Trials@uspto.gov
`571-272-7822
`
`Paper 16
`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 IPR2015-007271
`Patent RE42,678 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 IPR2015-01961 was joined with IPR2015-00727 on March 21, 2016, by
`Order in IPR2015-01961, Paper 14 (IPR2015-00726, Paper 26).
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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 1–4, 9, 10, 13, 17, 19–23, 27, 29,
`44–46, 53 and 61–65 of U.S. Patent No. RE42,678 E (“the ’678 patent”).
`Paper 1 (“Pet.”). Paper 1 (“Petition” or “Pet.”); see also IPR2015-01961,
`Paper 7.
`Claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46, 53 and 61–65 of the
`’678 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-
`01276, (PTAB Feb. 17, 2016) (Paper 40) (the ’1276 case). The grounds of
`unpatentability asserted by Petitioner in this case rely on prior art, evidence,
`and arguments not asserted in the ’1276 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 ’1276 case.
`Based on the information provided in the Petition, and in
`consideration of the Preliminary Response (Paper 7) of Patent Owner, we
`instituted a trial pursuant to 35 U.S.C. § 314(a) of: (1) claims 1, 9, 10, 13,
`17, 19, 44, 53, 61, 64, and 65 as obvious over Bouevitch2 and Carr3 under 35
`U.S.C. § 103(a), and (2) claims 1–4, 19–23, 27, 29, 44–46, and 61–63 as
`
`
`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”).
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`obvious over Bouevitch and Sparks4 under 35 U.S.C. § 103(a). Paper 8
`(“Institution Decision”); see also IPR2015-01961, Paper 14.
`After institution of trial, Patent Owner filed a Response (Paper 20,
`“Response” or “PO Resp.”) and Petitioner filed a Reply (Paper 25, “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).
`
`
`4 U.S. Patent No. 6,625,340 B1, issued Sep. 23, 2003 (Ex. 1006, “Sparks”)
`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 14. 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 17), and Patent Owner’s Request for Reconsideration of that decision
`was denied (Paper 21). 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 24. 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 17, 4–5. 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. 45–49. 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 transcript of the Oral Hearing conducted on May 24, 2016, is
`entered as Paper 35 (“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
`a preponderance of the evidence that claims 1–4, 9, 10, 13, 17, 19–23, 27,
`29, 44–46, 53 and 61–65 of the ’678 patent are unpatentable.
`BACKGROUND
`II.
`The ’678 patent (Ex. 1001)
`A.
`The ’678 patent, titled “Reconfigurable Optical Add-Drop
`Multiplexers with Servo Control and Dynamic Spectral Power Management
`Capabilities,” reissued September 6, 2011, from U.S. Patent No. RE 39,397
`(“the ’397 patent”). Ex. 1001. The ’397 patent reissued November 14,
`2006, from U.S. Patent No. 6,625,346 (“the ’346 patent”). Id. The ’346
`patent issued September 23, 2003, from U.S. Patent Application
`No. 09/938,426, filed August 23, 2001.
` According to the ’678 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.
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`
`The ’678 patent describes a “wavelength-separating-routing (WSR)
`apparatus that uses a diffraction grating to separate a multi-wavelength
`optical signal by wavelength into multiple spectral channels, which are then
`focused onto an array of corresponding channel micromirrors.” Id. at
`Abstract. “The channel micromirrors are individually controllable and
`continuously pivotable to reflect the spectral channels into selected output
`ports.” Id. According to Petitioner, the small, tilting mirrors are sometimes
`called Micro Electro Mechanical Systems or “MEMS.” Pet. 6. The WSR
`described in the ’678 patent may be used to construct dynamically
`reconfigurable OADMs for WDM optical networking applications.
`Ex. 1001 at Abstract.
`Figure 1A of the ’678 patent is reproduced below.
`
`
`Figure 1A depicts wavelength-separating-routing (WSR) apparatus 100, in
`accordance with the ’678 patent. WSR apparatus 100 is composed 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
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`beam-focuser), and array of channel micromirrors 103. Ex. 1001, 6:57–63,
`7:55–56.
`
`A multi-wavelength optical signal emerges from input port 110-1 and
`is separated into multiple spectral channels by diffraction grating 101, which
`are then focused by focusing lens 102 into a spatial array of distinct spectral
`spots (not shown). Id. at 6:64–7:2. Channel micromirrors 103 are
`positioned such that each channel micromirror receives one of the spectral
`channels. Id. at 7:2–5.
`Figure 1B of the ’678 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 ’678 patent:
`[e]ach micromirror may be pivoted about one or two axes. What
`is important is that the pivoting (or rotational) motion of each
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`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.
`
`Figure 3 of the ’678 patent is reproduced below.
`
`
`
`
`Similar to Figure 1A, above, Figure 3 also shows a WSR apparatus as
`described by the ’678 patent. Id. at 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
`micromirror 103 must be pivotable biaxially in this case (in order to direct
`its corresponding spectral channel to any one of the output ports).” Id. at
`10:43–46.
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`
`The WSR also may incorporate a servo-control assembly (together
`termed a “WSR-S apparatus”). Id. at 4:65–67. According to the ’678
`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
`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 ’678 patent is reproduced below.
`
`
`
`
`Figure 5 depicts OADM 500 in accordance with the ’678 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
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`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.
`B.
`Illustrative Claims
`Challenged claims 1, 21, 44, and 61 of the ’678 patent are
`independent. Challenged claims 2–4, 9, 10, 13, 17, 19, and 20 ultimately
`depend from claim 1; claims 22, 23, 27, and 29 ultimately depend from
`claim 21; claims 45, 46, and 53 ultimately depend from claim 44; and,
`claims 62–65 ultimately depend from claim 61. Claims 1, 21, and 61 of the
`’678 patent are illustrative of the claims at issue:
`1. A wavelength-separating-routing
`comprising:
`a) multiple fiber collimators, providing an input port
`for a multi-wavelength optical signal and a plurality of output
`ports;
`
`apparatus,
`
`b) a wavelength-separator, for separating said multi-
`wavelength optical signal from said input port into multiple
`spectral channels;
`c) a beam-focuser, for focusing said spectral channels
`into corresponding spectral spots; and
`d) a spatial array of channel micromirrors positioned
`such that each channel micromirror receives one of said
`spectral channels, said channel micromirrors being pivotal
`about two axes and being individually and continuously
`to reflect [[said]] corresponding received
`controllable
`spectral channels into any selected ones of said output ports
`and to control the power of said received spectral channels
`coupled into said output ports.
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`Ex. 1001, 14:6–23 (emphases in original, “[[ ]]” indicating matter in
`the first reissue that forms no part of the second reissue, and matter in
`italics indicating additions made by second reissue).
`21. A servo-based optical apparatus comprising:
`a) multiple fiber collimators, providing an input port
`for a multi-wavelength optical signal and a plurality of output
`ports;
`
`b) a wavelength-separator, for separating said multi-
`wavelength optical signal from said input port into multiple
`spectral channels;
`c) a beam-focuser, for focusing said spectral channels
`into corresponding spectral spots; and
`d) a spatial array of channel micromirrors positioned
`such that each channel micromirror receives one of said
`spectral channels,
`said channel micromirrors being
`individually controllable to reflect said spectral channels into
`selected ones of said output ports; and
`e) a servo-control assembly, in communication with
`said channel micromirrors and said output ports, for
`maintaining a predetermined coupling of each reflected
`spectral channel into one of said output ports.
`Ex. 1001, 15:29–48.
`61. A method of performing dynamic wavelength
`separating and routing, comprising:
`a) receiving a multi-wavelength optical signal from an
`input port;
`b) separating said multi -wavelength optical signal into
`multiple spectral channels;
`c) focusing said spectral channels onto a spatial array
`of corresponding beam-deflecting elements, whereby each
`beam-deflecting element receives one of said spectral
`channels; and
`d) dynamically and continuously controlling said
`beam-deflecting elements [[, thereby directing]] in two
`dimensions to direct said spectral channels into [[a plurality]]
`any selected ones of said output ports and to control the
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`power of the spectral channels coupled into said selected
`output ports.
`Ex. 1001, 18:55–19:3 (emphases in original, with “[[ ]]” indicating
`matter in the first reissue that forms no part of the second reissue, and matter
`in italics indicating additions made by second reissue).
`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”
`Claims 1 and 44 require “a spatial array of channel micromirrors . . .
`being individually and continuously controllable.” Ex. 1001, 14:16–20;
`17:43–47. Similarly, claim 61 requires “dynamically and continuously
`controlling said beam-deflecting elements.” Id. at 18:65–66. Petitioner
`asserts that the broadest reasonable interpretation of “continuously
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`[controllable/controlling/pivotable],” in light of the specification, is “under
`analog control.” Pet. 9–10. According to Petitioner, the ’678 patent
`identifies “under analog control” as an example of continuous control. Id.
`Petitioner identifies the following disclosures of the ’678 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
`is under analog control such that its pivoting angle can be
`continuously adjusted.” ([Ex. 1001], 4:7–11). 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.” ([Ex. 1001], 9:9–14). 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. 9–10.
`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
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`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
`the specification of the ’678 patent, encompasses “under analog control such
`that it can be continuously adjusted.”
`“servo-control assembly” and “servo-based”
`2.
`Challenged claims 2–4, 21–23, and 45 recite a “servo-control
`assembly.” Petitioner asserts that the broadest reasonable interpretation of
`“servo-control assembly” in light of the specification is “assembly that uses
`automatic feedback to control a device in response to a control signal.”
`Pet. 10–11. Challenged claims 21–25, 27, and 29 recite a “servo-based
`optical apparatus.” Petitioner asserts that “servo-based” means “using
`automatic feedback to control a device in response to a control signal.” Id.
`at 11. Patent Owner offers no construction of the terms. We are not
`persuaded that “servo” necessarily means “feedback” or “feedback-based”
`merely because the ’678 patent describes a processing unit within a servo-
`control assembly as using power measurements from the spectral monitor to
`provide feedback control of the channel mirrors. See Pet. 13–14.
`The ’678 patent does not use the term “servo-based” outside of the
`preamble of challenged claims 21–25, 27, and 29. “If . . . the body of the
`claim fully and intrinsically sets forth the complete invention, including all
`of its limitations, and the preamble offers no distinct definition of any of the
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`claimed invention’s limitations, . . . then the preamble is of no significance
`to claim construction because it cannot be said to constitute or explain a
`claim limitation.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
`1298, 1305 (Fed. Cir. 1999) (citations omitted). The bodies of claims
`21–25, 27, and 29 fully and intrinsically set forth the complete invention;
`therefore, the use of “servo-based” in the preamble does not serve as a
`limitation and need not be construed for purposes of this decision.
`With respect to “servo-control assembly,” the ’678 patent states that it
`“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.” Ex. 1001, 4:47–50. Further, “[i]f the WSR apparatus
`includes an array of collimator-alignment mirrors . . . the servo-control
`assembly may additionally provide dynamic control of the collimator-
`alignment mirrors.” Id. at 4:56–60. According to the ’678 patent, “[a]
`skilled artisan will know how to implement a suitable spectral monitor along
`with an appropriate processing unit to provide a servo-control assembly in a
`WSP-S apparatus according to the present invention, for a given
`application.” Ex. 1001, 12:11–15.
`Based on the specification, a “servo-control assembly” encompasses a
`spectral monitor and processing unit to monitor spectral channel power
`levels and control channel micro mirrors on an individual basis. See id. at
`11:10–36.
`“port”
`3.
`Claim 1 recites “multiple fiber collimators, providing an input port . . .
`and a plurality of output ports.” Ex. 1001, 14:8–10. By comparison, claim
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`61 does not recite a collimator, but instead requires “receiving a multi-
`wavelength optical signal from an input port,” and “controlling said beam
`deflecting elements . . . to direct said spectral channels into . . . output
`ports.” Id. at 18:57–19:1. Neither Petitioner nor Patent Owner offer an
`express definition of “port.” Instead Patent Owner argues that “[n]owhere in
`the ’678 patent or the prosecution history is there an indication that the ports
`are to be construed to encompass circulator ports.” PO Resp. 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
`’678 patent equate the term “port” to “collimator,” as both “port” and
`“collimator” appear separately in the claims of the ’678 patent. Ex. 1001,
`14:8–10. 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 ’678 patent, that does not redefine the term “port” to mean
`“collimator.” See id. at ¶ 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
`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
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`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 ’678 patent. Patent Owner argues that “[t]he inventors
`of the ’678 patent realized that including optical circulators in an OADM
`was a significant drawback” and that “the claimed ROADMs do not require
`circulators.” PO Resp. 13–14. Patent Owner further argues that by looking
`at the specification “as a whole,” the ’678 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 ’678 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–
`43) and find insufficient support for Patent Owner’s contention that the ’678
`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
`’678 patent, encompasses “circulator port.”
`3.
`Additional Claim Terms
`Petitioner addresses the additional claim terms “in two dimensions,”
`“beam-deflecting elements,” and “channel micromirror.” Pet. 8–9, 12–14.
`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.
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`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. 31.
`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. 31–32 (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,
`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
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`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, 9, 10, 13, 17, 19, 44, 53, 61, 64, and
`65 would have been obvious over Bouevitch and Carr. Pet. 31–44.
`1.
`Claim 1
`Claim 1, directed to a wavelength-separating-routing apparatus,
`requires “multiple fiber collimators, providing an input port . . . and a
`plurality of output ports.” Ex. 1001, 14:6–10. Petitioner contends that
`Bouevitch describes microlenses 12a and 12b, corresponding to the recited
`“multiple fiber collimators.” Pet. 36. Petitioner’s declarant, Dr. Ford,
`equates microlenses 12a and 12b to fiber collimators. Ex. 1037, ¶¶ 146–151,
`162. Petitioner further asserts that the microlenses of Bouevitch, in
`conjunction with fiber waveguides and circulators, provide an input port
`(labeled “IN”) and a plurality of output ports (labeled “OUT EXPRESS” and
`“OUT DROP”). Pet. 36–37; Pet. Reply 18; see also Ex. 1037 ¶ 162[1pre]
`and [1a] (citing, inter alia, Ex. 1002, 14:14–21, Fig. 11).
`Patent Owner argues that, under its proposed claim construction of
`“port,” Bouevitch discloses at most two ports because the ’678 patent
`equates “port” to “collimator.” PO Resp. 38–42. 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 express
`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–
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`13. Accordingly, we do not agree with Patent Owner’s contention that the
`only 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 “multiple fiber
`collimators, providing an input port . . . and a plurality of output 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-separator” for separating the
`multi-wavelength optical signal input into multiple spectral channels.
`Petitioner identifies diffraction grating 20 of Bouevitch as corresponding to
`the recited “wavelength-separator.” Pet. 37–38. Petitioner also identifies
`Bouevitch’s diffraction grating 620, spherical reflector 610, and modifying
`means 150 as corresponding to the recited “beam-focuser” of claim 1 of the
`’678 patent. Id. at 38.
`Petitioner further identifies MEMS mirror array 50 of Bouevitch as
`corresponding to the recited “a spatial array of channel micromirrors.” Id.
`(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 channel micromirrors.” Id. at
`38–39. For each of the channel micromirrors, claim 1 further requires that
`they be “pivotal about two axes” and be “individually and continuously
`controllable to reflect corresponding received spectral channels into any
`selected ones of said output ports and to control the power of said received
`spectral channels coupled into said output ports.” Petitioner identifies the
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`double gimballed mirror 21 which “can be tilted to any desired orientation.”
`Id. (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 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, continuous micromirrors would be useful
`for power control applications in WDM systems.” Ex. 1037 ¶¶ 116, 156. 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
`
`
`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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`results, and (3) would be obvious to try as there are only two options for
`tilting MEMS mirrors: one-axis and two-axis mirrors. P