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.
`
`Petitioners
`
`v.
`
`Capella Photonics, Inc.
`
`Patent Owner
`
`____________________
`
`Case IPR2015-00894
`Patent RE42,678
`____________________
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`
`Case IPR2015-00894 of
`U.S. Patent No. RE42,678
`
`I. 
`
`II. 
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1 
`
`IN VIEW OF DIFFERENT ARGUMENTS ON THE RECORD, THE
`BOARD SHOULD NOT AUTOMATICALLY INSTITUTE AND JOIN
`THE PROCEEDING WITH IPR2014-01276 ................................................. 9 
`
`III.  BACKGROUND ........................................................................................... 10 
`
`A.  Optical Circulators Limited the Scalability of Optical Switches ........ 11 
`
`B. 
`
`C. 
`
`The ’678 Patent Discloses a Scalable Switch with Multiple Ports ..... 12 
`
`Claims .................................................................................................. 15 
`
`IV.  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, SMITH, AND
`LIN ................................................................................................................. 16 
`
`A. 
`
`Petitioners Improperly Conflate Two Disparate Embodiments of
`Bouevitch—Modifying Means 150 and MEMS Array 50—Without
`Providing KSR Rationale ..................................................................... 16 
`
`B. 
`
`A POSA Would Not Have Combined Bouevitch and Smith .............. 23 
`
`1. 
`
`2. 
`
`3. 
`
`Bouevitch Modifying Means is Based on Polarization, such that
`Adding Smith’s Mirrors Would Disrupt Switching .................. 26 
`
`Using Smith’s Tiltable Mirrors in Bouevitch Would Disrupt
`Bouevitch’s Explicit Teaching of Parallel Alignment .............. 27 
`
`Absent Hindsight, a POSA Would Not Have Used a More
`Complex Two-Axis Mirror to Achieve the Same Function as a
`One-Axis Mirror ....................................................................... 31 
`
`C. 
`
`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, 44, and 61. ............................................ 32 
`
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`Case IPR2015-00894 of
`U.S. Patent No. RE42,678
`Proper Meaning of the Term “Port” as Recited in the ’678
`Patent Claims ............................................................................ 33 
`
`The ’678 Patent Disavows Circulator Ports from Meeting the
`Claimed Ports ............................................................................ 35 
`
`The Meaning of the Term “Port” as Recited in the Claims was
`Understood by a POSA ............................................................. 39 
`
`Bouevitch at Most has Two Ports as Recited in the ’678 Patent
`Claims ....................................................................................... 40 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`D. 
`
`E. 
`
`The Bouevitch Figure 11 Configuration Does Not Reflect Light
`Beams Into the Circulator Ports .......................................................... 41 
`
`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 ................................. 42 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`Petitioners Concede that Bouevitch Does Not Teach or Suggest
`Micromirrors Being Pivotal About Two Axes and Being
`Continuously Controllable ........................................................ 43 
`
`Smith Does Not Meet the Claimed Micromirrors Being Pivotal
`About Two Axes and Being Continuously Controllable .......... 44 
`
`Lin’s One-Axis Mirror Does Not Meet the Claimed
`Micromirrors Being Pivotal About Two Axes and Being
`Continuously Controllable ........................................................ 47 
`
`Petitioners Fail to Provide KSR Rationale for Combining Smith
`and Lin ...................................................................................... 51 
`
`V.  A POSA WOULD NOT HAVE BEEN MOTIVATED TO USE DUECK’S
`DIFFRACTION GRATING IN BOUEVITCH ............................................ 51 
`
`VI.  PETITIONERS DO NOT EXPLAIN HOW OR WHY A POSA WOULD
`HAVE INCORPORATED SMITH’S ALLEGED SERVO CONTROL
`INTO BOUEVITCH ...................................................................................... 53 
`
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`

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`Case IPR2015-00894 of
`U.S. Patent No. RE42,678
`VII.  THE PORTIONS OF SMITH PETITIONERS RELY ON DO NOT HAVE
`§ 119(E) SUPPORT TO PRE-DATE THE ’368 PATENT .......................... 55 
`
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`- iii -
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`Case IPR2015-00894 of
`U.S. Patent No. RE42,678
`TABLE OF AUTHORITIES
`
`Cases 
`
`Alloc, Inc. v. Int’l Trade Comm’n,
`342 F.3d 1361 (Fed. Cir. 2003) ..................................................................... 35
`
`Boston Scientific Scimed, Inc. v. Cordis Corp.,
`554 F.3d 982 (Fed. Cir. 2009) ....................................................................... 17
`
`Cisco Systems, Inc. v. Capella Photonics, Inc.,
`IPR2014-01276 (P.T.A.B. Feb. 18, 2015) .............................................. 10, 23
`
`Facebook, Inc. v. Software Rights Archive, LLC,
`IPR2013-00479 (P.T.A.B. Feb. 2, 2015) ....................................................... 22
`
`In re Chaganti,
`554 F. App’x 917 (Fed. Cir. 2014) ................................................................ 17
`
`In re Giacomini,
`612 F.3d 1380 (Fed. Cir. 2010) ..................................................................... 55
`
`JDS Uniphase Corp. v. Fiber, LLC,
`IPR2013-00318 (P.T.A.B. Dec. 5, 2014) ................................................. 6, 23
`
`JDS Uniphase Corp. v. Fiber, LLC,
`IPR2013-00336 (P.T.A.B. Dec. 5, 2013) ...................................................... 24
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)....................................................................................... 17
`
`Mitsubishi Plastics, Inc. v. Celgard, LLC,
`IPR2014-00524 (P.T.A.B. Nov. 21, 2014) ..................................................1, 9
`
`Nat’l Envm’t Prodts. Ltd. v. Dri-Steem Corp.,
`IPR2014-01503 (P.T.A.B. Apr. 1, 2015) ...................................................... 17
`
`SciMed Life Sys., Inc. v. Advances Cardiovascular Sys., Inc.,
`242 F.3d 1337 (Fed. Cir. 2001) ..................................................................... 35
`
`Securus Techs, Inc. v. Global Tel*Link Corp.,
`IPR2015-00153 (P.T.A.B. May 1, 2015) ...................................................... 55
`
`
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`- iv -
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`

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`Case IPR2015-00894 of
`U.S. Patent No. RE42,678
`
`Statutes 
`
`35 U.S.C. § 102(e) ................................................................................................... 55
`
`35 U.S.C. § 119(e) ............................................................................................ 55, 56
`
`35 U.S.C. § 120 ................................................................................................. 55, 56
`
`Rules 
`
`37 C.F.R. § 42.108 .................................................................................................1, 9
`
`37 C.F.R. § 42.20(c) ................................................................................................. 55
`
`37 C.F.R. § 42.23(b) ................................................................................................ 22
`
`M.P.E.P. § 211 .................................................................................................. 55, 56
`
`Other Authorities 
`
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756 (Aug. 14, 2012) ............................................................. 22
`
`
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`

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`Case IPR2015-00894 of
`U.S. Patent No. RE42,678
`
`EXHIBIT LIST
`
`Description
`Ex. No.
`2001 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.
`2002 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/Capella
`-Photonics-Launches-Dynamically-Reconfigurable-Wavelength-
`Routing. (“Business Wire”)
`2003 WavePath 4500 Product Brief, Capella,
`http://www.capellainc.com/downloads/WavePath%204500%20Product
`%20Brief%20030206B.pdf. (“WavePath”)
`2004 U.S. Provisional Patent Application No. 60/183,155. (“’155
`Provisional)
`2005 Cisco Systems, Inc. v. Capella Photonics, Inc., IPR2014-01276,
`Transcript of Deposition of Dr. Dan M. Marom, Ex. 2005 (P.T.A.B.
`May 18, 2015). (“Marom Depo. Tr.”)
`2006 Benjamin B. Dingel & Achyut Dutta, Photonic Add-Drop Multiplexing
`Perspective for Next Generation Optical Networks, 4532 SPIE 394
`(2001). (“Dingel”)
`Tze-Wei Yeow, K. L. Eddie Law, & Andrew Goldenberg, MEMS
`Optical Switches, 39 IEEE Comm’n Mag. no. 11, 158 (2001).
`(“Yeow”)
`2008 Clifford Holliday, Components for R-OADMs ’05 (B & C Consulting
`Services & IGI Consulting Inc. 2005). (“Holliday R-OADMs”)
`Patrick B. Chu et al., MEMS: the Path to Large Optical Crossconnects,
`40 IEEE COMM’N MAG. no. 3, 80 (2002). (“Chu”)
`2010 Clifford Holliday, Switching the Lightwave: OXC’s – The Centerpiece
`of All Optical Network (IGI Consulting Inc. & B & C Consulting
`Services 2001). (“Holliday OXC”)
`2011 An Vu Tran et al., Reconfigurable Multichannel Optical Add-Drop
`Multiplexers Incorporating Eight-Port Optical Circulators and Fiber
`- vi -
`
`2007
`
`2009
`
`
`
`
`

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`Case IPR2015-00894 of
`U.S. Patent No. RE42,678
`
`Ex. No.
`
`2012
`
`Description
`Bragg Gratings, 13 Photonics Tech. Letters, IEEE, no. 10, 1100
`(2001). (“Tran”)
`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). (“Kim”)
`2013 U.S. Patent No. 6,984,917 (filed Jun. 6, 2002). (“Marom ’917”)
`2014 U.S. Patent No. 6,657,770 (filed Aug. 31, 2001). (“Marom ’770”)
`2015
`Provisional Patent Application No. 60/267,285. (“’285 Provisional”)
`2016 U.S. Patent No. 6,543,286 (filed June 19, 2001). (“Gaverick”)
`
`
`
`
`- vii -
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`

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`Case IPR2015-00894 of
`U.S. Patent No. RE42,678
`
`I.
`
`Introduction
`
`The instant Petition and accompanying expert declaration raise substantially
`
`the same issues as Cisco Systems, Inc. raised in IPR2014-01276. But despite
`
`having instituted trial in IPR2014-01276, the Board should decline to do so here.
`
`The Board must undertake an independent review of the record in this proceeding,
`
`and this Preliminary Response is not a simple copy of the preliminary response
`
`filed by the Patent Owner in IPR2014-01276. See 37 C.F.R. § 42.108 (“The
`
`Board’s decision will take into account a patent owner preliminary response where
`
`such a response is filed); Mitsubishi Plastics, Inc. v. Celgard, LLC, IPR2014-
`
`00524, Paper 27 at 7-8 (P.T.A.B. Nov. 21, 2014) (concluding that an institution
`
`decision is unique to each case and should be made based on the unique record of
`
`each proceeding). Instead, this Preliminary Response contains substantially new
`
`arguments.1 As a result, arguments presented by Patent Owner here show that
`
`Petitioners have failed to establish a reasonable likelihood that they will prevail
`
`with respect to the invalidity of any claim.
`
`Capella’s U.S. Patent No. RE42,678 (“’678 Patent”) claims at least two
`
`unique features: (1) multiple fiber collimators corresponding to and providing an
`
`1 Also, the arguments are now supported by the expert testimony of Dr.
`
`Alexander Sergienko. See Cisco Systems, Inc. v. Capella Photonics, Inc., IPR2014-
`
`01276, Ex. 2004 (P.T.A.B. May 18, 2015).
`
`
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`- 1 -
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`

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`Case IPR2015-00894 of
`U.S. Patent No. RE42,678
`input port and a plurality of output ports and (2) micromirrors being pivotal about
`
`two axes and being continuously controllable. These features, shown in Figures 1A
`
`and 1B (reproduced below), allow the system to route individual channels from the
`
`input port to a selected output port. Because the optical system in the ’678 Patent
`
`has multiple fiber collimators providing multiple ports, the system can route a
`
`greater number of individual channels than systems in the prior art.
`
`Figures 1A and 1B of the ’678 Patent
`Collimators, providing an input
`port and a plurality of output ports
`
`
`
`
`
` Micromirror Array 103
`
`
`
`
`
`
`Optical switches at the time of the invention did not have multiple ports, let
`
`alone multiple fiber collimators to provide the ports, as recited in the ’678 Patent.
`
`Existing systems had a single input port and a single output port. Rather than using
`
`collimators to provide multiple ports, conventional systems used peripheral
`
`components, such as circulators, to both add optical signals to the input port and to
`
`drop optical signals from the output port. (See Ex. 2002, Business Wire, p. 2.)
`
`A circulator is a device that is used to separate optical signals traveling in
`
`opposite directions. Referencing the schematic reproduced herein, light can enter
`
`
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`- 2 -
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`Case IPR2015-00894 of
`U.S. Patent No. RE42,678
`and exit circulator ports 1, 2, and 3. Light entering circulator
`
`port 1 is emitted from 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
`
`separate incoming and outgoing optical signals. But optical systems using
`
`circulators were not scalable to a large number of channels because every added
`
`circulator contributed cost, bulk, and insertion loss (i.e., crosstalk between
`
`channels) to the optical system.
`
`To overcome these limitations, the inventors of the ’678 Patent designed an
`
`add/drop optical switch with multiple fiber collimators providing multiple ports.
`
`This multiple port configuration differentiated Capella from competitors because
`
`Capella’s system was reconfigurable and scalable to a large number of 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 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.)
`
`
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`- 3 -
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`

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`Case IPR2015-00894 of
`U.S. Patent No. RE42,678
`In the instant Petition, Petitioners attempt to piece together Capella’s
`
`configuration using three main references: (1) U.S. Patent No. 6,498,872 to
`
`Bouevitch et al. (“Bouevitch”); (2) 6,798,941 to Smith et al. (“Smith”); and (3)
`
`U.S. Patent No. 5,661,591 to Lin et al. (“Lin”). The asserted combination,
`
`however, is problematic for the following reasons.
`
`Petitioners combine multiple embodiments of Bouevitch without providing
`
`KSR rationale. And fundamentally, the separate embodiments of Bouevitch are not
`
`combinable. Petitioners point to modifying means 150 shown in Bouevitch Figure
`
`5 and MEMS array 50 shown in Bouevitch Figure 11 (annotated figures
`
`reproduced below) when arguing that Bouevitch explicitly discloses every element
`
`of the independent claims except for mirrors rotatable about two axes.
`
`Bouevitch Figures 5 and 11 Annotated to Show Different Reflection Angles
`
`
`
`
`Petitioners err in combining these two embodiments because the
`
`embodiments were designed to operate in entirely different optical configurations
`
`and to perform entirely different functions. Modifying means 150 shown in Figure
`
`5 is used in an optical system configured to function as a dynamic gain equalizer
`
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`- 4 -
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`Case IPR2015-00894 of
`U.S. Patent No. RE42,678
`(“DGE”) to control power attenuation. MEMS array 50 shown in Figure 11 is used
`
`in an optical system configured to function as a configurable optical add/drop
`
`multiplexer (“COADM”) to perform switching. The embodiments are also
`
`different because modifying means 150 uses polarization to control a light beam,
`
`while MEMS array 50 comprises two plane mirrors 51 and 52. Further, the
`
`embodiments are not interchangeable because as shown in the annotations to
`
`Figures 5 and 11, modifying means 150 operates with input and output light beams
`
`in parallel, while MEMS array 50 reflects an input light beam according to the
`
`incident angle of reflection. Contrary to Petitioners’ contentions, a person having
`
`ordinary skill in the art (“POSA”) could not have used modifying means 150 in the
`
`system configured to operate with MEMS array 50. And a POSA would not have
`
`been motivated to combine the embodiments because the embodiments operate
`
`under different principles of operation.
`
`Petitioners also combine Bouevitch and Smith. Petitioners contend that
`
`using Smith’s two-axis mirror in Bouevitch would have been a “simple
`
`substitution.” Petitioners err because Bouevitch and Smith are not combinable, and
`
`Petitioners do not reconcile technical differences between Bouevitch and Smith.
`
`Instead of explaining how the optical systems are combinable, Petitioners blankly
`
`call the combination a simple substitution of one known optical component for
`
`another. The Board has already held that such conclusory statements are
`
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`Case IPR2015-00894 of
`U.S. Patent No. RE42,678
`unsatisfactory. See, e.g., JDS Uniphase Corp. v. Fiber, LLC, IPR2013-00318,
`
`Paper 45 at 36-37 (P.T.A.B. Dec. 5, 2014) (upholding patentability where a
`
`petitioner relied on conclusory statements).
`
`Contrary to Petitioners’ contentions, this case is technologically complex. As
`
`the Board can glean from the applied references and expert reports associated with
`
`this technology, Petitioners over simplify issues and leap to conclusions on
`
`combinability. A micromirror is a small device in the end, but a lot of engineering
`
`disciplines (e.g., electrical engineering, mechanical engineering, physics, and
`
`packaging technology) go into designing a micromirror. (Ex. 2005, Marom Depo.
`
`Tr., 222:13-18.) Instead of saying that using Smith’s micromirror in Bouevitch
`
`would have been a simple substitution and a POSA only had two types of
`
`micromirrors to choose from, Petitioners’ combinability analysis in the Petition
`
`should have reflected the technological complexities of this case. Because
`
`Petitioners failed to timely and adequately explain how the references are
`
`combinable, the Board should not institute trial.
`
`Additionally, the Board should not institute trial because the asserted
`
`combination does not disclose each and every claim element.
`
`The first reference, Bouevitch, discloses an optical system comprising one
`
`input port and one output port. Like the prior art systems that are described in the
`
`’678 Patent, Bouevitch uses peripheral circulators to add optical signals to the
`
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`Case IPR2015-00894 of
`U.S. Patent No. RE42,678
`input port and to drop optical signals from the output port. To compare the fiber
`
`collimators that serve as the ports in the ’678 Patent to the circulators in Bouevitch,
`
`Figure 1A of the ’678 Patent and Figure 11 of Bouevitch are reproduced below.
`
`
`
`Figure 1A of the ’678 Patent
`
`
`
` Figure 11 of Bouevitch
`
`
`
`
`Petitioners contend 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 underlying
`
`motivation to design an optical switch scalable to a large number of channels. The
`
`’678 Patent and its provisional distinguish circulators from the claimed “ports” and
`
`emphasize that conventional optical systems could not scale to a large number of
`
`channels because the optical systems utilized circulators. The ’678 Patent explicitly
`
`labels the ports “collimators” and says throughout the specification and the claims
`
`that multiple fiber collimators provide the ports. The multiple fiber collimator ports
`
`in the ’678 Patent are not circulator ports. Construing the claimed collimator ports
`
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`Case IPR2015-00894 of
`U.S. Patent No. RE42,678
`to read on optical circulator ports is contrary to the ’678 Patent and misapprehends
`
`the capabilities the ’678 Patent brought to the industry.
`
`For the element “micromirrors being pivotal about two axes and being . . .
`
`continuously controllable,” Petitioners use the second and third references, Smith
`
`and Lin. Smith and Lin, however, do not teach or suggest the claim element.
`
`Petitioners first say Smith teaches continuous control because Smith teaches
`
`analog control. But Smith, along with several other patents and patent applications
`
`in the Smith family, indicate that the Smith mirror operates under step-wise digital
`
`control (i.e., not analog control). Petitioners then say Lin teaches continuous
`
`control, but as recognized by experts in the field, Lin’s specification does not
`
`describe a controller. Further, Lin does not teach or suggest mirrors pivotal about
`
`two axes because Lin only shows a mirror rotatable along one axis (i.e., control in
`
`only one dimension).
`
`Even more problematic than the shortcomings of Smith and Lin, Petitioners
`
`provide no KSR rationale for combining Smith and Lin or for combining both
`
`references with Bouevitch. Petitioners fail to show in the Petition that the
`
`combination teaches or suggests micromirrors that are continuously controllable
`
`and pivotal about two axes or that a POSA would have been motivated to combine
`
`the references. These deficiencies cannot be cured, so the Board should not
`
`institute trial.
`
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`Case IPR2015-00894 of
`U.S. Patent No. RE42,678
`In View of Different Arguments on the Record, the Board Should Not
`Automatically Institute and Join the Proceeding with IPR2014-01276
`
`II.
`
`The question before the Board is whether Petitioners have shown that the
`
`record in this proceeding establishes a reasonable likelihood that claims are
`
`unpatentable. See Mitsubishi Plastics, Inc., IPR2014-00524, Paper 27 at 7-8. See
`
`also 37 C.F.R. § 42.108 (requiring the Board to take into account a patent owner
`
`preliminary response where such a response was filed). In Mitsubishi Plastics, the
`
`Board rejected the argument that granting institution in one instance and denying
`
`institution in another instance necessarily equates to conflicting decisions. (See id.)
`
`The Board rejected this argument because IPRs are adversarial, adjudicative
`
`proceedings, so the Board’s findings rely on the arguments presented in the papers.
`
`(Id.)
`
`Similar to Mitsubishi Plastics, the arguments present for this institution
`
`decision are different and warrant separate consideration. Petitioners present
`
`substantially the same arguments as in IPR2014-01276. (Motion for Joinder, Paper
`
`6 at 3.) However, this Patent Owner Preliminary Response is different and raises
`
`substantially different arguments that the Board must consider in its decision.
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`Case IPR2015-00894 of
`U.S. Patent No. RE42,678
`Further, the Board now has expert testimony to weigh in its decision whether
`
`to institute trial.2 The Board said in its IPR2014-01276 institution decision, “[a]t
`
`this stage of the proceedings, absent additional supporting evidence, we are not
`
`persuaded by Patent Owner’s attorney arguments and credit the testimony of
`
`Petitioner’s declarant.” Cisco Systems, Inc. v. Capella Photonics, Inc., IPR2014-
`
`01276, Paper 8 at p. 18 (P.T.A.B. Feb. 18, 2015). The statements made throughout
`
`this Patent Owner Preliminary Response are now supported by expert testimony
`
`prepared for IPR2014-01276. Because the arguments are substantially different
`
`and the arguments are now supported by expert testimony, the Board should make
`
`its institution decision from the arguments present in this proceeding, not based on
`
`whether trial was instituted in IPR2014-01276.
`
`III. Background
`At the time of the effective filing date—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 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
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`2 See Cisco Systems, Inc. v. Capella Photonics, Inc., IPR2014-01276, Ex.
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`2004 (P.T.A.B. May 18, 2015).
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`a paramount concern”).) Providing a scalable switch was an important concern
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`because the demand for fiber optic communications was increasing, even as much
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`as 400% per year. (See Ex. 2010, Holliday OXC, p. 18. See also ’678 Patent, 1:32-
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`36 (“there is a growing demand for optical components and subsystems that enable
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`the fiber-optic communications networks to be increasingly scalable, versatile,
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`robust, and cost-effective”).)
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`A. Optical Circulators Limited the Scalability of Optical Switches
`Optical switches were unable to meet increasing demand because optical
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`switches were typically limited to two ports. Optical switches required all signals
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`to enter the optical switch on a single fiber and exit the optical switch on a single
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`fiber (i.e., two ports). (See ’678 Patent, 1:59-63; Ex. 1008, ’217 Provisional, p. 2.)
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`An additional means was required to add optical signals to the single input fiber
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`and to drop optical signals from the single output fiber. (See ’678 Patent, 1:59-63;
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`’217 Provisional, p. 2.) Optical circulators often served as the additional means to
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`add and drop optical signals. (See ’678 Patent, 1:59-2:2; ’217 Provisional, p. 2.)
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`Despite having the capability to add and drop signals, circulators increased the
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`physical size of a system, contributed to optical loss, and increased costs. (See Ex.
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`2006, Dingel, p. 401.)
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`Around the invention date of the ’678 Patent, one attempt to meet increasing
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`demand was to concatenate optical switches (i.e., connecting multiple optical
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`switches in a chain). (See ’678 Patent, 1:59-63.) However, concatenating optical
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`switches also substantially added bulk and cost. Other inventors were attempting to
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`add circulator ports to circulators. (See, e.g., Ex. 2011, Tran, p. 1100 (disclosing a
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`circulator with eight circulator ports); Ex. 2012, Kim, p. 561 (disclosing a
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`circulator with six circulator ports).) Systems using complex circulators, however,
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`still had limited scalability because the circulators were bulky, expensive, and
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`resulted in insertion loss.
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`The ’678 Patent Discloses a Scalable Switch with Multiple Ports
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`B.
`The inventors of the ’678 Patent recognized the limitations of circulator-
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`based optical switches. (See ’678 Patent, 1:32-36, 2:49-57, 3:45-46.) To address
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`the problem of limited scalability, the inventors disclosed a multiple port optical
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`switch. (See id. at 5:51-58 (“[The] underlying architecture is intrinsically scalable
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`to a large number of channel counts.”).) As stated in the ’678 Patent, “the
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`underlying OADM architecture thus presented is intrinsically scalable and [is a
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`system that] can be readily extended.” (Id. at 5:36-40.)
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`The inventors of the ’678 Patent found that continuous control of
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`micromirrors could enable reflection to multiple fiber collimator ports. (See id. at
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`4:7-14.) The inventors aligned a plurality of fiber collimators, a diffraction grating,
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`a lens, and a micromirror array in a configuration capable of reflecting an input
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`light beam to multiple fiber collimator ports. (See, e.g., id. at FIG. 1A.) The
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`configuration disclosed in the ’678 Patent not only enabled dynamic switching but
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`also reduced the number of components required to scale the system. For example,
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`adding a fiber collimator as a port 110-N to the array of ports 110 could seamlessly
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`accommodate an additional input to the system or an additional output from the
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`system. (See id. at FIG. 1A, 2A, 2B, 3. See also Holliday R-OADMs, p. 61
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`(“Capella’s WavePath product line [(which uses the technology disclosed in the
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`’678 Patent)] enables system architects to design optical platforms that offer
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`dynamic and remote reconfigurability, thus greatly simplifying the engineering and
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`provisioning of optical networks.”); WavePath, pp. 1, 4 (showing that the
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`WavePath product line is covered by the ’678 Patent).)
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`The system in Figures 1A and 1B (both reproduced below) depict a
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`preferred embodiment with the claimed features of the ’678 Patent.
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`Figures 1A and 1B of the ’678 Patent
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`The system has an array of micromirrors that are individually and
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`continuously controllable to reflect individual channels into any selected output
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`port among the multiple output ports. (See, e.g., ’678 Patent, Abstract, FIG. 1A.)
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`The system also has a diffraction grating 101 to demultiplex and multiplex a light
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`beam and a focusing lens 102 to focus the light beam’s wavelengths onto the array
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`of micromirrors 103. (Id. at 6:52-63.) Further, the system has, as circled in red,
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`multiple fiber collimators 110 serving as the structure for the input and output
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`ports. (Id.) 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. (See id. at 6:64-7:11.) The input light beam impinges on the
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`diffraction grating to demultiplex the light beam into individual wavelengths. (See
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`id.) The wavelengths then diffract off the diffraction grating toward the lens. (See
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`id.) And the lens focuses the individual wavelengths onto different mirrors along
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`the micromirror array. (See id.)
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`A unique feature of the ’678 Patent is that the micromirrors are individually
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`and continuously controllable about two axes. (See id. at 8:21-27, 9:8-9.) The
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`mirror’s controllability enables the system to dynamically direct light to the
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`collimator ports. (See id.) As stated in the ’678 Patent, “[a] distinct feature of the
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`channel micromirrors in the present invention, in contrast to those used in the prior
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`art, is that the motion, e.g., pivoting (or rotation), of each channel micromirror is
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`under analog control so that its pivoting angle can be continuously adjusted. This
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`enables each channel micromirror to scan its corresponding spectral channel across
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`all possible output ports.” (Id. at 4:7-13.) So, because the individual wavelengths
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`are focused onto different mirrors along the micromirror array and because the
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`micromirrors are individually and continuously controllable, the tilt of the
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`micromirrors reflect the individual wavelengths back along a selected path to a
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`desired output port. (See id. at 6:64-7:11.) This enables the system to scale to a
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`larger number of output ports.
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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 id. at 8:28-36.) The system controls
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`power by altering the coupling efficiency of the spectral channels into fiber
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`collimator output ports. (See id..) The coupling efficiency was defined as the ratio
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`of the optical power that is coupled into the output port’s fiber core to the total
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`amount of optical power from the light beam. (Id. at 8:31-36.)
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`Embodiments of the ’678 Patent utilize servo-control. (Id. at 4:47-56, 11:52-
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`57.) An embodiment of the servo-control assembly is depicted in Figure 4A of the