UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`CIENA CORPORATION
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`CORIANT OPERATIONS, INC., and
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`FUJITSU NETWORK COMMUNICATIONS,CORIANT (USA) INC.,
`Petitioner
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`v.
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`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`Inter Partes Review Case No. IPR2015-
`00726Unassigned
`Patent No. RE42,36842,678
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`CORRECTED PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. RE42,36842,678 UNDER 35 U.S.C. §§ 311-319 AND
`37 C.F.R. §§ 42.1-.80, 42.100-.123
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Petitioner Ciena Corp. et al.
`Exhibit 1037-1
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`TABLE OF CONTENTS
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`
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`I.
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`INTRODUCTION ......................................................................................... 1
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`II. MANDATORY NOTICES AND FEES ....................................................... 2
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`III. CERTIFICATION OF GROUNDS FOR STANDING ................................ 3
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`IV. BACKGROUND ........................................................................................... 4
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`V.
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`CLAIM CONSTRUCTION ........................................................................... 8
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`VI. LEVEL OF ORDINARY SKILL IN THE ART .................................... 1314
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`VII. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ........... 1314
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`A.
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`Summary of Grounds for Challenge ............................................. 1415
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`B. Motivation to Combine References .............................................. 1516
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`C. Ground 1: Claims 161-6, 9-12 and 15-2265 Are Anticipated by
`Smith ............................................................................................. 1617
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`D. Ground 2: Claims 1, 2, 5, 6-4, 9-12 and 15-21, 10, 13, 17, 19-23,
`27, 29, 44-46 and 53 would have been obvious by the combination
`of BouevitchSmith and Carr ........................................................ 2420
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`E. Ground 3: Claims 1-4, 9, 10, 13, 17, 19, 44, 53, 61, 64 and 2265
`would have been obvious by the combination of Bouevitch and
`SparksCarr .................................................................................. 4730
`Ground 4: Claims 1-64, 919-1223, 27, 29, 44-46 and 1561-2263
`would have been obvious by the combination of SmithBouevitch
`and TewSparks ............................................................................ 5743
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`F.
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`G. Grounds 5 and 6: Claims 61-65 would have been obvious by the
`combination of Smith and Tew and Claims 1-4, 9, 10, 13, 17, 19-
`23, 27, 29, 44-46 and 53 would have been obvious by the
`combination of Smith, Carr and Tew ............................................ 56
`GE. Ground 57: Claims 1, 2, 5, 6, 9-12, 10, 13, 17, 19, 44, 53, 61, 64 and
`15-2165 would have been obvious by the combination of
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`Petitioner Ciena Corp. et al.
`Exhibit 1037-2
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`Bouevitch, Carr and Tew ................................................................. 59
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`HF. Ground 68: Claims 1-4, 1719, 20, 27, 44-46 and 2261-63 would
`have been obvious by the combination of Bouevitch, Sparks and
`Tew .................................................................................................. 59
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`VIII. CONCLUSION ....................................................................................... 6059
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`ATTACHMENT A: ............................................................................................... 61
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`ATTACHMENT B: APPENDIX OF EXHIBITS ................................................. 62
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`ii
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`Petitioner Ciena Corp. et al.
`Exhibit 1037-3
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`I.
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`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`
`INTRODUCTION
`Petitioner Fujitsu Network Communications, Inc. (“FNC” orCiena
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`Corp., Coriant Operations, Inc., and Coriant (USA) Inc., ( “Petitioner”)
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`requests inter partes review of claims 1-64, 9-12, 10, 13, 17, 19-23, 27, 29, 44-46,
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`53 and 1561-2265 (“Petitioned Claims”) of U.S. Patent No. RE42,36842,678 (“the
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`‘368678 patent”) (Ex. 1001), assigned on its face to Capella Photonics, Inc.
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`(“Capella”).
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`This Petition relies on twoone primary references: U.S. Patent No.
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`6,798,941 (“Smith”) (Ex. 1009) andreference: U.S. Patent No. 6,498,872
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`(“Bouevitch”) (Ex. 1002).
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`Smith, which was not before the Patent Office, renders all of the
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`Petitioned Claims anticipated or obvious in combination with U.S. Patent
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`Publication No. 2002/0081070 (“Tew”) (Ex. 1007). Notably, Smith discloses
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`the precise features that Capella relied upon to distinguish over the prior art
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`it identified in its reissue application.
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`Bouevitch was before the Patent Office during the reissue prosecution, but
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`Capella admitted that its original claims were overbroad and invalid over
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`Bouevitch in view of one or more of three additional references. Although Capella
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`amended its claims to purportedly overcome their deficiency, the amended claims
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`fail to distinguish over the prior art references identified herein as Bouevitch in
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`1
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`Petitioner Ciena Corp. et al.
`Exhibit 1037-4
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`

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`
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`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`combination with U.S. Patent No. 6,442,307 (“Carr”) (Ex. 1005) or U.S. Patent
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`No. 6,625,340 (“Sparks”) (Ex. 1006) and optionally Tew render all of the
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`Petitioned Claims obvious.
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`The Petitioned Claims are currently being challenged in view of the
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`combination of Bouevitch and Smith in IPR2014-0116601276 and Bouevitch,
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`Sparks, and Lin in IPR2015-00739. This Petition presents different grounds and
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`prior art references than those addressed in that challenge.those challenges. This
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`petition presents the same grounds as IPR2015-00727, and Petitioner seeks to
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`join IPR2015-00727.
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`Inter partes review of the Petitioned Claims should be instituted because this
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`petition shows that there is a reasonable likelihood that Petitioner will prevail on
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`the Petitioned Claims. Each limitation of each Petitioned Claim is disclosed by
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`and/or obvious to a person having ordinary skill in the art (“PHOSITA”) in light of
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`the prior art discussed herein. Claims 1-64, 9-12, 10, 13, 17, 19-23, 27, 29, 44-46,
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`53 and 1561-2265 of the ‘368678 patent should be found unpatentable and
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`canceled.
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`
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`II. MANDATORY NOTICES AND FEES
`Real Parties-in-Interest: Petitioner Fujitsu Network Communications,
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`Inc. and Fujitsu LimitedCiena Corporation, Coriant Operations, Inc.
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`(“COI”), Coriant (USA) Inc. (“CUSA”), are the real parties-in-interest in this
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`2
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`Petitioner Ciena Corp. et al.
`Exhibit 1037-5
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`
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`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`petition. Tellabs, Inc., a parent holding company of COI, was accused in
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`litigation identified herein of infringing the ‘678 Patent. Even though Tellabs,
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`Inc. was dismissed on jurisdictional grounds, Tellabs, Inc., and CUSA’s
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`corresponding parent holding company, Coriant International Group LLC
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`(formerly Blackhawk Holding Vehicle LLC), are also identified in this section
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`out of an abundance of caution.”
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`Related Matters: Capella has asserted the ‘368678 patent in the following
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`actions: Capella Photonics, Inc. v. Cisco Systems, Inc., No. 3:14-cv-03348;
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`Capella Photonics, Inc. v. Fujitsu Network Communications, Inc., No. 3:14-cv-
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`03349; Capella Photonics, Inc. v. Tellabs Operations, Inc., No. 3:14-cv-03350;
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`Capella Photonics, Inc. v. Ciena Corporation, No. 3:14-cv-03351 (collectively,
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`“Capella Litigation”). Claims 1-6, 9-12, and 15-22 of the ‘368 patent are
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`asserted in the Capella Litigation. Petitioner is also filing a petition for inter
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`partes review against U.S. Patent No. RE42,67842,368, which is the other patent
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`asserted in the Capella Litigation and is related to the ‘368678 patent. This
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`Petition is filed with a motion seeking to join Inter partes review No. 2015-
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`00727. Inter partes review Nos. 2014-01166 is, 2015-00726, 2015-00731, and
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`2015-00816 (joined with 2014-01166) are directed to the ‘368U.S. Patent No.
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`RE42,368, and inter partes review NoNos. 2014–01276 is, 2015-00727, 2015-
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`00739, and 2015-00894 (joined with 2014–01276) are directed to U.S. Patent
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`3
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`Petitioner Ciena Corp. et al.
`Exhibit 1037-6
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`

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`
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`No. RE42,678.
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`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
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`Counsel: Lead counsel in this case is Christopher E. ChalsenMatthew J.
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`Moore (PTO Reg. No. 30,93642,012); backup counsel is Lawrence T. Kass
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`(PTORobert Steinberg (Reg. No. 40,671), Nathaniel T. Browand
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`(PTO33,144), J. Pieter van Es (Reg. No. 59,683) and Suraj37,746), Thomas K.
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`BalusuPratt (PTO Reg. No. 65,51937,210), Jordan N. Bodner (Reg. No.
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`42,338), and Michael Cuviello (Reg. No. 59,255). A power of attorney for each
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`Petitioner accompanies this Petition.
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`Service Information: Lead counsel: Matthew J. Moore,
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`Matthew.Moore@lw.com, Latham & Watkins LLP, 555 Eleventh Street NW,
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`Suite 1000, Washington, DC 20004-1304, Tel.: (202) 637-2278, Fax.:
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`(202)637-2201. Back-up counsel: Robert Steinberg,
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`Bob.Steinberg@lw.com, Latham & Watkins LLP, 355 South Grand Avenue,
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`Los Angeles, CA 90071-1560, Tel.: (213) 891-8989, Fax.: (213) 891-8763. J.
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`Pieter van Es, PvanEs@bannerwitcoff.com; Thomas K. Pratt,
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`TPratt@bannerwitcoff.com, Banner & Witcoff, Ltd., 10 South Wacker
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`Drive, Suite 3000, Chicago, IL 60606, Tel: (312)463-5000, Fax: (312)463-
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`5001. Jordan N. Bodner, JBodner@bannerwitcoff.com; Michael S. Cuviello,
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`MCuviello@bannerwitcoff.com, Banner & Witcoff, Ltd., 1100 13th Street
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`NW, Suite 1200, Washington, DC 20005, Tel: (202)824-3000, Fax: (202)824-
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`4
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`Petitioner Ciena Corp. et al.
`Exhibit 1037-7
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`

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`
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`3001.
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`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
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`Service Information: Christopher E. Chalsen, cchalsen@milbank.com;
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`Lawrence T. Kass, lkass@milbank.com; Nathaniel T. Browand,
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`nbrowand@milbank.com; Suraj K. Balusu, sbalusu@milbank.com
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`Milbank, Tweed, Hadley & McCloy LLP, 1 Chase Manhattan Plaza
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`New York, New York 10005 Tel: (212) 530-5380
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`Fax: (212) 822-5380
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`Please direct all correspondence to lead counsel at the above address.
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`Petitioner consents to email service at: cchalsen@milbank.com,
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`lkass@milbank.com, nbrowand@milbank.com, and
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`sbalusu@milbankMatthew.Moore@lw.com, Bob.Steinberg@lw.com,
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`cienacapellaipr.lwteam@lw.com, PvanEs@bannerwitcoff.com,
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`TPratt@bannerwitcoff.com, JBodner@bannerwitcoff.com,
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`MCuviello@bannerwitcoff.com, Banner-Tellabs@bannerwitcoff.com.
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`Payment: Under 37 C.F.R § 42.103(a), the Office is authorized to charge the
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`fee set forth in 37 C.F.R. § 42.15(a) to Deposit Account No. 133250506239 as well
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`as any additional fees that might be due in connection with this Petition.
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`III. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies under 37 C.F.R. § 42.104(a) that the patent for which
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`review is sought is available for inter partes review and that Petitioner is not
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`barred or estopped from requesting an inter partes review challenging the patent
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`5
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`Petitioner Ciena Corp. et al.
`Exhibit 1037-8
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`

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`
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`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`claims on the grounds identified in this Petition.
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`IV. BACKGROUND
`Summary: Fiber-optic communication uses light to carry information over
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`optical fibers. Originally, fiber-optic systems used one data channel per fiber. To
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`increase the number of channels carried by a single fiber, wavelength division
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`multiplexing (“WDM”) was developed. WDM is a type of optical communication
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`that uses different wavelengths of light to carry different channels of data. WDM
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`combines (multiplexes) multiple individual channels onto a single fiber of an
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`optical network. WDM was known before the ‘368678 patent’s priority date. E.g.,
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`Ex. 1002 at 1:18-21.
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`At different points in a fiber network, some of the individual channels may
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`be dropped from the fiber, for example when those channels are directed locally
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`and need not be passed further down the fiber network. At these network points,
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`other channels may also be added into the fiber for transmission onward to other
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`portions of the network. To handle this add/drop process, optical add-drop
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`multiplexers (OADMs) were developed. OADMs are used to insert channels onto,
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`pass along, and drop channels from an optical fiber without disrupting the overall
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`traffic flow on the fiber. Ex. 1001 at 1:51-58. OADMs were known before the
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`‘368678 patent’s priority date. E.g., Ex. 1002 at 1:25-30.
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`Configurable OADMs (“COADMS”) and reconfigurable OADMs
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`6
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`Petitioner Ciena Corp. et al.
`Exhibit 1037-9
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`(“ROADMs”) are controllable to dynamically select which wavelengths to add,
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`drop, or pass through. E.g., Ex. 1004 at 904-05. These types of devices were
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`known in the art prior to the ‘368678 patent’s priority date. E.g., id.; Ex. 1002 at
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`Abstract, 5:15-20.
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`ROADMs operate by separating an input light beam (comprised of multiple
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`wavelengths) into constituent beams called channels. Each of these channels is
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`comprised of a wavelength or range of wavelengths from the input light beam, and
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`is individually routed by a beam-steering system to a chosen output port of the
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`ROADM. For example, a first channel can be steered so that it is switched from an
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`“input” port to an “output” port. Channels switched to the “output” port are passed
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`along the network. At the same time, a second channel can be switched to a “drop”
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`port and removed from the main fiber. The ROADM could also add a new channel
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`to the main fiber through the “add” port to replace the dropped channel. These
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`add/drop techniques were known prior to the ‘368678 patent’s priority date. E.g.,
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`Ex. 1004 at 904-05; Ex. 1002 at 14:14-15:18.
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`In addition to routing channels, ROADMs may also be used to control the
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`power of the individual channels. Power control which may be referred to as
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`attenuation is often performed by steering individual beams slightly away from the
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`target port such that the misalignment reduces the amount of the channel’s power
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`that enters the port. Power control (i.e., attenuation) by intentional misalignment in
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`7
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`Petitioner Ciena Corp. et al.
`Exhibit 1037-10
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`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`add/drop switches was known prior to the ‘368678 priority date. See, e.g., U.S.
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`Patent No. 6,442,307 (“Carr”) (Ex. 1005) at 11:13-33.
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`ROADMs use wavelength selective routers (WSRs), also called wavelength
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`selective switches (WSSs), to perform switching and power control. See, e.g., id.
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`at 11:13-20; U.S. Patent No. 6,625,340 (“Sparks”) (Ex. 1006) at Fig. 2b, 5:4-11.
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`As of the ‘368678 patent’s priority date, WSRs/WSSs were known. See, e.g., Ex.
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`1002 at 14:52-65; Ex. 1004 at 904-05; Ex. 1005 at 11:26-33; Ex. 1006 at claim 1.
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`Different technology may be used to perform the switching and attenuation
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`functions in WSSs. In one embodiment, WSSs may use small tilting mirrors,
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`called Micro Electro Mechanical Systems (MEMS) mirrors, which can control the
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`direction of light beams. Ex. 1005 at 1:13-38; see also Ex. 1001 at 3:54-58. Prior-
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`art WSSs could tilt the individual mirrors using analog voltage control. Ex. 1005
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`at 1:13-38; Ex. 1007 at [0030] & [0031]; Ex. 1008 at 9:10-10:3. The orientation of
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`the MEMS mirrors allows each reflected beam to be directed towards a selected
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`port. Id. Prior-art MEMS mirrors could be tilted in one or two axes. Id.
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`Cited Art: Except for Bouevitch, none of the references listed in Section VII
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`were cited on the face of the ‘368678 patent.
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`Reissue Prosecution and Overview of the Claims: The ‘368678 patent
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`originally issued asis a reissue of U.S. Patent No. 6,879,750RE39,397 (“the
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`‘750397 patent”). According to Capella, the original patent’s claims were invalid
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`8
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`Petitioner Ciena Corp. et al.
`Exhibit 1037-11
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`

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`
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`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`over Bouevitch and in further view of three additional references. Capella
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`expressly acknowledged its error and identified the two elements that it alleged
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`needed to be added to its claims to support patentability, namely (1) control in
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`two-dimensionspivotability of channel micromirrors, and (2) use of beam-
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`deflecting elements for power controlcontrol of power to output ports:
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`At least one error upon which reissue is based is
`described as follows: Claim 1 is deemed to be too broad
`and invalid in view of U.S. Patent No. 6,498,872 to
`Bouevitch and further in view of one or more of U.S.
`Patent No. 6,567,574 to Ma [Ex. 1019], U.S. Patent No.
`6,256,430 to Jin [Ex. 1020], or U.S. Patent No. 6,631,222
`to Wagener [Ex. 1021] by failing to include limitations
`regarding the spatial array of beam deflecting elements
`being individually and continuously controllable in two
`dimensions topivotability of channel micromirrors and
`control theof power of thereceived spectral channels
`reflectedcoupled to selected output ports, as indicated by
`the amendments to Claim 1 in the Preliminary
`Amendment referred to above.
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`Ex. 1003 at 81-82104 (emphases added).
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`In its efforts toTo distinguish over Bouevitch, Capella’s first amendment
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`specified that the beam-deflecting elements must be controllable in two
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`dimensions. This amendment corresponds to a mirror tilting inmirrors must
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`9
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`Petitioner Ciena Corp. et al.
`Exhibit 1037-12
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`

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`
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`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`be pivotal about two axes rather than one. As for the second amendment, Patent
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`Owner specified that the beam-deflecting elementsmirrors are used to control the
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`power of the channel reflectedcoupled to a port.
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`Capella made almost identical amendments to each of the independent
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`claims 44 and 61.
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`
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`V. CLAIM CONSTRUCTION
`This Petition shows that the Petitioned Claims of the ‘368678 patent (Ex.
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`1001) are unpatentable when the claims are given their broadest reasonable
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`interpretation in light of the specification, which is further supported by patentee’s
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`allegations in the co-pending litigation.
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`The Board previously concluded that no express construction was necessary
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`for the claim terms “in two dimensions,” “continuously controllable,” and “servo-
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`control assembly,” among other terms. IPR2014-01166, Paper No. 8 at 11-12.
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`Petitioner agrees that no express construction is required for purposes of this inter
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`partes review but offers the constructions set forth below only for purposes of this
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`inter partes review to the extent that the Board finds that an express construction is
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`required. The challenges presented herein do not change based on whether there
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`are no express constructions or the constructions set forth below are adopted.
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`“In two dimensions” (all claims) 61-67)
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`A.
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`In the Capella Litigation, Capella asserted that “in two dimensions” should
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`be given its plain and ordinary meaning or construed to mean “in two dimensions
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`10
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`Petitioner Ciena Corp. et al.
`Exhibit 1037-13
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`

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`
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`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`(e.g., x and y dimensions).” Ex. 1012 at 15, Joint Claim Construction and
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`Prehearing Statement. Petitioner disagrees with Capella’s position. In the Capella
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`Litigation, FNCPetitioner proposed that “in two dimensions” means “in two
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`axes.” Id.
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`The broadest reasonable interpretation (“BRI”) for the phrase “in two
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`dimensions” in light of the specification is “in two axes.” As claim 1 states the
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`“beam-deflecting elements” are “controllable in two dimensions.” The ‘368678
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`patent consistently describes these beam-deflecting elements as various types of
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`mirrors which are rotated around the two axes in which the mirrors tilt to deflect
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`light. The specification states, for example, that the beam-deflecting elements
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`“may be pivoted“each channel micromirror may be pivotable about one or two
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`axes.” Ex. 1001 at 4:25-26, 9:8-9. The specification also describes certain
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`embodiments that use two-dimensional arrays of input and output ports. For these
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`embodiments, the specification describes that the mirrors are required to tilt along
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`two axes (“biaxially”) to switch the beams between the ports. Id. at 4:25-29. And
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`further, the ‘368678 patent explains how to control power by tilting the mirrors in
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`two axes. Id. at 4:45-56, 11:5-36.
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`B.
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`“Continuously [controllable”/“Controlling … continuously” (all
`claims)controlling/pivotable]” (claims 1-20, 27, 31-67)
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`In the Capella Litigation, Capella asserted that “continuously” should be
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`
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`given its plain and ordinary meaning or construed to mean “actively.” Ex. 1012 at
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`11
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`Petitioner Ciena Corp. et al.
`Exhibit 1037-14
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`

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`
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`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`10. Petitioner disagrees with Capella’s position. In the Capella Litigation,
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`FNCPetitioner proposed that “continuously [controllable/controlling/pivotable]”
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`should be construed as “by analog and not step-wise control.” Id.
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`The BRI for “continuously [controllable”/“controlling …
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`continuously/pivotable]” in light of the specification is “under analog control.”
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`This definition is consistent with the use of the term in the specification, which
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`describes how “analog” means are used to effect continuous control of the mirrors.
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`The patent explains that “[a] distinct feature of the channel micromirrors in the
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`present invention, in contrast to those used in the prior art, is that the motion…of
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`each channel micromirror is under analog control such that its pivoting angle can
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`be continuously adjusted.” Ex. 1001 at 4:7-11 (emphasis added). Another passage
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`in the specification states that “[w]hat is important is that the pivoting (or
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`rotational) motion of each channel micromirror be individually controllable in an
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`analog manner, whereby the pivoting angle can be continuously adjusted so as to
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`enable the channel micromirror to scan a spectral channel across all possible output
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`ports.” Id. at 9:9-14 (emphasis added). Yet another passage states that “channel
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`micromirrors 103 are individually controllable and movable, e.g., pivotable (or
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`rotatable) under analog (or continuous) control.” Id. at 7:6-8.
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`C. “Beam-deflecting elements” (all claims)
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`In the Capella Litigation, Capella asserted that the term “beam-
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`12
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`Petitioner Ciena Corp. et al.
`Exhibit 1037-15
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`

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`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`deflecting elements” should be given its plain and ordinary meaning or
`
`construed to mean “components of a switching array that can be controlled to
`
`cause a change in the path of a light beam.” Ex. 1012 at 38-39. Petitioner
`
`disagrees with Capella’s position. In the Capella Litigation, FNC proposed
`
`that the term “beam-deflecting elements” is indefinite, or alternatively should
`
`be construed under § 112(6), or alternatively should be construed to mean
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`“moveable mirrors.” Id.
`
`The BRI for the term “beam-deflecting elements” in light of the
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`specification is “moveable mirrors.” This definition is consistent with the use
`
`of the term in the specification, which describes “micromachined mirrors”
`
`and “reflective ribbons (or membranes)” as types of beam-deflecting elements.
`
`Ex. 1001 at 4:22-25. Specifically, the ‘368 patent states that the “channel
`
`micromirrors may be provided by silicon micromachined mirrors, reflective
`
`ribbons (or membranes), or other types of beam-deflecting elements known in the
`
`art. And each micromirror may be pivoted about one or two axes.” Id. at 9:5-
`
`9 (emphasis added). As additional support for this construction, claims 13 and
`
`14 of the ‘368 patent respectively state that beam-deflecting elements comprise
`
`“micromachined mirrors” and “reflective membranes.” Id. at 15:1-4. The
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`specification also explains that “[w]hat is important is that the pivoting (or
`
`rotational) motion of each channel micromirror be individually controllable in
`
`
`
`13
`
`Petitioner Ciena Corp. et al.
`Exhibit 1037-16
`
`

`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`an analog manner, whereby the pivoting angle can be continuously adjusted so
`
`as to enable the channel micro-mirror to scan a spectral channel across all
`
`possible output ports.” Id. at 9:9-14.
`
`C. D. “Servo-control assembly” (Claims 3 &/ “servo-based” (claims
`2-4, 21-30, 32-33, 38-39, 45-46)
`
`In the Capella Litigation, Capella asserted that “servo-control assembly”
`
`should be given its plain and ordinary meaning or construed to mean “assembly
`
`that controls a device in response to a control signal.” Ex. 1012 at 93. Petitioner
`
`disagrees with Capella’s position. In the Capella Litigation, FNCPetitioner
`
`proposed that “servo-control assembly” should be construed as “assembly that
`
`automatically takes measurements, and controls a mechanical device on response to
`
`those measurements.” Id.
`
`The BRI for the term “servo control assembly” in light of the specification is
`
`“assembly that uses automatic feedback to control a device in response to a control
`
`signal.” This definition isThe BRI for the term “servo-based” in light of the
`
`specification is “using automatic feedback to control a device in response to a
`
`control signal.” These definitions are consistent with the use of the termterms
`
`in the specification, which equates servo control with use of an automatic feedback
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`loop. For example, when describing its “servo control,” the ‘368678 patent teaches
`
`a spectral monitor that provides “feedback” control for the mirrors. Ex. 1001 at
`
`11:21-24. The ‘368678 patent states that “servo-control assembly 440 further
`
`
`
`14
`
`Petitioner Ciena Corp. et al.
`Exhibit 1037-17
`
`

`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`includes a processing unit 470, in communication with the spectral monitor 460
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`and the channel micromirrors 430 of the WSR apparatus 410. The processing unit
`
`470 uses the power measurements from the spectral monitor 460 to provide
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`feedback control of the channel micromirrors 430.” Id. at 11:18-24 (emphasis
`
`added). In another passage, the ‘368678 patent states that 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 micro mirrors on an
`
`individual basis, so as to maintain a predetermined coupling efficiency of each
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`spectral channel.” Id. at 4:45-52; see also id. at 11:24-36..
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`Moreover, the ‘368678 patent figures depicting the “servo-control
`
`assembly,” show a controller which takes measurements of the output power and
`
`moves the mirrors to further adjust that power—a typical feedback loop. Id. at
`
`Figs. 4a, 4b. Also confirming this BRI, the feedback-based control described in the
`
`‘368678 patent achieves the same goals that the patent ascribes to its “servo-control
`
`assembly”—automatic adjustment to account for changing conditions, such as the
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`possible changes in alignment of the parts within the device. Ex. 1001 at 4:56-67.
`
`Extrinsic evidence confirms that a servo involves an automatic feedback. Ex. 1013
`
`at 617, Newton’s Telecom Dictionary (17th ed. 2001); Ex. 1014 at 908, Fiber
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`Optics Standard Dictionary (3rd ed. 1997); Ex. 1015 at 1227, Webster’s New
`
`World College Dictionary (3rd ed. 1997).
`
`
`
`15
`
`Petitioner Ciena Corp. et al.
`Exhibit 1037-18
`
`

`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`“Beam-deflecting elements” (claims 61-67)
`
`D.
`In the Capella Litigation, Capella asserted that the term “beam-
`
`deflecting elements” should be given its plain and ordinary meaning or
`
`construed to mean “components of a switching array that can be controlled to
`
`cause a change in the path of a light beam.” Ex. 1012 at 38-39. Petitioner
`
`disagrees with Capella’s position. In the Capella Litigation, Petitioner
`
`proposed that “beam-deflecting elements” is indefinite, or alternatively should
`
`be construed under § 112(6), or alternatively should be construed to mean
`
`“moveable mirrors.” Ex. 1012 at 38-39.
`
`The BRI for the term “beam-deflecting elements” in light of the
`
`specification is “moveable mirrors.” This definition is consistent with the use
`
`of the term in the specification, which describes “micromachined mirrors”
`
`and “reflective ribbons (or membranes)” as types of beam-deflecting elements.
`
`Ex. 1001 at 4:22-25. Specifically, the ‘678 patent states that the “channel
`
`micromirrors may be provided by silicon micromachined mirrors, reflective
`
`ribbons (or membranes), or other types of beam-deflecting elements known in the
`
`art. And each micromirror may be pivoted about one or two axes.” Id. at 9:5-
`
`9 (emphasis added). As additional support for this construction, claim 67 of
`
`the ‘678 patent states that beam-deflecting elements comprise “an array of
`
`silicon micromachined mirrors.” Id. at cl. 67. The specification also explains
`
`
`
`16
`
`Petitioner Ciena Corp. et al.
`Exhibit 1037-19
`
`

`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`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 micro-mirror to scan a spectral channel across all possible output
`
`ports.” Id. at 9:9-14.
`
`“Channel micromirror” (claims 1-60)
`
`E.
`In the Capella Litigation, Capella asserted that the term “channel
`
`micromirror” should be construed to mean “small mirror surfaces for
`
`reflecting light in channels.” Ex. 1012 at 53. Petitioner disagrees with
`
`Capella’s position. In the Capella Litigation, Petitioner proposed that the
`
`term “channel micromirror” should be construed to mean “a moveable
`
`mirror such that each wavelength channel is associated with a single mirror.”
`
`Ex. 1012 at 53.
`
`The BRI for the term “channel micromirror” in light of the specification
`
`is “a moveable mirror such that each wavelength channel is associated with a
`
`single mirror.” This definition is consistent with the use of the term in the
`
`specification, which states that “each channel micromirror is assigned to a
`
`specific spectral channel, hence the name ‘channel micromirror.’” Ex. 1001 at
`
`4:2-4. The ‘678 patent describes that “[a] distinct feature of the channel
`
`micromirrors in the present invention, in contrast to those used in the prior art, is
`
`
`
`17
`
`Petitioner Ciena Corp. et al.
`Exhibit 1037-20
`
`

`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`that the motion, e.g., pivoting (or rotation), of each channel micromirror is under
`
`analog control such that its pivoting angle can be continuously adjusted.” Id.
`
`at 4:7-14 (emphasis added). The ‘678 patent describes this aspect of pivoting
`
`or rotating the channel micromirrors under analog control as “a unique
`
`feature of the present invention,” id. at 8:21-27 (emphasis added), and
`
`“important.” Id. at 9:9-14. Thus, as used in the specification, a channel
`
`micromirror must be a moveable mirror.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`The level of ordinary skill in the art is evidenced by the references. See In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). A PHOSITA at the time of the
`
`‘368678 patent would have been an engineer or physicist with at least a Master’s
`
`degree, or equivalent experience, in optics, physics, electrical engineering, or a
`
`related field, and at least three years of additional experience designing,
`
`constructing, and/or testing optical systems. Ex. 1016 at ¶¶ 60- 62, Drabik Decl.
`
`
`
`VII. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`Under 37 C.F.R §§ 42.22(a)(1) and 42.104(b)(1)-(2), Petitioner challenges
`
`claims 1-64, 9-12, 10, 13, 17, 19-23, 27, 29, 44-46, 53 and 1561-2265 of the
`
`‘368678 patent. Petitioner requests this relief in view of the following references:
`
`
`Filing Date
`
`Type of
`Prior Art
`
`Exhibit
`
`Description
`
`
`
`18
`
`Petitioner Ciena Corp. et al.
`Exhibit 1037-21
`
`

`
`
`
`
`
`
`
`Petition for Inter Partes Review of
`U.S. Patent No. RE42,36842,678
`September 20,
`§ 102(e)
`Ex. 1009 U.S. Patent No. 6,798,941 to Smith
`2001 – Prior art
`(Pre-AIA)
`et al. (“Smith”)
`date of September
`22 2000
`December 5, 2000
`
`Ex. 1002 U.S. Patent No. 6,498,872 to
`Bouevitch et al