Paper 11
`Entered: September 4, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`CIENA CORPORATION, CORIANT OPERATIONS, INC., CORIANT
`(USA) INC., AND FUJITSU NETWORK COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00816
`Patent RE42,368
`____________
`
`
`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: September 4, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`CIENA CORPORATION, CORIANT OPERATIONS, INC., CORIANT
`(USA) INC., AND FUJITSU NETWORK COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00816
`Patent RE42,368
`____________
`
`
`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
`
`
`
`
`
`
`
`
`
`IPR2015-00816
`Patent RE42,368
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Ciena Corporation, Coriant Operations, Inc., Coriant
`
`(USA) Inc., and Fujitsu Network Communications, Inc., filed a Petition
`
`requesting an inter partes review of claims 1–6, 9–13, and 15–22 of U.S.
`
`Patent No. RE42,368 (“the ’368 patent”). Paper 1 (“Pet.”). Patent Owner,
`
`Capella Photonics, Inc., filed a Preliminary Response. Paper 10 (“Prelim.
`
`Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which provides that
`
`an inter partes review may not be instituted “unless . . . the information
`
`presented in the petition . . . shows that there is a reasonable likelihood that
`
`the petitioner would prevail with respect to at least 1 of the claims
`
`challenged in the petition.”
`
`Claims 1–6, 9–13, and 15–22 of the ’368 patent are challenged in
`
`Cisco Systems, Inc. v. Capella Photonics, Inc., IPR2014-01166 (“IPR2014-
`
`01166”). We instituted trial in that proceeding on January 30, 2015.
`
`IPR2014-01166, Paper 8. In this proceeding, Petitioner asserts the same
`
`grounds of unpatentability on which trial was instituted in IPR2014-01166.
`
`See Pet. 5. 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 1–6, 9–13, and 15–22 of the ’368
`
`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). Our final decision will be based on the record, as fully
`
`developed during trial.
`
`2
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`IPR2015-00816
`Patent RE42,368
`
`
`II.
`
`BACKGROUND
`
`A.
`
`The ’368 patent (Ex. 1001)
`
`The ’368 patent, titled “Reconfigurable Optical Add-Drop
`
`Multiplexers with Servo Control and Dynamic Spectral Power Management
`
`Capabilities,” reissued May 17, 2011, from U.S. Patent No. 6,879,750 (“the
`
`’750 patent”). Ex. 1001. The ’750 patent issued April 12, 2005, from
`
`application number 10/745,364, filed December 22, 2003.
`
`According to the ’368 patent, “fiber-optic communications networks
`
`commonly employ wavelength division multiplexing (WDM), for it allows
`
`multiple information (or data) channels to be simultaneously transmitted on
`
`a single optical fiber by using different wavelengths and thereby
`
`significantly enhances the information bandwidth of the fiber.” Id. at
`
`1:37–42. An optical add-drop multiplexer (OADM) is used both to remove
`
`wavelengths selectively from a multiplicity of wavelengths on an optical
`
`fiber (taking away one or more data channels from the traffic stream on the
`
`fiber), and to add wavelengths back onto the fiber (inserting new data
`
`channels in the same stream of traffic). Id. at 1:45–51.
`
`The ’368 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 channels, 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. 8.
`
`3
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`
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`IPR2015-00816
`Patent RE42,368
`
`
`The WSR described in the ’368 patent may be used to construct
`
`dynamically reconfigurable OADMs for WDM optical networking
`
`applications. Figure 1A of the ’368 patent is reproduced below.
`
`
`
`Figure 1A depicts wavelength-separating-routing (WSR) apparatus 100, in
`
`accordance with the ’368 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.
`
`4
`
`
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`IPR2015-00816
`Patent RE42,368
`
`
`Figure 1B of the ’368 patent is reproduced below.
`
`
`
`Figure 1B depicts a close-up view of the array of channel
`
`micromirrors 103 shown above in Figure 1A. Id. at 8:6–7. The channel
`
`micromirrors “are individually controllable and movable, e.g. pivotable (or
`
`rotatable) under analog (or continuous) control, such that, upon reflection,
`
`the spectral channels are directed” into selected output ports by way of
`
`focusing lens 102 and diffraction grating 101. Id. at 7:6–11. According to
`
`the ’368 patent:
`
`each micromirror may be pivoted about one or two axes. What
`is important is that the pivoting (or rotational) motion of each
`channel micromirror be individually controllable in an analog
`manner, whereby the pivoting angle can be continuously
`adjusted so as to enable the channel micromirror to scan a
`spectral
`channel
`across
`all
`possible
`output
`ports.
`
`Id. at 9:8–14.
`
`5
`
`
`
`
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`IPR2015-00816
`Patent RE42,368
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`
`Figure 3 of the ’368 patent is reproduced below.
`
`
`
`Similar to Figure 1A, above, Figure 3 also shows a WSR apparatus as
`
`described by the ’368 patent. Ex. 1001, 10:25–26. In this embodiment, two
`
`dimensional array of fiber collimators 350 provides an input port and
`
`plurality of output ports. Id. at 10:31–32. First and second two dimensional
`
`arrays of imaging lenses 360, 370 are placed in a telecentric arrangement
`
`between two-dimensional collimator-alignment mirror array 320 and two-
`
`dimensional fiber collimator array 350. Id. at 10:37–43. “The channel
`
`micromirrors 103 must be pivotable biaxially in this case (in order to direct
`
`its corresponding spectral channel to anyone of the output ports).” Id. at
`
`10:43–46.
`
`The WSR may also incorporate a servo-control assembly (together
`
`termed a “WSR-S apparatus.”) Id. at 4:65–67. According to the ’368
`
`patent:
`
`The servo-control assembly serves to monitor the power levels
`of the spectral channels coupled into the output ports and
`further provide control of the channel micromirrors on an
`individual basis, so as to maintain a predetermined coupling
`
`6
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`IPR2015-00816
`Patent RE42,368
`
`
`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.
`
`Figure 5 of the ’368 patent is reproduced below.
`
`
`
`Figure 5 depicts OADM 500 in accordance with the ’368 patent
`
`comprised of WSR-S (or WSR) apparatus 510 and optical combiner 550. Id.
`
`at 12:40–44. Input port 520 transmits a multi-wavelength optical signal,
`
`which is separated and routed into a plurality of output ports, including pass-
`
`through port 530 and one or more drop ports 540-1 through 540-N. Id. at
`
`12:44–48. Pass-through port 530 is optically coupled to optical combiner
`
`550, which combines the pass-through spectral channels with one or more
`
`add spectral channels provided by one or more add ports 560-1 through
`
`560-M. Id. at 12:52–56. The combined optical signal is then routed into an
`
`existing port 570, providing an output multi-wavelength optical signal. Id.
`
`at 12:56–58.
`
`7
`
`
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`IPR2015-00816
`Patent RE42,368
`
`
`B.
`
`Illustrative Claims
`
`Claims 1, 15, 16, and 17 of the ’368 patent are independent. Claims
`
`2–6 and 9–13 ultimately depend from claim 1, and claims 18–22 ultimately
`
`depend from claim 17. Claims 1 and 17 of the ’368 patent are illustrative of
`
`the claims at issue:
`
`1. An optical add-drop apparatus comprising
`an input port for an input multi-wavelength optical signal
`having first spectral channels;
`one or more other ports for second spectral channels; an
`output port for an output multi-wavelength optical signal;
`a wavelength-selective device for spatially separating said
`spectral channels; [and]
`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
`in
`two
`individually and continuously controllable
`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.
`
`Ex. 1001, 14:6–20.
`
`
`17. A method of performing dynamic add and drop in a
`WDM optical network, comprising
`separating an input multi-wavelength optical signal into
`spectral channels;
`imaging each of said spectral channels onto a corresponding
`beam-deflecting element; and
`controlling dynamically and continuously said beam-
`deflecting elements in two dimensions so as to combine
`selected ones of said spectral channels into an output
`multi-wavelength optical signal and to control the power
`of the spectral channels combined into said output multi-
`wavelength optical signal.
`
`Ex. 1001, 16:3–14.
`
`8
`
`
`
`IPR2015-00816
`Patent RE42,368
`
`
`C.
`
`Related Proceedings
`
`According to the parties, the ’368 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 8, 2–3.
`
`Claims 1–6, 9–13, and 15–22 of the ’368 patent are challenged in
`
`IPR2014-01166; Fujitsu Network Communications, Inc. v. Capella
`
`Photonics, Inc., IPR2015-00726, instituted on August 24, 2015; and, JDS
`
`Uniphase Corporation v. Capella Photonics, Inc., IPR2015-00731, instituted
`
`on August 25, 2015.
`
`9
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`IPR2015-00816
`Patent RE42,368
`
`
`D.
`
`Asserted Grounds of Unpatentability
`
`Petitioner contends that claims 1–6, 9–13, and 15–22 of the ’368
`
`patent are unpatentable based on the same grounds upon which trial in
`
`IPR2014-01166 was instituted:
`
`Reference[s]
`
`Bouevitch,1 Smith,2 and Lin3
`
`Bouevitch, Smith, Lin, and Dueck4
`
`
`
`Basis
`
`§ 103(a)
`
`Challenged Claims
`1–6, 9–11, 13, and 15–
`22
`§ 103(a) 12
`
`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); see Office Patent Trial Practice Guide,
`
`77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Petitioner proposes
`
`constructions for various terms identical to the constructions proposed by the
`
`petitioner in IPR2014-01166. See Pet. 11 n.2. Consistent with our
`
`institution decision in IPR2014-01166, we determine that, for purposes of
`
`this decision, no express construction is necessary for any claim term.
`
`
`1 U.S. Patent No. 6,498,872 B2, issued December 24, 2002 (Ex. 1003,
`“Bouevitch”)
`2 U.S. Patent No. 6,798,941 B2, issued September 28, 2004 (Ex. 1004,
`“Smith”). Petitioner contends Smith is 102(e) prior art as of the
`September 22, 2000, filing date of its corresponding provisional application
`No. 60/234,683 (the “Smith ’683 Provisional,” Ex. 1005). Pet. 60.
`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”)
`10
`
`
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`IPR2015-00816
`Patent RE42,368
`
`
`B.
`
`References Asserted as Prior Art
`
`Petitioner relies on Bouevitch, Smith, 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 function as an attenuator when the device operates
`
`as a dynamic gain equalizer (DGE), and as a switching array when the
`
`device operates as a configurable optical add/drop multiplexer (COADM).
`
`Ex. 1003, Abstract. According to Petitioner, the COADM described in
`
`Bouevitch “uses MEMS mirrors with 1 axis of rotation.” Pet. 19–20.
`
`Petitioner also contends that the Bouevitch COADM controls the power of
`
`its output channels by tilting beam-deflecting mirrors at varying angles. Pet.
`
`20.
`
`2.
`
`Smith
`
`In support of Petitioner’s contention that Smith is 102(e) prior art as
`
`of the September 22, 2000, filing date of the Smith ’683 Provisional,
`
`Petitioner’s declarant, Dr. Dan Marom, testifies that the Smith ’683
`
`Provisional discloses all of the features of Smith relied upon to demonstrate
`
`unpatentability. Ex. 1028, ¶ 131. In his declaration, Dr. Marom also
`
`provides a chart identifying the claimed subject matter of the ’368 patent and
`
`the corresponding disclosures in both Smith and the Smith ’683 Provisional.
`
`Id. at ¶ 132. For example, Dr. Marom identifies the “individually and
`
`continuously controllable in two dimensions” limitation of claims 1, 15, 16
`
`and 17 of the ’368 patent as being described by the Smith ’683 Provisional
`
`11
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`IPR2015-00816
`Patent RE42,368
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`as a “mirror array with elements that can be rotated in an analog fashion
`
`about two orthogonal axes.” Id., quoting Ex. 1005, 6.
`
`Patent Owner argues that Petitioner failed to make a threshold
`
`showing that Smith is entitled to the filing date of the Smith ’683
`
`Provisional. Prelim. Resp. 55–60. In particular, Patent Owner argues that
`
`Petitioner fails to show the Smith ’683 Provisional discloses beam-deflecting
`
`elements that are continuously controllable. Id. at 57–58. Patent Owner
`
`asserts that the mirror disclosed in Smith is stems from a separate
`
`provisional application with different inventors, not the Smith ’683
`
`Provisional. Id. at 58–59. Patent Owner’s arguments on the present record
`
`are not persuasive. Petitioner has supported its contention that Smith is prior
`
`art with the testimony of Mr. Marom. Based on the present record,
`
`Petitioner has made a threshold showing that Smith is 102(e) prior art as of
`
`the filing date of the Smith ’683 Provisional.
`
`Smith describes an optical switch including an array of mirrors tiltable
`
`about two axes, permitting a mirror tilt axis to be used for switching and a
`
`perpendicular axis to be used for power control. Ex. 1004, Abstract,
`
`16:34–51; see also Ex. 1005, 6 (describing the same).
`
`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
`
`12
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`IPR2015-00816
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`linear relationship between the deflection angle of the MEMS mirrors and
`
`the applied voltage. Pet. 30–31.
`
`
`
`
`
`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. 19.
`
`C.
`
`Asserted Obviousness Over Bouevitch, Smith, and Lin
`
`Petitioner asserts that claims 1–6, 9–11, 13, and 15–22 would have
`
`been obvious over Bouevitch, Smith, and Lin based on the identical
`
`contentions made in IPR2014-01166 upon which we previously instituted
`
`trial. Pet. 23–60.
`
`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. 8–11. Rather than identify any such admission, Petitioner
`
`directs us to a Replacement Reissue Application Declaration by Assignee
`
`which states:
`
`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
`
`13
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`IPR2015-00816
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`
`
`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, 81–82. 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 further asserts, with respect to the elements of claim 1, that
`
`Bouevitch discloses an optical add-drop apparatus, including an input port
`
`(labeled “IN”), one or more other ports (labeled 80b “IN ADD” and “OUT
`
`DROP”), and an output port (labeled “OUT EXPRESS”). Pet. 25–27, citing
`
`Ex. 1003, Fig. 11. Petitioner’s contentions are supported by Dr. Marom.
`
`Ex. 1028 ¶¶ 49–52.
`
`Grounds of unpatentability based on Bouevitch were instituted for
`
`trial currently proceeding in IPR2014-01166. 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: (1) that Bouevitch does not teach the claimed input, output, and one
`
`or more other ports (Prelim. Resp. 32–41); (2) that the circulators of
`
`Bouevitch coupled to microlenses “do not meet the distinct structure” as
`
`14
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`IPR2015-00816
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`claimed, (id. at 34–35); and (3) that the ’368 patent disavows circulator-
`
`based optical systems (id. at 35–39). 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 39–40. 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 41. 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
`
`Patent Owner also argues that Petitioner improperly relies on
`
`disparate embodiments of Bouevitch without providing a rationale for their
`
`combination. Prelim. Resp. 17–23. 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 18. The Petition relies on Smith as
`
`disclosing power control, as well as Lin for the “continuously controllable”
`
`limitation. Pet. 30–31, 34–35. 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
`
`
`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
`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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`IPR2015-00816
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`required by modifying means 150,” for example, is unsupported attorney
`
`argument not persuasive on the present record. See Prelim. Resp. 20.
`
`Petitioner identifies Bouevitch’s diffraction grating 20 as a
`
`wavelength-selective device for spatially separating spectral channels, as
`
`recited in claim 1. Pet. 27–28. Petitioner also identifies Bouevitch’s MEMS
`
`mirror array 50 as a spatial array of beam-deflecting elements positioned
`
`such that each element receives a corresponding one of said spectral
`
`channels, as recited by claim 1. Id. at 28.
`
`In addition to arguing that Bouevitch discloses the “continuously
`
`controllable” limitation of claim 1, Petitioner also identifies descriptions in
`
`Smith and Lin as corresponding to this limitation. Pet. 29–30. Regarding
`
`the requirement of claim 1 that such beam-deflecting elements be
`
`continuously controllable “in two dimensions,” Petitioner relies on the
`
`description in Smith of a “multi-wavelength…optical switch including an
`
`array of mirrors tiltable about two axes, both to control the switching and to
`
`provide variable power transmission.” Pet. 32, quoting Ex. 1004, Abstract.
`
`Patent Owner makes various arguments, including: (1) that Petitioner
`
`has not shown how “deflecting” meets the claim element “reflecting”
`
`(Prelim. Resp. 42); (2) that Petitioner has not shown sufficiently that Smith
`
`discloses “beam-deflecting elements continuously controllable in two
`
`dimensions” (id. at 44–47); (3) “that analog control does not necessarily
`
`result in beam-deflecting elements that are continuously controllable” (id. at
`
`48); and (4) that “no [person of ordinary skill in the art] would have
`
`understood Lin” to show such control in two dimensions (id. at 49). We
`
`have considered Patent Owner’s arguments, primarily supported only by
`
`16
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`IPR2015-00816
`Patent RE42,368
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`attorney argument, and determine on the present record that they are not
`
`persuasive.
`
`With respect to a rationale for combining Bouevitch and Smith,
`
`Petitioner contends the use of the two-axis mirror of Smith in Bouevitch:
`
`(1) is a simple substitution of one known element for another yielding
`
`predictable results, (2) is the use of a known technique to improve similar
`
`devices, (3) would be obvious to try as there are only two options for tilting
`
`MEMS mirrors: one-axis and two-axis mirrors, and (4) would be motivated
`
`to reduce crosstalk in attenuation and to increase port density. Pet. 21–24.6
`
`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. 31.
`
`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. 23–32. 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 26–30. Patent Owner also argues only hindsight would
`
`motivate the combination of Bouevitch and Sparks because Petitioner
`
`contends Bouevitch can accomplish both switching and power-control using
`
`a single-axis mirror. Id. at 31–32. Patent Owner further argues that
`
`
`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. 24. We find no such admission.
`17
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`IPR2015-00816
`Patent RE42,368
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`Petitioner failed to explain how Lin’s structural elements could be modified
`
`in combination with Smith. Prelim. Resp. 51.
`
`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, Dr. Marom.
`
`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, Smith, and Lin.
`
`2. Claims 2–6, 9–11, 13, and 15–22.
`
`
`
`In addition to addressing the elements of claim 1, Petitioner also
`
`identifies how claims 2–6, 9–11, 13, and 15–22 would have been obvious
`
`over Bouevitch, Smith, and Lin, as supported by the declaration of
`
`Dr. Marom. Pet. 35–60.
`
`
`
`With respect to claim 17, Patent Owner argues that the Petition fails to
`
`address the requirement that the method includes controlling beam-
`
`deflecting elements “so as to combine selected ones of said spectral channels
`
`into an output multi-wavelength optical signal.” Prelim. Resp. 51–52.
`
`Petitioner implicitly argues that the “so as to combine” feature of claim 17 is
`
`not a substantive difference from the requirement of claim 1 that the
`
`apparatus include elements “being individually and continuously
`
`controllable in two dimensions to reflect its corresponding spectral channel
`
`to a selected one of said ports.” On the present record we are not persuaded
`
`by Patent Owner’s argument.
`
`
`
`With respect to claims 3 and 22, Patent Owner argues that Smith does
`
`not teach servo control and spectral features, and that the Petition fails to
`
`18
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`IPR2015-00816
`Patent RE42,368
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`articulate how a person of ordinary skill in the art would have been able to
`
`add servo control features to Bouevitch without disrupting Bouevitch’s
`
`operation or why such a person would have done so. Prelim. Resp. 54–55.
`
`Petitioner, as supported by Dr. Marom, asserts that the servo control of
`
`Smith was an alternative to the external feedback for power control that
`
`Bouevitch explains should be eliminated, and that there are limited
`
`alternatives to provide such feedback. Pet. 39–40. As noted above, the ’368
`
`patent also states 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. On the present
`
`record we are not persuaded by Patent Owner’s argument.7
`
`We determine based on the present record that Petitioner has
`
`demonstrated a reasonable likelihood that it would prevail in showing claims
`
`2–6, 9–11, 13, and 15–22 unpatentable as obvious over Bouevitch, Smith,
`
`and Lin.
`
`D.
`
`Asserted Obviousness Over Bouevitch, Smith, Lin, and Dueck
`
`Petitioner contends claim 12 would have been obvious over
`
`Bouevitch, Smith, Lin, and Dueck. Claim 12 recites the device of claim 1,
`
`
`7 Patent Owner also argues that “[for] dependent claims 17, 29, and 53,
`Petitioners rely on Dueck to disclose ‘ruled diffraction gratings,’” and
`asserts such reliance is improper. Prelim. Resp. 52–53. Claim 17 of the
`’368 patent is not dependent and does not require “ruled diffraction
`gratings.” Moreover, the ’368 patent at issue does not contain a claim 29 or
`a claim 53. To the extent Patent Owner intended its argument to apply to
`claim 12 of the ’368 patent, which includes a reference to “ruled diffraction
`gratings,” we find Patent Owner’s argument not persuasive on the present
`record.
`
`19
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`IPR2015-00816
`Patent RE42,368
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`wherein the wavelength-selective device comprises a device selected from
`
`the group consisting of ruled diffraction gratings, holographic diffraction
`
`gratings, echelle gratings, curved diffraction gratings, and dispersing prisms.
`
`Ex. 1001, 14:63–67. Petitioner contends that Dueck discloses ruled
`
`diffraction gratings, as claimed. Pet. 48. Petitioner further asserts that it
`
`would have been obvious to try Dueck’s ruled diffraction gratings in the
`
`devices of Bouevitch and Smith because it represents the “best mode” of
`
`separating wavelengths in WDM devices. Id. at 48–49. Based on the
`
`information presented, Petitioner has demonstrated a reasonable likelihood
`
`that it would prevail in showing claim 12 unpatentable as obvious over
`
`Bouevitch, Smith, Lin, and Dueck.
`
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that inter partes review of U.S. Patent No. RE42,368 is
`
`instituted in IPR2015-00816 with respect to the following grounds of
`
`unpatentability:
`
`(1) claims 1–6, 9–11, 13, and 15–22 as obvious over Bouevitch,
`
`Smith, and Lin under 35 U.S.C. § 103(a); and
`
`(2) claims 12 as obvious over Bouevitch, Smith, 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. RE42,368 is hereby instituted in
`
`20
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`IPR2015-00816
`Patent RE42,368
`
`IPR2015-00816, 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.
`
`
`
`
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`21
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`22
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`IPR2015-00816
`Patent RE42,368
`
`For PETITIONER:
`
`Matthew Moore
`matthew.moore@lw.com
`
`Robert Steinberg
`Bob.Steinberg@lw.com
`
`Christopher Chalsen
`cchalsen@milbank.com
`
`Lawrence Kass
`lkass@milbank.com
`
`Nathaniel Browand
`nbrowand@milbank.com
`
`Suraj Balusu
`sbalusu@milbank.com
`
`Thomas Pratt
`TPratt@bannerwitcoff.com
`
`J. Pieter Van Es
`PVanEs@bannerwitcoff.com
`
`Jordan Bodner
`JBodner@bannerwitcoff.com
`
`Michael Cuviello
`MCuviello@bannerwitcoff.com
`
`
`
`
`
`23
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`IPR2015-00816
`Patent RE42,368
`
`
`
`
`For PATENT OWNER:
`
`Jason Eisenberg
`Jasone-ptab@skgf.com
`Robert Sterne
`rsterne-PTAB@skgf.com
`
`Jon Wright
`jwright-PTAB@skgf.com
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