Petition for Inter Partes Review of
`U.S. Reissued Patent No. RE42,368
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Ciena Corporation,
`
`Coriant Operations, Inc. (formerly Tellabs Operations, Inc.),
`
`Coriant (USA) Inc., and
`
`Fujitsu Network Communications, Inc.
`
`Petitioner
`
`v.
`
`Capella Photonics, Inc.
`Patent Owner
`
`Patent No. RE42,368
`Filing Date: June 15, 2010
`Reissue Date: May 17, 2011
`
`Title: RECONFIGURABLE OPTICAL ADD-DROP MULTIPLEXERS WITH
`SERVO CONTROL AND DYNAMIC SPECTRAL POWER MANAGEMENT
`CAPABILITIES
`
`
`
`Inter Partes Review
`
`

`

`
`INTRODUCTION ........................................................................................ 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ................... 1
`A.
`Real Parties-In-Interest under 37 C.F.R. § 42.8(b)(1) ........................ 1
`B.
`Related Matters under 37 C.F.R. § 42.8(b)(2) .................................... 2
`C.
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) ................. 3
`D.
`Service Information .............................................................................. 4
`E.
`Powers of Attorney ............................................................................... 4
`III. PAYMENT OF FEES - 37 C.F.R. § 42.103 ............................................... 4
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37
`C.F.R. § 42.104 ............................................................................................. 4
`A. Grounds for Standing under 37 C.F.R. § 42.104(a) ............................ 4
`B.
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested ................................................ 5
`Threshold Requirement for Inter Partes Review 37 C.F.R. §
`42.108(c) ............................................................................................... 6
`BACKGROUND OF TECHNOLOGY RELATED TO THE ’368
`PATENT ........................................................................................................ 6
`VI. SUMMARY OF THE ’368 PATENT ......................................................... 8
`VII. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ............ 11
`A.
`Legal Overview .................................................................................. 11
`B.
`[Controllable] “in two dimensions” ................................................... 11
`C.
`“To control the power of the spectral channel…” and "to reflect
`its corresponding spectral channel to a selected one of said
`ports" (Claims 1-16); "whereby a subset of said spectral
`channels is directed to said drop ports" (Claim 15); and “for
`monitoring power levels” and “for controlling said beam-
`deflecting elements” (Claim 3) .......................................................... 12
`“So as to combine selected ones of said spectral channels into
`an output” and "so as…to control the power" (claims 17-22) ........... 13
`“Continuously controllable” ............................................................... 14
`“Servo-control assembly” (Claims 3 & 4) ........................................ 15
`
`E.
`F.
`
`C.
`
`V.
`
`D.
`
`TABLE OF CONTENTS
`
`PAGE
`
`i
`
`

`

`
`
`E.
`
`“Spectral monitor"(claim 3) ............................................................... 16
`G.
`“Beam-focuser" (claim 11) ................................................................ 17
`H.
`VIII. CLAIMS 1-6, 9-13, AND 15-22 OF THE ’368 PATENT ARE
`UNPATENTABLE ..................................................................................... 18
`A.
`Bouevitch, Smith, Lin and Dueck are all prior art to the ‘368
`patent .................................................................................................. 18
`B. Overview of the Bouevitch Prior Art ................................................. 19
`C. Overview of the Smith Prior Art ........................................................ 20
`D.
`PHOSITA had ample motivation to combine Bouevitch with
`Smith, including the motivations disclosed in both references .......... 21
`Bouevitch in View of Smith and Lin Render Obvious Claims 1-
`6, 9-11, 13, and 15-22, and Bouevitch in View of Smith, Lin,
`and Dueck Render Obvious Claim 12 ................................................ 24
`1.
`Claim 1 – Ground 1 .................................................................. 25
`(1) Claim 1 - preamble .............................................. 25
`(2) Claim element 1[a] - input port ........................... 25
`(3) Element 1[b] – Output & other ports for 2nd
`channels ............................................................... 26
`(4) Element 1[c] - wavelength-selective device ....... 27
`(5) Element 1[d] – 2-axis beam-deflecting
`elements ............................................................... 28
`2-axis beam-deflecting elements ......................... 32
`(6)
`Power Control using 2-Axis Mirrors: ................ 34
`(7)
`Claim 2 – Ground 1 .................................................................. 36
`Claim 3 – Ground 1 .................................................................. 38
`Claim 4 – Ground 1 .................................................................. 42
`Claim 5 – Ground 1 .................................................................. 43
`Claim 6 – Ground 1 .................................................................. 44
`Claim 9 – Ground 1 .................................................................. 46
`
`2.
`3.
`4.
`5.
`6.
`7.
`
`TABLE OF CONTENTS
`CONTINUED
`
`PAGE
`
`ii
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`

`

`TABLE OF CONTENTS
`CONTINUED
`
`PAGE
`
`
`
`Claim 10 – Ground 1 ................................................................ 46
`8.
`Claim 11 – Ground 1 ................................................................ 47
`9.
`10. Claim 12 – Ground 2 ................................................................ 48
`11. Claim 13 – Ground 1 ................................................................ 49
`12. Claim 15 – Ground 1 ............................................................... 50
`(1) Element 15[c] – drop ports for dropped
`channels ............................................................... 50
`(2) Element 15[d]-[e] ................................................ 51
`(3) Element 15[f] – dropped channels to drop
`ports ..................................................................... 51
`13. Claim 16 – Ground 1 ............................................................... 51
`(1) Element 16[c] – Add ports for added
`channels ............................................................... 52
`(2) Element 16[e] – Addition of channels from
`add ports .............................................................. 53
`14. Claim 17 – Ground 1 ................................................................ 53
`(1) Element 17[a] – Separating signal into
`channels ............................................................... 54
`(2) Element 17[b] – Imaging channels ..................... 54
`(3) Element 17[c] – Dynamic & continuous 2-
`axis control .......................................................... 55
`15. Claim 18 – Ground 1 ................................................................ 56
`16. Claim 19 – Ground 1 ................................................................ 57
`17. Claim 20 – Ground 1 ................................................................ 57
`18. Claim 21 – Ground 1 ................................................................ 58
`19. Claim 22 – Ground 1 ................................................................ 59
`IX. WRITTEN DESCRIPTION SUPPORT FOR THE SMITH
`PATENT’S SEPTEMBER 22, 2000, PRIORITY DATE ....................... 60
`
`
`
`iii
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`

`

`
`
`List of Exhibits Cited in this Petition
`
`Exhibit 1001: U.S. Reissued Patent No. RE42,368 to Chen et al. (“‘368 patent”)
`
`Exhibit 1002: File History of U.S. Patent No. RE42,368 to Chen et al. (“‘368 File
`History”)
`
`Exhibit 1003: U.S. Patent No. 6,498,872 to Bouevitch et al. (“Bouevitch”)
`
`Exhibit 1004: U.S. Patent No. 6,798,941 to Smith et al. (“Smith Patent,” or
`“Smith”)
`
`Exhibit 1005: Provisional Patent App. No. 60/234,683 (“Smith Provisional”)
`
`Exhibit 1006: U.S. Patent No. 6,798,992 to Bishop et al. (“Bishop”)
`
`Exhibit 1007: U.S. Patent No. 6,507,421 to Bishop et al. (“Bishop ‘421”)
`
`Exhibit 1008: Provisional Patent App. No. 60/277,217 (“‘368 Provisional”)
`
`Exhibit 1009: U.S. Patent No. 6,253,001 to Hoen (“Hoen”)
`
`Exhibit 1010: U.S. Patent No. 5,661,591 to Lin et al. (“Lin”)
`
`Exhibit 1011: Doerr et al., An Automatic 40-Wavelength Channelized Equalizer,
`IEEE Photonics Technology Letters, Vol. 12, No. 9 (Sept. 2000)
`
`Exhibit 1012: U.S. Patent No. 5,936,752 to Bishop et al. (“Bishop ‘752”)
`
`Exhibit 1013: Excerpt from New World English Dictionary (“servo” and
`“servomechanism”)
`
`Exhibit 1014: Excerpt from Collins English Dictionary - Complete & Unabridged
`10th Edition. HarperCollins Publishers.
`http://dictionary.reference.com/browse/feedback (accessed: May
`07, 2014) (“feedback”)
`
`Exhibit 1015: Ford et al., Wavelength Add–Drop Switching Using Tilting
`Micromirrors, Journal of Lightwave Technology, Vol. 17, No. 5
`(May 1999) (“Ford”)
`
`Exhibit 1016: U.S. Patent No. 6,069,719 to Mizrahi (“Mizrahi”)
`
`iv
`
`

`

`
`Exhibit 1017: U.S. Patent No. 6,204,946 to Aksyuk et al. (“Aksyuk”)
`
`Exhibit 1018: U.S. Patent Application Publication No. US 2002/0105692 to
`Lauder et al. (“Lauder”)
`
`Exhibit 1019: Giles et al., Reconfigurable 16-Channel WDM DROP Module
`Using Silicon MEMS Optical Switches, IEEE Photonics
`Technology Letters, Vol. 11, No. 1 (Jan. 1999) (“Giles 16-Channel
`WDM DROP Module”)
`
`Exhibit 1020: Andrew S. Dewa and John W. Orcutt, Development of a silicon 2-
`axis micro-mirror for optical cross-connect, Technical Digest of the
`Solid State Sensor and Actuator Workshop, Hilton Head Island, SC,
`June 4-8, 2000) at pp. 93-96 (“Dewa”)
`
`Exhibit 1021: U.S. Patent No. 6,011,884 to Dueck et al. (“Dueck”)
`
`Exhibit 1022: U.S. Patent No. 6,243 ,507 to Goldstein et al. (“Goldstein ‘507”)
`
`Exhibit 1023: U.S. Patent No. 6,567,574 to Ma et al. (“Ma”)
`
`Exhibit 1024: U.S. Patent No. 6,256,430 to Jin et al. (“Jin”)
`
`Exhibit 1025: U.S. Patent No. 6,631,222 to Wagener et al. (“Wagener”)
`
`Exhibit 1026: U.S. Patent No. 5,875,272 to Kewitsch et al. (“Kewitsch”)
`
`Exhibit 1027: U.S. Patent No. 6,285,500 to Ranalli et al. (“Ranalli”)
`
`Exhibit 1028: Declaration of Dr. Dan Marom (“Decl.”)
`
`Exhibit 1029: Curriculum Vitae of Dr. Dan Marom
`
`Exhibit 1030: James A. Walker et al., Fabrication of a Mechanical Antireflection
`Switch for Fiber-to-the-Home Systems, 5 J. Microelectromechanical
`Sys. 45, 46-47, Fig. 3 (1996) (“Walker”)
`
`Exhibit 1031: U.S. Patent No. 5,414,540 to Patel et al. (“Patel”)
`
`Exhibit 1032: Borella et al., Optical Components for WDM Lightwave Networks,
`Proceedings of the IEEE, Vol. 85, NO. 8, August 1997 (“Borella”)
`
`v
`
`

`

`
`Exhibit 1033: U.S. Patent No. 6,928,244 to Goldstein et al. (“Goldstein ‘244”)
`
`Exhibit 1034: Steffen Kurth et al., Silicon Mirrors and Micromirror Arrays for
`Spatial Laser Beam Modulation, Sensors and Actuators, A 66, July
`1998 (“Kurth”)
`
`Exhibit 1035: C. Randy Giles and Magaly Spector, The Wavelength Add/Drop
`Multiplexer for Lightwave Communication Networks, Bell Labs
`Technical Journal, (Jan.-Mar. 1999) (“Giles and Spector”)
`
`Exhibit 1036: U.S. Patent No. 5,872,880 to Maynard (“Maynard patent”)
`
`Exhibit 1037: R.E. Wagner and W.J. Tomlinson, Coupling Efficiency of Optics in
`Single-Mode Fiber Components, Applied Optics, Vol. 21, No. 15,
`pp. 2671-2688 (August 1982)
`
`Exhibit 1038: Excerpts from Born et al., PRINCIPLES OF OPTICS (6th Ed.,
`Pergammon Press 1984) (“Born”)
`
`Exhibit 1039: Redline Showing Changes from IPR2014-01166 Petition to Joinder
`Petition
`
`Exhibit 1040: Redline Showing Changes from IPR2014-01166 Petition Exhibit
`1028 (Marom Declaration) to Joinder Petition Exhibit 1028
`(Marom Declaration)
`
`
`
`
`
`
`
`vi
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`

`

`Petition for Inter Partes Review of
`U.S. Reissued Patent No. RE42,368
`
`I.
`
`INTRODUCTION
`
`Ciena Corporation, Coriant Operations, Inc., Coriant (USA) Inc., and Fujitsu
`
`Network Communications, Inc. (collectively, “Petitioner”) requests inter partes
`
`review under 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, of claims 1-6, 9-13, and
`
`15-22 (the “Petitioned Claims”) of U.S. Patent No. RE42,368 (Ex. 1001) (“the
`
`‘368 patent”), assigned on its face to Capella Photonics, Inc.
`
`In prosecuting its reissue patent, Patentee admitted that its original claim set
`
`was overbroad and invalid in light of U.S. Patent No. 6,498,872 (Ex. 1003)
`
`(“Bouevitch”). To fix this claim drafting mistake and to distinguish over Ex. 1003,
`
`Patentee made two amendments to all of its independent claims. But those
`
`amendments merely swapped one known component for another known
`
`component. As described in the body of this petition, those amendments swapped
`
`one known type of mirror for another known type of mirror.
`
`While the Patentee’s reissue amendments may have addressed the novelty
`
`issues in light of Ex. 1003, those amendments do not overcome obviousness.
`
`Bouevitch in combination with the prior art described in the body of this petition
`
`renders the Petitioned Claims invalid as obvious.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`A. Real Parties-In-Interest under 37 C.F.R. § 42.8(b)(1)
`Ciena Corporation, Coriant Operations, Inc. (“COI”), Coriant (USA) Inc.
`
`1
`
`

`

`Petition for Inter Partes Review of
`U.S. Reissued Patent No. RE42,368
`
`(“CUSA”), Fujitsu Network Communications, Inc. (“FNC”), and Fujitsu Limited
`
`are real parties-in-interest for this petition. Tellabs, Inc., a parent holding company
`
`of COI, was accused in litigation identified herein of infringing the ‘368
`
`Patent. Even though Tellabs, Inc. was dismissed on jurisdictional grounds,
`
`Tellabs, Inc., and CUSA’s corresponding parent holding company, Coriant
`
`International Group LLC) (formerly Blackhawk Holding Vehicle LLC), are also
`
`identified in this section out of an abundance of caution.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`The ’368 patent is asserted against Petitioner and other parties in the
`
`following on-going patent lawsuits (Capella litigation): 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, 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.) (stayed), and Capella
`
`Photonics, Inc. v. Telefonica Int’l Wholesale Servs. USA, Inc., No. 1:14-cv-22701
`
`(S.D. Fla.) (stayed).
`
`On July 15, 2014, Cisco filed a petition for inter partes review (IPR)
`
`(IPR2014-01166) of the ‘368 patent, instituted January 30, 2015. On February 12,
`
`2015, FNC filed a petition for IPR (IPR2015-00726) against the ‘368 patent. On
`
`2
`
`

`

`Petition for Inter Partes Review of
`U.S. Reissued Patent No. RE42,368
`
`February 13, 2015, JDS Uniphase Corp. filed a petition for IPR (IPR2015-00731)
`
`against the ‘368 patent. On August 12, 2014, Cisco filed a petition for IPR
`
`(IPR2014-01276, instituted February 18, 2015) against Capella’s U.S. Patent No.
`
`RE42,678 (“the ‘678 patent”), which is related to the ‘368 patent and is also
`
`asserted in the Capella litigation. On February 12, 2015, FNC filed a petition for
`
`IPR (IPR2015-00727) against the ‘678 patent. On February 14, 2015, JDS
`
`Uniphase Corp. filed a petition for IPR (IPR2015-00739) against the ‘678 patent.
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`LEAD COUNSEL: Matthew
`J. Moore
`(Reg. No.
`
`42012)
`
`(Matthew.Moore@lw.com), Latham & Watkins LLP, 555 Eleventh Street NW,
`
`Suite 1000, Washington, DC 20004-1304, T: (202) 637-2278, F: (202) 637-2201.
`
`BACKUP COUNSEL: Robert
`
`Steinberg
`
`(Reg. No.
`
`33144)
`
`(Bob.Steinberg@lw.com ) Latham & Watkins LLP, 355 South Grand Avenue, Los
`
`Angeles, CA 90071-1560, T: (213) 891-8989, F: (213) 891-8763.
`
`BACKUP COUNSEL: Christopher Chalsen
`
`(Reg. No. 30,936)
`
`(CChalsen@milbank.com), Nathaniel
`
`Browand
`
`(Reg. No.
`
`59,683)
`
`(NBrowand@milbank.com), Milbank, Tweed, Hadley & McCloy LLP, 1 Chase
`
`Manhattan Plaza, New York, NY 10005, T: (212) 530-5380, F: (212) 822-5380.
`
`BACKUP COUNSEL: Thomas K. Pratt (Reg. No. 37,210)
`
`(TPratt@bannerwitcoff.com), J. Pieter van Es (Reg. No. 37,746)
`
`3
`
`

`

`Petition for Inter Partes Review of
`U.S. Reissued Patent No. RE42,368
`
`PvanEs@bannerwitcoff.com, Banner & Witcoff, Ltd., 10 South Wacker Drive,
`
`Suite 3000, Chicago, IL 60606, T: (312) 463-5000, F: (312) 463-5001.
`
`Service Information
`
`D.
`As identified in the attached Certificate of Service, a copy of the present
`
`petition, in its entirety, including all Exhibits and a power of attorney, is being
`
`served by USPS EXPRESS MAIL, costs prepaid, to the address of the attorney or
`
`agent of record for the ‘368 patent: Barry Young, Law Offices of Barry N. Young,
`
`P.O. Box 61197, Palo Alto, CA 94306. Petitioner may be served at the lead
`
`counsel address provided in Section I.C. of this Petition. Petitioner consents to
`
`service by e-mail at the e-mail addresses provided above.
`
`Powers of Attorney
`
`E.
`Powers of attorney are being filed concurrently with this petition in
`
`accordance with 37 C.F.R. § 42.10(b).
`
`III. PAYMENT OF FEES - 37 C.F.R. § 42.103
`This petition for inter partes review requests review of 19 claims of the ‘368
`
`patent and is accompanied by a request fee payment of $24,600. See 37 C.F.R. §
`
`42.15. Thus, this petition meets the fee requirements under 35 U.S.C. § 312(a)(1).
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.104
`A. Grounds for Standing under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ‘368 patent is eligible for inter partes review and
`
`4
`
`

`

`Petition for Inter Partes Review of
`U.S. Reissued Patent No. RE42,368
`
`further certifies that Petitioner is not barred or otherwise estopped from requesting
`
`inter partes review challenging the identified claims on the grounds identified
`
`within the present petition.
`
`B.
`
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested
`Petitioner requests inter partes review of claims 1-6, 9-13, and 15-22 of the
`
`‘368 patent under the statutory grounds set forth in the table below (which are the
`
`same grounds upon which IPR2014-01166 was instituted). Petitioner asks that
`
`each of the claims be found unpatentable. An explanation of how the Petitioned
`
`Claims are unpatentable is included in Section VIII of this Petition. Additional
`
`explanation and support for each ground of rejection is set forth in the Declaration
`
`of a technical expert, Dr. Dan Marom (Ex. 1028) (“Decl.”).
`
`Ground ‘368 Patent Claims Basis for Challenge
`
`1
`
`2
`
`1-6, 9-11, 13, and
`15-22
`
`Obvious under § 103(a) by Bouevitch in view of
`
`Smith further in view of Lin.
`
`12
`
`Obvious under § 103(a) by Bouevitch in view of
`
`Smith and Lin in further view of Dueck.
`
`Each of the references relied upon in the grounds set forth above qualify as
`
`prior art under 35 U.S.C. § 102(e) or (b).
`
`This Petition and the Declaration of Dan Marom, submitted herewith, cite
`
`5
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`

`

`Petition for Inter Partes Review of
`U.S. Reissued Patent No. RE42,368
`
`additional prior art materials to provide background of the relevant technology and
`
`to explain why one of skill in the art would combine the cited references.
`
`C. Threshold Requirement for Inter Partes Review under 37
`C.F.R. § 42.108(c)
`Inter partes review of claims 1-6, 9-13, and 15-22 should be instituted
`
`because this Petition establishes a reasonable likelihood that Petitioner will prevail
`
`with respect to at least one of the claims challenged. See 35 U.S.C. § 314(a). Each
`
`limitation of each challenged claim is disclosed by and/or obvious in light of the
`
`prior art.
`
`V. BACKGROUND OF TECHNOLOGY RELATED TO THE ‘368 PATENT
`Fiber-optic communication uses light to carry information over optical
`
`fibers. Originally, fiber-optic systems used one data channel per fiber. To increase
`
`the number of channels carried by a single fiber, wavelength division multiplexing
`
`(“WDM”) was developed. WDM is a type of optical communication that uses
`
`different wavelengths of light to carry different channels of data. WDM combines
`
`(multiplexes) multiple individual channels onto a single fiber of an optical
`
`network. WDM was known before the ‘368 patent’s priority date. (E.g., Ex. 1015
`
`at 904.)
`
`At different points in a fiber network, some of the individual channels may
`
`be extracted (dropped) from the fiber, for example when those channels are
`
`directed locally and need not be passed further down the fiber network. And at
`
`6
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`

`Petition for Inter Partes Review of
`U.S. Reissued Patent No. RE42,368
`
`these network points, other channels may also be added into the fiber for
`
`transmission onward to other portions of the network. To handle this add/drop
`
`process, optical add-drop multiplexers (OADMs) were developed. OADMs are
`
`used to insert channels onto, pass along, and drop channels from an optical fiber
`
`without disrupting the overall traffic flow on the fiber. (Ex. 1001 at 1:51-58.)
`
`OADMs were known long before the ‘368 priority date. (E.g., Ex. 1015 at 904.)
`
`(Re)configurable OADMs are referred to as “ROADMs” or “COADMs,”
`
`which are controllable to dynamically select which wavelengths to add, drop, or
`
`pass through. (Ex. 1003 at Abstract; Ex. 1019 at 64.) These types of devices were
`
`known in the art prior to the ‘368 priority date. (Decl. at ¶ 29.)
`
`ROADMs operate by separating the input light beam into individual
`
`beams—each beam corresponding to an individual channel.
`
` Each input
`
`channel/beam is individually routed by a beam-steering system to a chosen output
`
`port of the ROADM. For example, a first channel can be steered so that it is
`
`switched from an “input” port to an “output” port. Channels switched to the
`
`“output” port are passed along the network. At the same time, a second channel
`
`can be switched to a “drop” port and removed from the main fiber. The ROADM
`
`could also add a new channel to the main fiber through the “add” port to replace
`
`the dropped channel. These add/drop techniques were known prior to the ‘368
`
`priority date. (Decl. at ¶ 29; Ex. 1003 at 5:15-38; Ex. 1016 at 1:55-2:45; Ex. 1017
`
`7
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`

`Petition for Inter Partes Review of
`U.S. Reissued Patent No. RE42,368
`
`at 1:56-67.)
`
`In addition to routing channels, ROADMs may also be used to control the
`
`power of the individual channels. Power control is often performed by steering
`
`individual beams slightly away from the target port such that the misalignment
`
`reduces the amount of the channel’s power that enters the port. This misalignment
`
`power control technique in ROADMs was known prior to the ‘368 priority date.
`
`(See, e.g., Decl. at ¶¶ 35, 60; Ex. 1006 at 2:9-21.)
`
`ROADMs use wavelength selective routers (WSRs) to perform switching
`
`and power control. (See, e.g., Ex. 1026 at 10:64-11:29.) WSRs are also referred to
`
`as wavelength selective switches (WSSs). (See, e.g., Ex. 1027 at Fig. 1.) As of the
`
`‘368 priority date, WSRs/WSSs were known. (See, e.g., Ex. 1026 at Abstract,
`
`4:15-25; Ex. 1027 at Fig. 1; Ex. 1032 at 1292, 1300.)
`
`The embodiment of WSRs relevant to this petition steers light beams using
`
`small
`
`tilting mirrors, sometimes called MEMS, which stand for Micro
`
`ElectroMechanical Systems. (Decl. at ¶¶ 36, 31.) Prior-art WSRs could tilt the
`
`individual mirrors using analog voltage control. (Id.) The tilt allows reflected
`
`beams to be aimed at selected ports. Prior-art MEMS mirrors could be tilted in one
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`or two axes. (Id. at ¶ 37.)
`
`VI. SUMMARY OF THE ‘368 PATENT
`The ‘368 patent originally issued as U.S. Patent No. 6,879,750. According
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`Petition for Inter Partes Review of
`U.S. Reissued Patent No. RE42,368
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`to the Patentee, the original patent’s claims were invalid over Bouevitch. The
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`Patentee expressly acknowledged its claiming mistake and identified the two
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`elements that it alleged needed to be added to its claims to support patentability–
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`(1) mirror control in two-dimensions, and (2) the mirror’s use for power control:
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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 Ex.
`1023 U.S. Patent No. 6,567,574 to Ma, Ex. 1024 U.S. Patent No.
`6,256,430 to Jin, or Ex. 1025 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. (Ex. 1002 at 81-82.)1
`In its efforts to distinguish over Bouevitch, Patentee’s first amendment
`
`specified that the beam-deflecting elements must be controllable in two
`
`dimensions. This amendment corresponds to a mirror tilting in two axes rather
`
`than one. As for the second amendment, Patent Owner added a use clause stating
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`that the beam-deflecting elements could be used to control power. As explained in
`
`the claim construction section (§ VII, below), use clauses are not limiting, and
`
`have no impact on an invalidity analysis. Claim 1 of the ‘750 patent as amended,
`
`
`
` 1
`
` Emphasis added throughout unless otherwise noted.
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`Petition for Inter Partes Review of
`U.S. Reissued Patent No. RE42,368
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`with the amendments underlined, is shown in Table 1.
`
`Table 1
`1 An optical add-drop apparatus comprising
`1a an input port for an input multi-wavelength optical signal having first spectral
`channels;
`1b one or more other ports for second spectral channels; an output port for an
`output multi-wavelength optical signal;
`1c a wavelength-selective device for spatially separating said spectral channels;
`1d a spatial array of beam-deflecting elements positioned such that each element
`receives a corresponding one of said spectral channels, each of said elements
`being individually and continuously controllable in two dimensions to reflect
`its corresponding spectral channel to a selected one of said ports and to
`control the power of the spectral channel reflected to said selected port.
`
`The Patentee made almost identical amendments to the 3 other independent claims.
`
`
`
`Through the Patentee’s admissions about Bouevitch, the Patentee also
`
`admitted that Bouevitch disclosed all the elements of at least claim 1, except for 2-
`
`axis mirrors. The Patentee first admitted that Bouevitch anticipated the pre-
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`reissue version of claim 1 as it appeared in the ‘750 patent. Following that, the
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`only amendments the Patentee added to the claim were 2-axis mirrors and their
`
`intended use for power control. Because the intended use language is not limiting,
`
`as discussed in the next section, the Patentee admitted that Bouevitch disclosed all
`
`limitations but for 2-axis mirrors. (See MPEP § 2217 (“admissions by the patent
`
`owner in the record as to matters affecting patentability may be utilized during a
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`Petition for Inter Partes Review of
`U.S. Reissued Patent No. RE42,368
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`reexamination”) (citing 37 C.F.R. § 1.104(c)(3)).)
`
`VII. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
`A. Legal Overview
`A claim subject to inter partes review (“IPR”) is given its “broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears.” 37 C.F.R. § 42.100(b). Except as expressly set out below, Petitioner
`
`construes the language of the claims to have their plain and ordinary meaning.
`
`B.
`[Controllable] “in two dimensions”2
`The broadest reasonable interpretation (“BRI”) for the term “in two
`
`dimensions” in light of the specification is “in two axes. ” As the claim states, the
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`“beam-deflecting elements” are “controllable in two dimensions.” The ‘368
`
`consistently describes these beam-deflecting elements as various types of mirrors
`
`which are rotated around the two axes in which the mirrors tilt to deflect light. The
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`specification states, for example, that the beam-deflecting elements “may be
`
`pivoted about one or two axes.” (Ex. 1001 at 4:25-26, Abstract.) The specification
`
`also describes certain embodiments that use two-dimensional arrays of input and
`
`
`
` 2
`
` Petitioner sets forth positions on claim construction identical to those in IPR2014-
`
`01166 in the event terms require construction. Petitioner acknowledges that the
`
`Institution Decision in IPR2014-01166 determined no construction was needed.
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`Petition for Inter Partes Review of
`U.S. Reissued Patent No. RE42,368
`
`output ports. For these embodiments, the specification describes that the mirrors
`
`are required to tilt along two axes (“biaxially”) to switch the beams between the
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`ports. (Id. at 4:25-29.) And further, the ‘368 patent explains how to control power
`
`by tilting the mirrors in two axes. (Id. at 16:36-51 (describing the combined use of
`
`major and minor “tilt axes” for power control & switching).)
`
`C.
`
`“To control the power of the spectral channel…” and “to reflect
`its corresponding spectral channel to a selected one of said
`ports” (Claims 1-16); “whereby a subset of said spectral
`channels is directed to said drop ports” (Claim 15); and “for
`monitoring power levels” and “for controlling said beam-
`deflecting elements” (Claim 3)
`
`Each of the above terms is a statement of intended use and is not limiting
`
`under a BRI for apparatus claims 1-16. The Federal Circuit stated that “apparatus
`
`claims cover what a device is, not what a device does.” Hewlett-Packard Co. v.
`
`Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (emphasis in original).
`
`“An intended use or purpose usually will not limit the scope of the claim because
`
`such statements usually do no more than define a context in which the invention
`
`operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320
`
`F.3d 1339, 1345 (Fed. Cir. 2003); see also Paragon Solutions, LLC v. Timex Corp.,
`
`566 F.3d 1075 (Fed. Cir. 2009); MPEP §§ 2114, 1414.
`
`The BPAI has also had the opportunity to address use clauses. In Ex parte
`
`Kearney, the BPAI stated that use clauses need not be considered when evaluating
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`Petition for Inter Partes Review of
`U.S. Reissued Patent No. RE42,368
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`the validity of a claim. 2012 Pat. App. LEXIS 2675, at *6 (BPAI May 25, 2012)
`
`(“our reviewing court has held that the absence of a disclosure relating to function
`
`does not defeat a finding of anticipation if all the claimed structural limitations are
`
`found in the reference.”)
`
`The above phrases are non-functional use clauses because they say nothing
`
`about
`
`the structure of
`
`the apparatus.
`
` Unlike claim
`
`limitations reciting
`
`“configurable to [perform a function],” which in some cases inform about the
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`configuration of a part of the apparatus, the term at issue in the ‘368 patent says
`
`nothing about what the apparatus is. Instead, the clause speaks only to what it
`
`might do. Petitioner asks that the Board find the above phrases non-limiting.
`
`D.
`
`“So as to combine selected ones of said spectral channels into an
`output” and “so as…to control the power” (Claims 17-22)
`
`The above phrases are not limiting for method claims 17-22 under the BRI
`
`because each expresses nothing more than the intended result of a method step. “A
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`whereby clause in a method claim is not given weight when it simply expresses the
`
`intended result of a process step positively recited.” Minton v. Nat’l Ass’n of Sec.
`
`Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003); MPEP § 2111.04 (listing
`
`“whereby” as one of several terms that raise questions as to any limiting effect).
`
`Here, instead of a “whereby” or “whereas” clause, the Patentee chose to use
`
`the term “so as,” which just as clearly designates an intended result as “whereas.”
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`Petition for Inter Partes Review of
`U.S. Reissued Patent No. RE42,368
`
`See Regents of Univ. of Cal. v. Micro Therapeutics, Inc., 2007 WL 734998, at *18
`
`(N.D. Cal. Mar. 2, 2007) (“Thu