Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Entered: September 28, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FUJITSU NETWORK COMMUNICATIONS, INC.,
`CORIANT OPERATIONS, INC., CORIANT (USA) INC., and
`CIENA CORPORATION
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Cases IPR2015-007261
`Patent RE42,368 E
`____________
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`1 IPR2015-01958 was joined with IPR2015-00726 on April 1, 2016, by
`Order in IPR2015-01958, Paper 11 (IPR2015-00726, Paper 28).
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`IPR2015-00726
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`
`INTRODUCTION
`I.
`Petitioner, Fujitsu Network Communications, Inc., Coriant
`Operations, Inc., Coriant (USA) Inc., and Ciena Corporation filed petitions
`requesting an inter partes review of claims 1–6, 9–12, and 15–22 of U.S.
`Patent No. RE42,368 (Ex. 1001, “the ’368 patent”). Paper 5 (“Petition” or
`“Pet.”); see also IPR2015-01958, Paper 4.
`Claims 1–6, 9–13, and 15–22 of the ’368 patent were previously held
`to be unpatentable in Cisco Systems, Inc., Ciena Corporation, Coriant
`Operations, Inc., Coriant (USA) Inc., and Fujitsu Network Communications,
`Inc., v. Capella Photonics, Inc., IPR2014-01166, (PTAB Jan. 28, 2016)
`(Paper 44) (the ’1166 case). The grounds of unpatentability asserted by
`Petitioner in this case rely on prior art, evidence, and arguments not asserted
`in the ’1166 case. Likewise, Patent Owner, Capella Photonics, Inc.,
`advances arguments and evidence in response in this case that were not
`asserted by Patent Owner in the ’1166 case.
`Based on the information provided in the Petition, and in
`consideration of the Preliminary Response (Paper 10) of Patent Owner, we
`instituted a trial pursuant to 35 U.S.C. § 314(a) of: (1) claims 1, 2, 5, 6, 9–
`12, and 15–21 as obvious over Bouevitch2 and Carr3 under 35 U.S.C.
`§ 103(a); and, (2) claims 1–4, 17, and 22 as obvious over Bouevitch and
`Sparks4 under 35 U.S.C. § 103(a). Paper 11 (“Institution Decision”); see
`also IPR2015-01958, Paper 11.
`
`
`2 U.S. Patent No. 6,498,872 B2, issued Dec. 24, 2002 (Ex. 1002,
`“Bouevitch”)
`3 U.S. Patent No. 6,442,307 B1, issued Aug. 27, 2002 (Ex. 1005, “Carr”).
`4 U.S. Patent No. 6,625,340 B1, issued Sep. 23, 2003 (Ex. 1006, “Sparks”)
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` After institution of trial, Patent Owner filed a Response (Paper 22,
`“Response” or “PO Resp.”) and Petitioner filed a Reply (Paper 27, “Pet.
`Reply”). The Petition is supported by the Declaration of Joseph E. Ford,
`Ph.D. (Ex. 1037). 5 The Response is supported by the Declaration of
`Dr. Alexander V. Sergienko (Ex. 2033).
`A transcript of the Oral Hearing conducted on May 24, 2016, is
`entered as Paper 37 (“Tr.”).
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons that follow, Petitioner has shown by
`
`
`5 At the time of filing, the Petition was supported by the Declaration of
`Timothy J. Drabik, Ph.D. Ex. 1016. After institution of trial, and prior to
`his deposition, Dr. Drabik passed away. See Paper 17. Over the opposition
`of Patent Owner, Petitioner’s motion to file as supplemental information the
`Declaration of Joseph E. Ford in support of the petition was granted
`(Paper 19), and Patent Owner’s Request for Reconsideration of that decision
`was denied (Paper 23). Patent Owner’s further attempts to obtain additional
`discovery of Dr. Drabik’s “notes, comments, and edits” after his death were
`denied as not relevant to this proceeding as Petitioner no longer relies on
`Dr. Drabik’s declaration as support for the Petition. Paper 26. Patent Owner
`was informed that “the panel will not consider the content of [Dr. Drabik’s]
`Declaration as a part of any Final Written Decision.” Paper 19, 4. Patent
`Owner further argues that Dr. Ford’s testimony is based on hindsight
`reasoning and bias, and should be given little if any weight because Patent
`Owner was unable to depose Dr. Drabik before his death and a paper
`published by Dr. Ford purportedly conflicts with Dr. Ford’s declaration as it
`“does not cite to a single reference about wavelength-selective switches that
`pre-date [Patent Owner’s] 2001 priority date.” PO Resp. 43–49. We have
`considered each of Patent Owner’s arguments and reiterate that Patent
`Owner had the opportunity to cross-examine Dr. Ford prior to filing its
`Patent Owner Response. We are not persuaded that Dr. Ford’s testimony
`should be afforded little or no weight based on the arguments asserted by
`Patent Owner.
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`a preponderance of the evidence that claims 1–6, 9–12, and 15–22 of the
`’368 patent are unpatentable.
`BACKGROUND
`II.
`The ’368 patent (Ex. 1001)
`A.
`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
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`ports.” Id. According to Petitioner, the small, tilting mirrors are sometimes
`called Micro Electro Mechanical Systems or “MEMS.” Pet. 6. The WSR
`described in the ’368 patent may be used to construct dynamically
`reconfigurable OADMs for WDM optical networking applications. Id.
`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
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`positioned such that each channel micromirror receives one of the spectral
`channels.
`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.
`
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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 also may 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 efficiency of
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`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 composed
`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.
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`
`Illustrative Claims
`B.
`Challenged claims 1, 15, 16, and 17 of the ’368 patent are
`independent. Claims 2–6 and 9–12 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 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.
`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.
`
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`
`III. ANALYSIS
`Claim Construction
`A.
`The Board interprets claims using the “broadest reasonable
`construction in light of the specification of the patent in which [they]
`appear[].” 37 C.F.R. § 42.100(b). We presume a claim term carries its
`“ordinary and customary meaning,” which is “the meaning that the term
`would have to a person of ordinary skill in the art in question” at the time of
`the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). A patentee may, however, act as their own lexicographer and give a
`term a particular meaning in the Specification, but must do so with
`“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). Only terms which are in controversy need to
`be construed, and then only to the extent necessary to resolve the
`controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999).
`1.
`“continuously controllable”
` Claim 1 requires “a spatial array of beam-deflecting elements . . .
`each of said elements being individually and continuously controllable.”
`Similarly, claim 17 requires “controlling dynamically and continuously said
`beam-deflecting elements.” Petitioner asserts that “continuously
`controllable” should be construed to mean “under analog control.” Pet. 9–
`10. Petitioner identifies the following disclosures of the ’368 patent as
`supporting its proposed construction:
`The patent explains that “[a] distinct feature of the channel
`micromirrors in the present invention, in contrast to those used
`in the prior art, is that the motion . . . of each channel micromirror
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`is under analog control such that its pivoting angle can be
`continuously adjusted.” ([Ex. 1001], 4:7–11; emphasis added).
`Another passage in the specification states that “[w]hat 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., 9:9–14;
`emphasis added). Yet another passage states that “channel
`micromirrors 103 are individually controllable and movable,
`e.g., pivotable (or rotatable) under analog (or continuous)
`control.” (Id., 7:6–8).
`Pet. 10.
`Dr. Ford also explains that “[e]lectrostatically driven MEMS mirrors
`may be driven with an analog voltage for continuous positioning control,”
`and states that a person of ordinary skill in the art “would have known that
`MEMS mirrors based on analog voltage control can be tilted to any desired
`angle in their operating range.” Ex. 1037 ¶¶ 57, 157.
`Patent Owner contends that no express construction should be given
`to any claim term. PO Resp. 19. Additionally, according to Dr. Sergienko,
`“[a]nalog controlled mirrors can operate under continuous control.”
`Ex. 2033 ¶ 48. However, there is no evidence that analog controlled mirrors
`always operate under continuous control or that only analog mirrors operate
`under continuous control.
`Accordingly, based on all of the evidence presented, we are not
`persuaded that “continuously controllable” is limited to “analog control” or
`that “analog control” necessarily corresponds to “continuous” control under
`all circumstances. We determine that “continuously controllable,” in light of
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`the specification of the ’368 patent, encompasses “under analog control such
`that it can be continuously adjusted.”
`“port”
`2.
`Claim 1 requires “an input port . . . one or more other ports. . . [and]
`an output port.” Patent Owner contends that in the ’368 patent, the recited at
`least three ports are all structurally described as “fiber collimators.”
`PO Resp. 38. Patent Owner, however, offers no definition of “port,” and
`does not suggest that the ’368 patent provides an express definition of the
`term. Instead Patent Owner argues that “[n]owhere in the ’368 patent or the
`prosecution history is there an indication that the ports are to be construed to
`encompass circulator ports.” Id. at 39. We disagree.
`There is no dispute that the ordinary and customary meaning of “port”
`encompasses circulator ports, and, indeed, any “point of entry or exit of
`light.” See Dr. Sergienko Deposition Transcript (Ex. 1041), 43:16–23,
`45:12–13 (“The circulator ports are ports with constraints.”). Nor does the
`’368 patent equate the term “port” to “collimator,” as both “port” and
`“collimator” appear separately in the claims of the ’368 patent. Ex. 1001,
`14:7, 14:48–51. We have considered the testimony of Dr. Sergienko as well
`(Ex. 2033 ¶¶ 102–123), and find that even if certain fiber collimators serve
`as ports in the ’368 patent, that does not redefine the term “port” to mean
`“collimator.” See id. ¶ 102.
`Although the broad scope of a claim term may be intentionally
`disavowed, “this intention must be clear,” see Teleflex, Inc. v. Ficosa N. Am.
`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) (“The patentee may
`demonstrate an intent to deviate from the ordinary and accustomed meaning
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`of a claim term by including in the specification expressions of manifest
`exclusion or restriction, representing a clear disavowal of claim scope.”).
`“However, this intention must be clear, and cannot draw limitations into the
`claim from a preferred embodiment.” Conoco, Inc. v. Energy & Envtl. Int’l.,
`460 F.3d 1349, 1357–58 (Fed. Cir. 2006).
`Patent Owner fails to show any expressions of manifest exclusion or
`restriction, representing a clear disavowal of claim scope with respect to the
`use of “port” in the ’368 patent. Patent Owner argues that “[t]he inventors
`of the ’368 patent realized that including optical circulators in an OADM
`was a significant drawback,” and that “the claimed ROADMs do not require
`circulators.” PO Resp. 12, 14. Patent Owner further argues that by looking
`at the specification “as a whole,” the ’368 patent employs fiber collimators
`as ports, and that the prosecution history does not indicate “that the ports are
`to be construed to encompass circulator ports.” Id. at 39. To the contrary,
`Petitioner demonstrates that a provisional application to the ’368 patent in
`fact uses circulator ports as “ports.” Pet. Reply 19–20 (citing Ex. 2012, 4,
`Fig. 9). We have considered all of the arguments advanced by Patent Owner
`in its effort to redefine “port” as excluding “circulator ports” (PO Resp. 38–
`45) and find insufficient support for Patent Owner’s contention that the ’368
`patent disavows or otherwise precludes circulator ports from the scope of the
`term “port.” We determine that “port,” in light of the specification of the
`’368 patent, encompasses “circulator port.”
`3.
`Additional Claim Terms
`Petitioner addresses several additional claim terms, including “in two
`dimensions,” “beam-deflecting elements,” and “servo-control assembly.”
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`Pet. 8–13. Patent Owner contends that no term requires express
`construction. PO Resp. 19. For purposes of this decision, no express
`construction of any additional claim terms is necessary.
`References Asserted as Prior Art
`B.
`Petitioner relies on Bouevitch, Carr, and Sparks with respect to its
`assertion that the challenged claims would have been obvious.
`Bouevitch
`1.
`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. 1002, Abstract. According to Petitioner, the COADM described in
`Bouevitch “uses MEMS mirrors with one axis of rotation.” Pet. 25.
`Carr
`2.
`Carr describes a MEMS mirror device comprised of a mirror movably
`coupled to a frame and an actuator for moving the mirror. Ex. 1005,
`Abstract. Petitioner contends “Carr discloses a two-dimensional array of
`double-gimbaled mirrors that can be tilted about two perpendicular torsion
`bars to any desired orientation,” as well as power control or attenuation by
`tilting the MEMS mirrors such that only a portion of input signals enter the
`output fibers. Pet. 25 (citing Ex. 1005, 3:44–47, 3:66–4:2, 11:13–20).
`Sparks
`3.
`Sparks describes an optical switch arranged to misalign the optical
`beam path to provide a predetermined optical output power. Ex. 1006,
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`Abstract. According to Sparks, “[t]he system operates by controlling the
`movable micromirrors (16, 26), which are fabricated using MEMS
`technology and are capable of two axis movement, to carefully align the
`beams so as to ensure that the maximum possible input optical signal is
`received at the output of the switch.” Id. at 4:43–46.
`Asserted Obviousness Over Bouevitch and Carr
`C.
`Petitioner asserts that claims 1, 2, 5, 6, 9–12, and 15–21 would have
`been obvious over Bouevitch and Carr. Pet. 24–47.
`1.
`Claim 1
`Claim 1, directed to an optical add-drop apparatus, requires “an input
`port . . . one or more other ports . . . [and] an output port.” Petitioner asserts
`that Bouevitch discloses an optical add-drop apparatus, including an input
`port, one or more other ports (labeled 80b “IN ADD” and “OUT DROP”)
`and an output port (labeled “OUT EXPRESS”), as recited by claim 1 of the
`’368 patent. Pet. 32–33 (citing Ex. 1002, 14:36–44, 14:55–15:1, Fig. 11).
`Petitioner’s contentions are supported by Dr. Ford. Ex. 1037 ¶ 151.
`Patent Owner argues that, under its proposed claim construction of
`“port,” Bouevitch discloses at most two ports because the ’368 patent
`equates “port” to “collimator.” PO Resp. 36–42. For the reasons explained
`above in our claim construction analysis for “port,” we reject Patent
`Owner’s claim construction for “port.” Failing to provide any meaning to a
`term, “port,” and then arguing that the term nevertheless fails to encompass
`a certain structure in the prior art (a structure Patent Owner’s own experts
`identifies as a “port”) is not persuasive. See Ex. 1041, 45:12–13.
`Accordingly, we do not agree with Patent Owner’s contention that the only
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`ports disclosed by Bouevitch are collimator lenses 12a and 12b. See PO
`Resp. at 40–42. Petitioner has shown, as discussed above and as supported
`by Dr. Ford, that Bouevitch discloses the recited input, output, and one or
`more other ports, as recited by claim 1.
`Patent Owner does not dispute Petitioner’s contention that Carr and
`Bouevitch together disclose the remaining limitations of claim 1. In
`particular, claim 1 requires “a wavelength-selective device” for spatially
`separating spectral channels. Petitioner identifies diffraction grating 20 of
`Bouevitch as corresponding to the recited “wavelength-selective device.”
`Pet. 34. Claim 1 also requires “a spatial array of beam-deflecting elements.”
`Petitioner identifies MEMS mirror array 50 of Bouevitch as corresponding
`to the recited “spatial array of beam-deflecting elements positioned such that
`each element receives a corresponding one of said spectral channels.”
`Pet. 34 (citing Ex. 1002, 14:48–55).
`Petitioner also identifies the two-dimensional array of movable
`gimballed mirrors shown in Carr Figures 1a and 2b as corresponding to the
`claimed “spatial array of beam-deflecting elements.” Pet. 34–36. For each
`of the beam-deflecting elements, claim 1 further requires that they be
`“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.” Petitioner
`identifies the double gimballed mirror 21 which “can be tilted to any desired
`orientation.” Pet. 34–35 (quoting Ex. 1005, 3:47–48). Carr further discloses
`intentional misalignment for power control. See id. at 35–36 (quoting Ex.
`1005, 11:11–23, see also Fig. 9). As Explained by Dr. Ford, “Carr discloses
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`effecting closed-loop power control or attenuation by tilting MEMS mirrors
`to introduce misalignment of channel wavelength beams,” and “Carr
`specifically teaches that its analog, continuously controlled micromirrors
`would be useful for power control applications in WDM systems.” Ex. 1037
`¶¶ 139, 145. In summary, for the reasons discussed above, we agree with
`Petitioner that Bouevitch and Carr disclose all of the recited limitations of
`claim 1. See Pet. 31–36. Thus, the remaining issue is whether Petitioner has
`provided “some articulated reasoning with some rational underpinning to
`support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 418 (2007).6
`With respect to a rationale for combining Bouevitch and Carr,
`Petitioner contends that the use of the two-axis mirror of Carr in Bouevitch:
`(1) is the use of a known technique to improve similar devices, (2) is a
`simple substitution of one known element for another yielding predictable
`results, and (3) would be obvious to try as there are only two options for
`tilting MEMS mirrors: one-axis and two-axis mirrors. Pet. 26–28. In
`particular, Petitioner explains that “providing the MEMS mirrors of
`Bouevitch with two-axis tilt capability enables the spatial positioning of
`
`
`6 The question of obviousness is resolved on the basis of underlying factual
`determinations including (1) the scope and content of the prior art, (2) any
`differences between the claimed subject matter and the prior art, (3) the level
`of skill in the art, and (4) secondary considerations, i.e. objective evidence of
`unobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`We have considered each of the Graham factors and incorporate our
`discussion of those considerations, to the extent there is a dispute, in our
`evaluation of the reasoning that supports the asserted combination. We
`further observe that, in this proceeding, evidence of secondary
`considerations has not been offered for evaluation.
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`returning beams in both transverse directions at the face of microlens array
`12,” thereby reducing errors in system alignment. Id. Petitioner’s rationale
`for combining Bouevitch and Carr is supported by Dr. Ford. Ex. 1037
`¶¶ 141–144 (stating, for example, that “[t]here are only two options for
`tilting MEMS mirrors: one-axis and two-axis mirrors” and that “[b]ecause
`Carr already disclosed the use of two-axis mirrors (which were available by
`the ’368 Patent’s priority date), a [person having ordinary skill in the art]
`would have a high expectation of success upon trying two-axis mirror
`control in Bouevitch.”)
`Patent Owner disputes the sufficiency of the rationale provided in the
`Petition. PO Resp. 23–36. Petitioner demonstrates that the thrust of Patent
`Owner’s arguments do not refute Petitioner’s contentions, but instead argue
`that the asserted combination would not have been obvious for other
`reasons. See Pet. Reply 12–13 (citing Ex. 1040 (noting that Dr. Sergienko
`agreed that two-axis mirrors were known in the art and provided certain
`benefits over single axis mirrors)).
`First, Patent Owner argues that a person of ordinary skill “would have
`never used two-axis mirrors in Bouevitch’s system to control power through
`intentional misalignment, because doing so would destroy Bouevitch’s
`principle of operation.” PO Resp. 24. Patent Owner contends that
`Bouevitch discloses “a folded 4-f system that autocorrects for any
`unintentional misalignments” and that this advantage would be lost if
`combined with Carr because Carr controls power through “intentional
`misalignment.” Id. at 26–27. Patent Owner further argues that Bouevitch
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`“uses a different method to control power . . . by attenuation at the MEMS
`devices, not intentional misalignment.” Id. at 28.
`There is no dispute that Bouevitch discloses methods other than
`misalignment for power control. We agree with Petitioner, however, that
`Bouevitch “recognizes that the degree of attenuation may be based on the
`angle of deflection off each MEMS mirror.” Pet. 30 (citing Ex. 1002, 7:31–
`37 (stating that the “degree of attenuation is based on the degree of
`deflection provided by the reflector (i.e., the angle of reflection)”)). Patent
`Owner argues in response that Bouevitch is referring to “constructive or
`destructive interference,” not misalignment. PO Resp. 29. In reply,
`Petitioner notes that Dr. Sergienko was unable to identify any portion of
`Bouevitch to support Patent Owner’s theory of attenuation based on
`interference. Pet. Reply 8 (citing Ex. 1040, 90:8–22). Indeed, the paragraph
`cited by Patent Owner from Dr. Sergienko’s declaration in support of the
`assertion that Bouevitch “refers” to power control through interference, in
`fact, says no such thing. PO Resp. 29 (citing Ex. 2033 ¶ 99 (stating that
`Bouevitch refers to modifying means for power control and that another
`reference (Ex. 2031) illustrates power control through interference)). We
`find persuasive Petitioner’s explanation that had Bouevitch intended to refer
`to interference-based attenuation instead of angular misalignment, then
`Bouevitch would have addressed altering distances, not angles of tilt. See
`Pet. Reply 8–10 (citing Ex. 1040, 126:9–127:7) (explaining that Mechanical
`Anti-Reflection Switch (MARS) modulator device operates in a ‘surface-
`normal manner’ by vertically moving the partially reflective membrane,”
`and noting that Dr. Sergienko agreed that the MARS device does not vary
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`the angle of reflection). We further see no inconsistency between
`Bouevitch’s disclosure of methods to prevent unintentional misalignment
`with other methods that incorporate intentional misalignment for power
`control. The prior art’s mere disclosure of more than one alternative does
`not constitute a teaching away from any of these alternatives because such
`disclosure does not criticize, discredit, or otherwise discourage the solution
`claimed in the . . . application.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
`2004). For the same reasons we are not persuaded that applying intentional
`misalignment for power control as disclosed by Carr would destroy
`Bouevitch’s principle of operation.
`Second, Patent Owner argues that Petitioner’s combination of
`Bouevitch and Carr is improper hindsight because it relies on knowledge
`beyond the level of ordinary skill at the time of the claimed invention and
`includes knowledge gleaned only from the applicant’s disclosure. PO Resp.
`31–36. Patent Owner argues that “Dr. Ford assumed wavelength-selective
`switches were known at the time of the invention, when, in fact, they were
`not.” Id. at 31. Patent Owner’s argument is premised on its contention that
`Dr. Ford published a paper in 2006 which did not contain any citations “to
`confirm that wavelength-selective switches were known when the ’368
`patent was filed.” Id. at 32. Patent Owner’s argument is not persuasive
`evidence that wavelength switches were unknown at the relevant time. To
`the contrary, Dr. Ford’s declaration in this proceeding identifies references
`supporting the contention that wavelength-selective switches were known
`and described prior to Patent Owner’s priority date. See Ex. 1037 ¶ 52
`(citing Ex. 1002, 5:15–38; Ex. 1027, 1:56–67). That those same references
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`were not cited in an article