ...... 41
`
`The meaning of the term “port,” as recited in the claims ......... 43
`
`Bouevitch at most has two ports as recited in the ’678 patent
`claims ........................................................................................ 44
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`F.
`
`G.
`
`The configuration depicted in Bouevitch’s Figure 11 does not reflect
`light beams into the circulator ports .................................................... 45
`
`The applied references do not teach or suggest micromirrors being
`pivotal about two axes and being continuously controllable as recited
`in independent claims 1, 44, and 61 .................................................... 46
`
`1.
`
`2.
`
`3.
`
`4.
`
`Petitioner misconstrues the element “micromirrors being
`pivotal about two axes and being continuously controllable” .. 47
`
`Petitioner concedes that Bouevitch does not teach or suggest
`micromirrors being pivotal about two axes and being
`continuously controllable .......................................................... 48
`
`Sparks does not meet the claimed micromirrors being pivotal
`about two axes and being continuously controllable ................ 49
`
`Lin’s one-axis mirror does not meet the claimed micromirrors
`being pivotal about two axes and being continuously
`controllable ................................................................................ 50
`
`H.
`
`Petitioner fails to provide KSR rationale for combining Sparks and Lin
` ............................................................................................................. 54
`
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`Case IPR2015-00739 of
`U.S. Patent No. RE42,678
`Petitioner does not explain how or why a POSA would have
`incorporated Sparks’s alleged servo-control into Bouevitch .............. 54
`
`I.
`
`IV. THE INDUSTRY ADOPTED CAPELLA’S OPTICAL CONFIGURATION
` ....................................................................................................................... 56
`
`A.
`
`B.
`
`The industry recognized the advantages presented in Capella’s optical
`configuration ....................................................................................... 56
`
`Experts, including Petitioner’s expert, adopted Capella’s ROADM
`configuration ....................................................................................... 57
`
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`
`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
`2005
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
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`Case IPR2015-00739 of
`U.S. Patent No. RE42,678
`
`EXHIBIT LIST
`
`Reference
`Defendant’s Motion to Transfer Venue, Capella Photonics, Inc. v.
`Cisco Systems, Inc., Case Number: 1:14-cv-20529-PAS, Docket
`No. 19, April 4, 2014.
`Capella Photonics Launches Dynamically Reconfigurable
`Wavelength Routing Subsystems, Offering Unprecedented
`Operating Cost Savings and Flexibility for Telecom Service
`Providers, Business Wire (June 2, 2003, 8:16 AM),
`http://www.businesswire.com/news/home/20030602005554/en/Cap
`ella-Photonics-Launches-Dynamically-Reconfigurable-
`Wavelength-Routing.
`WavePath 4500 Product Brief, Capella,
`http://www.capellainc.com/downloads/WavePath%204500%20Pro
`duct%20Brief%20030206B.pdf.
`U.S. Provisional Patent Application No. 60/183,155
`Deposition Transcript of Dan M. Marom, Ph.D.
`Benjamin B. Dingel & Achyut Dutta, Photonic Add-Drop
`Multiplexing Perspective for Next Generation Optical Networks,
`4532 SPIE 394 (2001).
`Tze-Wei Yeow, K. L. Eddie Law, & Andrew Goldenberg, MEMS
`Optical Switches, 39 IEEE Comm. I Mag. no. 11, 158 (2001).
`Clifford Holliday, Components for R-OADMs ’05 (B & C
`Consulting Services & IGI Consulting Inc. 2005) (Excerpts).
`Patrick B. Chu et al., MEMS: the Path to Large Optical
`Crossconnects, 40 IEEE Comm. I Mag. no. 3, 80 (2002).
`Clifford Holliday, Switching the Lightwave: OXC’s – The
`Centerpiece of All Optical Network (IGI Consulting Inc. & B & C
`Consulting Services 2001) (Excerpts).
`An Vu Tran et al., Reconfigurable Multichannel Optical Add-Drop
`Multiplexers Incorporating Eight-Port Optical Circulators and
`Fiber Bragg Gratings, 13 Photonics Tech. Letters, IEEE, no. 10,
`1100 (2001).
`Jungho Kim & Byoungho Lee, Bidirectional Wavelength Add-Drop
`Multiplexer Using Multiport Optical Circulators and Fiber Bragg
`Gratings, 12 IEEE Photonics Tech. Letters no. 5, 561 (2000).
`
`
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`Case IPR2015-00739 of
`U.S. Patent No. RE42,678
`
`Reference
`U.S. Patent No. 6,984,917 to Greywall & Marom.
`U.S. Patent No. 6,657,770 to Marom et al.
`Affidavit of Nicholas J. Nowak in Support of Pro Hac Vice
`Admission Under 37 C.F.R. § 42.10(c)
`Max Born & Emil Wolf, Principles of Optics (Cambridge Univ.
`Press, 6th Corrected Ed. 1986) (Excerpts).
`U.S. Patent No. 6,543,286 to Garverick et al.
`U.S. Patent No. 5,629,790 to Neukermans et al.
`Fraine, D.S. Simon, O. Minaeva, R. Egorov, and A.V. Sergienko,
`Precise evaluation of polarization mode dispersion by separation of
`even- and odd-order effects in quantum interferometry, Optics
`Express v. 19, no. 21, 22820 (2011).
`Abdul Al-Azzawi, Fiber Optics: Principles and Practices (CRC
`Press 2006).
`Metallic Coatings, Eksma Optics, available at
`http://eksmaoptics.com/optical-components/coatings/metallic-
`coatings/.
`Declaration of Dr. Alexander V. Sergienko in Support of the Patent
`Owner Response (“Sergienko Dec.”)
`Curriculum Vitae of Dr. Alexander V. Sergienko
`Network Strategy Partners, LLC, The Business Case for ROADM
`Technology (2006), available at
`https://web.archive.org/web/20130605173554/http://www.cisco.co
`m/en/US/prod/collateral/optical/ps5724/ps2006/prod_white_paper0
`900aecd8052b792.pdf.
`Herzel Laor et al., Construction and Performance of a 576x576
`Single-Stage OXC, in 2 IEEE Lasers and Electro-Optics Society
`1999 12th Annual Meeting, at 481 (1999).
`U.S. Patent No. 6,798,941 to Smith et al.
`Ming C. Wu, Olav Solgaard, & Joseph E. Ford, Optical MEMS for
`Lightwave Communication, 24 J. Lightwave Tech. 4433 (2006).
`U.S. Patent No. 6,178,284 to Bergmann & Joseph E. Ford et al.
`U.S. Patent No. 6,178,033 to Joseph E. Ford et al.
`U.S. Patent No. 6,859,573 to Bouevitch et al.
`
`Exhibit No.
`2013
`2014
`2015
`
`2016
`
`2017
`2018
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`2024
`
`2025
`
`2026
`2027
`
`2028
`2029
`2030
`
`
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`Case IPR2015-00739 of
`U.S. Patent No. RE42,678
`
`Exhibit No.
`2031
`
`2032
`
`2033
`2034
`
`Reference
`J. E. Ford, Optical MEMS: Legacy of the telecom boom, Solid-State
`Sensor, Actuator and Microsystems Workshop, Hilton Head, SC,
`Jun. 6-10 (2004).
`Deposition Transcript of Mr. Sheldon McLaughlin for Cases
`IPR2015-00731 and IPR2015-00739, dated October 22, 2015
`U.S. Patent No. 7,676,126 to McLaughlin et al.
`U.S. Patent No. 8,233,794 to Colbourne & McLaughlin et al.
`
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`Case IPR2015-00739 of
`U.S. Patent No. RE42,678
`
`I.
`
`Introduction
`
`Capella’s U.S. Patent No. RE42,678 ( “’678 patent”) claims at least two
`
`unique features: (1) multiple fiber collimators, providing an input port for a multi-
`
`wavelength optical signal and a plurality of output ports, and (2) micromirrors
`
`being pivotal about two axes and being individually and continuously controllable.
`
`These unique features allow the system to reflect individual spectral channels from
`
`an input fiber collimator to any selected output fiber collimator. The optical system
`
`in the ’678 patent has both of these features, so the system is reconfigurable, highly
`
`scalable, and can eliminate lossy and unwanted peripheral devices, such as
`
`circulators, that were traditionally coupled to optical switches.
`
`Figures 1A and 1B of the ’678 patent
`
`Input Port and Output Ports 110
`
`
`
`
`
`
`
`Micromirror Array 103
`
`
`
`
`
`
`Optical systems at the time of the ’678 patent were forced to
`
`utilize undesirable optical circulators. A circulator circulates
`
`optical signals from one circulator port or opening to the next.
`
`Referencing the schematic reproduced herein, light can both enter
`
`and exit circulator ports 1, 2, and 3. Light entering circulator port 1 is emitted from
`
`
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`Case IPR2015-00739 of
`U.S. Patent No. RE42,678
`circulator port 2, light entering circulator port 2 is emitted from circulator port 3,
`
`and light entering circulator port 3 is emitted from circulator port 1. Circulators
`
`were effective to perform the simple task of separating incoming and outgoing
`
`optical signals, but optical systems using circulators were not scalable to a large
`
`number of ports or to a large number of spectral channels because every added
`
`circulator contributed cost, bulk, and insertion loss (i.e., crosstalk between
`
`channels) to the optical system without adding fiber collimators or increasing the
`
`number of spectral channels.
`
`To overcome these limitations, the inventors of the ’678 patent designed an
`
`optical configuration with multiple fiber collimators as ports and an array of two
`
`axis beam-deflecting elements. This configuration differentiated Capella from
`
`competitors because Capella’s system was reconfigurable, scalable to a large
`
`number of ports, and scalable to a large number of spectral channels. (See Ex.
`
`1001, ’678 patent, 5:56-58, FIG. 1A (capable of seamlessly adding a port 110-N to
`
`the array of ports 110); see also Ex. 2002, Business Wire, p. 2 (“The introduction
`
`of dynamic reconfigurability will enable service providers to drastically reduce
`
`operating expenses associated with planning . . . by offering remote and dynamic
`
`reconfigurability.”); Ex. 2008, Holliday R-OADMs, p. 61 (“Capella is the only
`
`company to offer a 10-fiber port solution, i.e., one input, one express output, and 8
`
`service ports.”); Ex. 2003, WavePath, pp. 1, 4; Ex. 2022, Sergienko Dec., ¶¶ 41-46,
`
`
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`Case IPR2015-00739 of
`U.S. Patent No. RE42,678
`59-76, 207-08.) Further, Capella was able to use individual channel micromirrors
`
`to reflect spectral channels to any selected output fiber collimator—something that
`
`cannot be done with circulator-based systems because in circulators, light merely
`
`enters one circulator port and exits the next.
`
`In a failed attempt to piece together Capella’s configuration, Petitioner uses
`
`three references: (1) U.S. Patent No. 6,498,872 to Bouevitch et al. (“Bouevitch”);
`
`(2) U.S. Patent No. 6,625,340 to Sparks et al. (“Sparks”); and (3) U.S. Patent No.
`
`5,661,591 to Lin et al. (“Lin”). Combining these references is problematic for at
`
`least the following reasons.
`
`As a threshold matter, no person having ordinary skill in the art (“POSA”)
`
`would have found it obvious to combine the references because they are
`
`incompatible. Petitioner contends that using Sparks’s two-axis mirror in Bouevitch
`
`would have been a “simple substitution,” “obvious to try,” and “predictable.”
`
`However Petitioner does not explain how a POSA would have combined the
`
`references or how a POSA would have reconciled the technical incompatibilities
`
`between the references. Contrary to Petitioner’s contentions, the combination is
`
`complex, would have required undue experimentation, and is a product of
`
`hindsight bias.
`
`As the Board can glean from the applied references and the expert
`
`declarations, Petitioner over-simplifies issues and leaps to conclusions on
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`Case IPR2015-00739 of
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`combinability. Instead, Petitioner relies on what amounts to nothing more than
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`impermissible hindsight to reconstruct Capella’s invention, namely using the ’678
`
`patent claims and specification as a roadmap to pick and choose various discreet
`
`elements from disparate embodiments and disparate references. The embodiments
`
`and references are not combinable in this manner, so the Board should uphold the
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`patentability of all instituted claims.
`
`The references are also not combinable because Bouevitch specifically
`
`teaches away from misalignment and angular displacement for power control—the
`
`very method by which Sparks performs power control. Specifically, Bouevitch
`
`teaches that “angular displacement is disadvantageous with respect to coupling the
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`add/drop and/or input/output beams of light into parallel optical waveguides . . . .”
`
`(Ex. 1003, Bouevitch, 2:1-7 (emphasis added).) Moreover, a core aspect of
`
`Bouevitch’s invention is fixing or compensating for any misalignment or angular
`
`displacement to increase coupling efficiency. (Sergienko Dec., ¶¶ 85, 97, 144-48.)
`
`Sparks, in sharp contrast, requires misalignment to control power at the output
`
`port. (Ex. 1004, Sparks, 2:26-28 (“By controlling the misalignment of the optical
`
`beam path through the switch, the optical signal can be attenuated in a controlled
`
`manner.”), 4:48-50 (“The present invention utilises [sic] a control system to control
`
`the mirrors so as to deliberately misalign the optical beam path 30 through the
`
`switch.”).) This teaching away by Bouevitch of misalignment and angular
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`Case IPR2015-00739 of
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`displacement for power control—the very method employed by Sparks—further
`
`demonstrates the incongruity of Petitioner’s obviousness challenge.
`
`Regardless of whether Bouevitch teaches away from misalignment and
`
`angular displacement, Bouevitch and Sparks are incompatible technologies that do
`
`not work together. Bouevitch is designed to modulate the power at its modifying
`
`means—away from and on the opposite end of its system from the input and output
`
`ports. It is in this way that Bouevitch creates an optical configuration that controls
`
`power, while efficiently coupling the output beam to the output port. Indeed,
`
`“efficient coupling” is what Bouevitch calls the spirit and scope of [his alleged]
`
`invention.” (See Bouevitch, 15:19-30; Sergienko Dec., ¶ 148.) Sparks, on the other
`
`hand, is in direct conflict with Bouevitch’s teachings because Sparks performs
`
`attenuation by misaligning the output beam to the output port.
`
`Beside the fact that no POSA would have combined these references, the
`
`Board should also uphold patentability of all instituted claims because the asserted
`
`combination does not disclose each and every claim element, e.g., (1) at least three
`
`fiber collimator ports, and (2) beam-deflecting elements pivotable about two axes
`
`and being continuously controllable.
`
`The first reference, Bouevitch, discloses an optical system comprising at
`
`most two collimator ports. Like the prior-art systems described in the ’678 patent,
`
`Bouevitch uses peripheral circulators to add optical signals to an input port and to
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`Case IPR2015-00739 of
`U.S. Patent No. RE42,678
`drop optical signals from an output port. To compare the ’678 patent to Bouevitch,
`
`the multiple fiber collimators that provide an input port and multiple output ports
`
`in the ’678 patent and the circulators in Bouevitch are reproduced below:
`
`
`
`Figure 1A of the ’678 patent
`
`
`
`
`
`Figure 11 of Bouevitch
`
`
`
`
`Petitioner contends that the circulator ports in Bouevitch read on the claimed
`
`“input port” and “output ports.” But such interpretation is inconsistent with the
`
`’678 patent, the ’678 patent’s earliest provisional application, and the inventors’
`
`underlying motivation to design an optical switch scalable to a large number of
`
`ports. The ’678 patent, its earliest provisional application, and Bouevitch itself
`
`distinguish circulators from the claimed fiber collimators providing the “ports” and
`
`emphasize that conventional optical systems could not scale to a large number of
`
`ports or to a large number of spectral channels because conventional optical
`
`systems, like Bouevitch, utilized circulators. (See, e.g., ’678 patent, 3:54-58, 4:52-
`
`63.) The ’678 patent explicitly labels its ports “collimators” and provides public
`
`notice that the present invention is using multiple fiber collimators to provide the
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`Case IPR2015-00739 of
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`ports. As a result, the multiple fiber collimator ports in the ’678 patent cannot be
`
`read to encompass circulator ports like those used in Bouevitch. Additionally,
`
`throughout the ’678 patent, its provisional application, and in Bouevitch itself,
`
`circulators are always shown and taught as being downstream, spaced from, and
`
`coupled to a port. Construing the claimed fiber collimator ports to read on optical
`
`circulator ports is contrary to the ’678 patent and diminishes the capabilities that
`
`the ’678 patent brought to the industry.
`
`The combination of references also does not teach or suggest micromirrors
`
`being pivotable about two axes and being continuously controllable. For this claim
`
`element, Petitioner uses Sparks and Lin. Sparks and Lin, however, do not teach
`
`micromirrors being pivotable about two axes and being continuously controllable.
`
`Even more problematic than the shortcomings of Sparks and Lin for this
`
`feature, Petitioner provides no KSR rationale for combining Sparks and Lin or for
`
`combining both references with Bouevitch. Petitioner fails to show in the Petition
`
`that the combination teaches or suggests micromirrors being pivotable about two
`
`axes and being continuously controllable or that a POSA would have been
`
`motivated to combine the references—deficiencies that cannot be cured. As a
`
`result, the Board should uphold patentability of all instituted claims.
`
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`
`II. Background
`At the time of the effective filing date of the ’678 patent—March 19, 2001—
`
`the number one concern for fiber optic carriers was the ability to provide an optical
`
`switch scalable to a large number of ports and to a large number of spectral
`
`channels. (See Ex. 2007, Yeow, p. 163 (“[O]ptical switches need the capability to
`
`scale in order to manipulate the increased number of wavelengths. MEMS-based
`
`optical switches must incorporate this key feature to gain widespread acceptance of
`
`the carriers.”); Ex. 2009, Chu, p. 81 (“scalability is a paramount concern”);
`
`Sergienko Dec., ¶¶ 47-51, 71.) Providing a scalable switch was an important
`
`concern because the demand for fiber optics communication was increasing, even
`
`as much as 400% per year. (See Ex. 2010, Holliday OXC, p. 12; Sergienko Dec., ¶
`
`47; see also ’678 patent, 1:32-36 (“there is a growing demand for optical
`
`components and subsystems that enable the fiber-optic communications networks
`
`to be increasingly scalable, versatile, robust, and cost-effective”).)
`
`A. Optical circulators limited the scalability of optical switches
`Optical switches were unable to meet increasing demand because optical
`
`switches were typically limited to two ports. (Sergienko Dec., ¶¶ 51-56, 67-70, 76.)
`
`Optical switches required multi-wavelength signals to enter the optical switch on a
`
`single fiber and exit the optical switch on a single fiber (i.e., two ports). (See ’678
`
`patent, 1:59-63; Ex. 1008, ’217 Provisional, p. 2; Sergienko Dec., ¶¶ 48, 51-55, 67-
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`68, 76.) An additional means was required to be coupled to the ports to both add
`
`optical signals to an input fiber and to drop optical signals from an output fiber.
`
`(See ’678 patent, 1:59-63; ’217 Provisional, p. 2; Sergienko Dec., ¶¶ 48, 52, 55,
`
`69.) Optical circulators and wavelength multiplexers/demultiplexers often served
`
`as the additional means to add and drop optical signals from the two ports. (See
`
`’678 patent, 1:59-2:2; ’217 Provisional, p. 2; Sergienko Dec., ¶¶ 48, 52-55, 69.)
`
`Despite having the capability to add and drop signals, circulators increased the
`
`physical size of a system, contributed to optical loss, and increased costs. (See Ex.
`
`2006, Dingel, p. 401; Sergienko Dec., ¶¶ 51, 55.)
`
`Around the invention date of the ’678 patent, one attempt to meet increasing
`
`demand was to concatenate optical switches (i.e., connecting multiple optical
`
`switches in a chain). (See ’678 patent, 1:59-63; Sergienko Dec., ¶¶ 52-55.)
`
`However, concatenating optical switches also substantially added bulk and cost.
`
`(Sergienko Dec., ¶ 55.) Other inventors were attempting to add circulator ports to
`
`circulators. (See, e.g., Ex. 2011, Tran, p. 1100 (disclosing a circulator with eight
`
`circulator ports); Ex. 2012, Kim, p. 561 (disclosing a circulator with six circulator
`
`ports); Sergienko Dec., ¶ 51.) Systems using complex circulators, however, still
`
`had limited scalability because the circulators only had two output paths from an
`
`optical switch. (Sergienko Dec., ¶ 51.) Ultimately, the industry needed a system
`
`that eliminated optical circulators, while providing an optical switch scalable to
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`both a large number of ports and a large number of spectral channels. (See ’678
`
`patent, 1:32-36; Sergienko Dec., ¶¶ 46, 71-76; see also Sergienko Dec., ¶¶ 45-46,
`
`207-08 (describing industry adoption of the configuration for mesh networks).)
`
`B.
`
`The ’678 patent captured a novel switch scalable to a large
`number of ports and to a large number of spectral channels
`
`The inventors of the ’678 patent recognized the limitations of circulator-
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`based optical switches. (See ’678 patent, 2:49-57, 3:45-46; Sergienko Dec., ¶¶ 51-
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`55.) To address the problem of limited scalability, the inventors disclosed a
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`multiple port optical switch scalable to a large number of spectral channels. (See
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`’678 patent, 5:51-58 (“[The] underlying architecture is intrinsically scalable to a
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`large number of channel counts.”); Sergienko Dec., ¶¶ 56, 59-67, 72-75, 169-72.)
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`Figures 1A/1B (reproduced below) depict the claimed features of the ’678
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`patent—fiber collimator ports and an array of two axis beam-deflecting elements.1
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`Figures 1A and 1B of the ’678 patent
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`1 Micromirrors are the preferred embodiment for the array of beam-
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`deflecting elements.
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`Case IPR2015-00739 of
`U.S. Patent No. RE42,678
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`The system has, as circled in red, multiple fiber collimators 110-N serving as
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`the structure for the input and output ports. (See, e.g., ’678 patent, Abstract, FIG.
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`1A.) The ’678 patent describes a collimator as “typically in the form of a
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`collimating lens (such as a GRIN lens) and a ferrule-mounted fiber packaged
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`together in a mechanically rigid stainless steel (or glass) tube.” (Id. at 9:17-20.)
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`In the system, a multi-wavelength light beam is first sent through the input
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`fiber collimator port 110. (See id. at 6:64-7:11; Sergienko Dec., ¶ 60.) The input
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`light beam impinges on the diffraction grating to demultiplex the light beam into
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`individual wavelengths. (See ’678 patent, 6:64-7:11; Sergienko Dec., ¶ 60.) The
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`individual wavelengths then diffract off the diffraction grating 101 toward the lens.
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`(See ’678 patent, 6:64-7:11; Sergienko Dec., ¶ 60.) The lens focuses the individual
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`wavelengths onto different mirrors among the micromirrors 103. (See ’678 patent,
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`6:64-7:11; Sergienko Dec., ¶¶ 60, 62.)
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`A unique feature of the ’678 patent is that each micromirror is pivotable
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`about two axes, individually and continuously controllable. (See ’678 patent, 8:21-
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`27, 9:8-9; Sergienko Dec., ¶¶ 63, 66-67.) Since each of the micromirrors 103 is
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`assigned to a specific spectral channel and is individually and continuously
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`controllable about two axes, the system can dynamically reflect any spectral
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`channel to any output port. (See ’678 patent, 3:64-4:6, 8:21-27, 9:8-9; Sergienko
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`Dec., ¶¶ 60-63, 66-67.)
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`Case IPR2015-00739 of
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`The configuration disclosed in the ’678 patent not only enabled dynamic
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`switching but also reduced the number of components required to scale the system.
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`(’678 patent, 5:36-40 (“the underlying OADM architecture thus presented is
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`intrinsically scalable and [is a system that] can be readily extended.”); Sergienko
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`Dec., ¶¶ 73-76.)
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`Neither scaling to a larger number of ports nor scaling to a larger number of
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`spectral channels required expensive and bulky components, such as circulators,
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`multiplexers, and demultiplexers. (See Sergienko Dec., ¶¶ 71-76.) For example, the
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`array of fiber collimators serving as ports 110-N could seamlessly accommodate an
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`additional input to the system or an additional spectral output from the system—
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`without the need for circulators. (See ’678 patent, FIGS. 1A, 2A, 2B, 3; Sergienko
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`Dec., ¶¶ 73-76; see also Business Wire, pp. 2-3 (“Capella’s WavePath product line
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`[(which uses the technology disclosed in the ’678 patent)] enables system
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`architects to design optical platforms that offer dynamic and remote
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`reconfigurability, thus greatly simplifying the engineering and provisioning of
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`optical networks.”); WavePath, pp. 1, 4 (showing that the WavePath product line is
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`covered by the ’678 patent).) The system could also scale to additional spectral
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`channels by adding a micromirror to the micromirrors 103. (Sergienko Dec., ¶ 75.)
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`The individually and continuously controllable mirrors are used not only for
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`switching, but also for power control. (See ’678 patent, 8:28-36; Sergienko Dec.,
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`Case IPR2015-00739 of
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`¶¶ 77-79.) The system controls power by altering the coupling efficiency of the
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`spectral channels into the respective fiber collimator output ports. (See ’678 patent,
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`8:28-36; Sergienko Dec., ¶ 77.) The coupling efficiency is defined as the ratio of
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`the amount of optical power that is coupled into the fiber collimator output port’s
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`fiber core to the total amount of optical power from the light beam. (’678 patent,
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`8:31-36; Sergienko Dec., ¶ 77.)
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`Embodiments of the ’678 patent also utilize servo-control. (’678 patent,
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`4:47-56, 11:52-57; Sergienko Dec., ¶¶ 78-79.) An embodiment of the servo-control
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`assembly is depicted in Figure 4A of the ’678 patent. (See ’678 patent, FIG. 4A;
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`Sergienko Dec., ¶¶ 78-79.)
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`C. Claims
`The elements of the ’678 patent are incorporated into the claims. The ’678
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`patent claims recite the following features in illustrative claim 1 (emphasis added):
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`Claim 1. A wavelength-separating-routing apparatus, comprising:
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`a) multiple fiber collimators, providing an input port for a multi-
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`wavelength optical signal and a plurality of output ports . . . and
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`d) a spatial array of channel micromirrors positioned such that each
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`channel micromirror receives one of said spectral channels, said
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`channel micromirrors being pivotal about two axes and being
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`individually and continuously controllable to reflect corresponding
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`Case IPR2015-00739 of
`U.S. Patent No. RE42,678
`received spectral channels into any selected ones of said output ports
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`and to control the power of said received spectral channels coupled
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`into said output ports.
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`III. Claims 1-4, 9, 10, 13, 17, 19-23, 27, 29, 44-46, 53, and 61-65 are not
`obvious over the combination of Bouevitch, Sparks, and Lin
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`A POSA would not have combined Bouevitch, Sparks, and Lin in the
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`manner presented by Petitioner because the combination could only have been
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`made through impermissible hindsight, Bouevitch teaches away from Sparks’s
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`technology, and Bouevitch and Sparks are incompatible technologies. But even if
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`properly combinable, the combination does not render the claims obvious. The
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`combination fails to teach or suggest multiple fiber collimators providing an input
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`port and a plurality of output ports, as respectively claimed. The combination also
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`fails to teach or suggest micromirrors being pivotal about two axes and being
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`continuously controllable. For at least these reasons, the Board should uphold the
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`patentability of the instituted claims.
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`A.
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`Petitioner’s obviousness challenge is based on impermissible
`hindsight
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`A POSA would not have made Petitioner’s combination of Bouevitch,
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`Sparks, Lin, and Dueck absent impermissible hindsight. (Sergienko Dec., ¶¶ 121-
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`40, 217.) Instead, Petitioner started with the ’678 patent and used it as a roadmap
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`to pick and choose elements from multiple disparate embodiments found primarily
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`Case IPR2015-00739 of
`U.S. Patent No. RE42,678
`in Bouevitch and Sparks. Petitioner used these embodiments to construct an optical
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`system that allegedly maps to the claims of the ’678 patent.
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`Petitioner repeatedly takes elements from disparate, incompatible
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`technologies and attempts to piece them together to garner all of the claim
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`elements. (Id. at 124-30.) Petitioner does so without explaining why or how a
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`POSA would have been able to reconcile how the disparate technologies could or
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`would operate together. (Id. at 123.) This is classic hindsight reconstruction of
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`Capella’s claims. See In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991) (“It is
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`impermissible [to use] applicant’s structure as a template and select[] elements
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`from references to fill the gaps.”)
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`1.
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`Petitioner’s obviousness challenge relies on various
`elements pulled from distinctly different embodiments
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`As an initial matter, the Board should uphold the patentability of all
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`instituted claims because Petitioner combines disparate embodiments disclosed in a
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`single reference without providing KSR rationale. When a petitioner relies on
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`disparate embodiments, even if those embodiments are disclosed in the same
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`reference, the p