UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`CIENA CORPORATION
`
`CORIANT OPERATIONS, INC., and
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`FUJITSU NETWORK COMMUNICATIONS,CORIANT (USA) INC.,
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`Inter Partes Review Case No. IPR2015-
`0072701961
`Patent No. RE42,678
`
`CORRECTED PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. RE42,678 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 1040-1
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`

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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
`TABLE OF CONTENTS
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`
`
`I.
`
`INTRODUCTION ......................................................................................... 1
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`II. MANDATORY NOTICES AND FEES ....................................................... 2
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`III. CERTIFICATION OF GROUNDS FOR STANDING ..............................35
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`IV. BACKGROUND .........................................................................................45
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`V.
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`CLAIM CONSTRUCTION ........................................................................... 8
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`VI. LEVEL OF ORDINARY SKILL IN THE ART .........................................14
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`VII. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ................14
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`A.
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`Summary of Grounds for Challenge ..................................................15
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`B. Motivation to Combine References ...................................................16
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`C. Ground 1: Claims 61-65 Are Anticipated by Smith ....................17
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`D. Ground 2: Claims 1-4, 9, 10, 13, 17, 19-23, 27, 29, 44-46 and 53
`would have been obvious by the combination of Smith and Carr
` ...........................................................................................................20
`E. Ground 31: Claims 1, 9, 10, 13, 17, 19, 44, 53, 61, 64 and 65 would
`have been obvious by the combination of Bouevitch and Carr .....3016
`Ground 42: Claims 1-4, 19-23, 27, 29, 44-46 and 61-63 would have
`been obvious by the combination of Bouevitch and Sparks .........4333
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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
`E. Ground 7: Claims 1, 9, 10, 13, 17, 19, 44, 53, 61, 64 and 65 would
`have been obvious by the combination of Bouevitch, Carr and
`Tew ....................................................................................................59
`F. Ground 8: Claims 1-4, 19, 20, 27, 44-46 and 61-63 would have
`i
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`Petitioner Ciena Corp. et al.
`Exhibit 1040-2
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`

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`
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
`been obvious by the combination of Bouevitch, Sparks and Tew
` ...........................................................................................................59
`VIII. CONCLUSION ........................................................................................5955
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`ATTACHMENT A: ...........................................................................................6157
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`ATTACHMENT B: APPENDIX OF EXHIBITS .............................................6258
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`ii
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`Petitioner Ciena Corp. et al.
`Exhibit 1040-3
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`

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`I.
`
`INTRODUCTION
`
`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
`
`Petitioner Fujitsu Network Communications, Inc. (“FNC” orCiena
`Corp., Coriant Operations, Inc., and Coriant (USA) Inc., ( “Petitioner”)
`requests inter partes review of claims 1-4, 9, 10, 13, 17, 19-23, 27, 29, 44-46, 53
`
`and 61-65 (“Petitioned Claims”) of U.S. Patent No. RE42,678 (“the ‘678 patent”)
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`(Ex. 1001), assigned on its face to Capella Photonics, Inc. (“Capella”).
`This corrected1 Petition relies on twoone primary references: U.S. Patent
`
`1 This corrected Petition is filed pursuant to the Board’s Order at Paper No. 6,
`which held that the original Petition, Paper No. 4, contained an unspecified 37
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`C.F.R. § 42.6(a)(B)(iv)(3) defect. Petitioner corresponded with the Board’s
`trial paralegals and understands that the defect was with Petitioner’s use of
`internal cross-citations in the claim charts of the declaration to other portions
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`of the same document. To address this, Petitioner has replaced all such
`internal cross-citations in the declaration with the language referenced
`elsewhere in the same document. Petitioner corrected both the declaration
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`(Ex. 1039) and this corrected Petition, since the Petition includes this same
`defect. For this reason only, the claim charts in the declaration (Ex. 1039) and
`this Petition have lengthened. Otherwise, the corrected Petition and
`
`declaration include the same information as originally filed and the same
`information as the instituted grounds of the petition and declaration in
`IPR2015-00727, which Petitioner seeks to join. The corrected declaration is
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`left intentionally unsigned as advised by the PTAB clerk. No substantive
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`1
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`Petitioner Ciena Corp. et al.
`Exhibit 1040-4
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`

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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
`
`No. 6,798,941 (“Smith”) (Ex. 1009) andreference: U.S. Patent No. 6,498,872
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`(“Bouevitch”) (Ex. 1002).
`Smith, which was not before the Patent Office, renders all of the
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`Petitioned Claims anticipated or obvious in combination with additional
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`reference U.S. Patent No. 6,442,307 (“Carr”) (Ex. 1005) and optionally U.S.
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`Patent Publication No. 2002/0081070 (“Tew”) (Ex. 1007). Notably, Smith
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`discloses the precise features that Capella relied upon to distinguish over the
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`prior art it identified in its reissue application.
`
`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
`combination with Carr or U.S. Patent No. 6,625,340 (“Sparks”) (Ex. 1006) and
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`optionally Tew render all of the Petitioned Claims obvious.
`
`The Petitioned Claims are currently being challenged in view of the
`combination of Bouevitch and Smith in IPR2014-01276 and Bouevitch, Sparks,
`
`and Lin in IPR2015-00739. This Petition presents different grounds and prior art
`
`
`changes were made to the declaration, but Dr. Timothy Drabik was
`hospitalized on Thursday Oct. 1, 2015 and is not available to review or sign
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`the updated declaration.
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`
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`2
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`Petitioner Ciena Corp. et al.
`Exhibit 1040-5
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`

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`
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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`references than those addressed in that challenge.those challenges. This petition
`presents the same grounds as IPR2015-00727, and Petitioner seeks to join
`
`IPR2015-00727.
`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 1-4, 9, 10, 13, 17, 19-23, 27, 29, 44-46, 53
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`and 61-65 of the ‘678 patent should be found unpatentable and canceled.
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`II. MANDATORY NOTICES AND FEES
`
`Real Parties-in-Interest: Petitioner Fujitsu Network Communications,
`Inc. and Fujitsu LimitedCiena Corporation, Coriant Operations, Inc.
`
`(“COI”), Coriant (USA) Inc. (“CUSA”), are the real parties-in-interest in this
`petition. Tellabs, Inc., a parent holding company of COI, was accused in
`litigation identified herein of infringing the ‘678 Patent. Even though Tellabs,
`
`Inc. was dismissed on jurisdictional grounds, Tellabs, Inc., and CUSA’s
`corresponding parent holding company, Coriant International Group LLC
`(formerly Blackhawk Holding Vehicle LLC), are also identified in this section
`
`out of an abundance of caution.”
`
`Related Matters: Capella has asserted the ‘678 patent in the following
`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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`3
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`Petitioner Ciena Corp. et al.
`Exhibit 1040-6
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`

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`
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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`03349; Capella Photonics, Inc. v. Tellabs Operations, Inc., No. 3:14-cv-03350;
`Capella Photonics, Inc. v. Ciena Corporation, No. 3:14-cv-03351 (collectively,
`
`“Capella Litigation”). Claims 1-4, 9, 10, 13, 17, 19-23, 27, 29, 44-46, 53 and 61-
`65 of the ‘678 patent are asserted in the Capella Litigation. Petitioner is also
`filing a petition for inter partes review against U.S. Patent No. RE42,368, which is
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`the other patent asserted in the Capella Litigation and is related to the ‘678 patent.
`This Petition is filed with a motion seeking to join Inter partes review No. 2014-
`01276 is directed to the ‘678 Patent, and inter2015-00727. Inter partes review
`NoNos. 2014-01166 is, 2015-00726, 2015-00731, and 2015-00816 (joined with
`2014-01166) are directed to U.S. Patent No. RE42,368, and inter partes review
`Nos. 2014–01276, 2015-00727, 2015-00739, and 2015-00894 (joined with 2014–
`
`01276) are directed to U.S. Patent No. RE42,678.
`Counsel: Lead counsel in this case is Christopher E. ChalsenMatthew J.
`Moore (PTO Reg. No. 30,93642,012); backup counsel is Lawrence T. Kass
`
`(PTORobert Steinberg (Reg. No. 40,671), Nathaniel T. Browand
`(PTO33,144), J. Pieter van Es (Reg. No. 59,683) and Suraj37,746), Thomas K.
`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
`Petitioner accompanies this Petition.
`Service Information: Lead counsel: Matthew J. Moore,
`
`Matthew.Moore@lw.com, Latham & Watkins LLP, 555 Eleventh Street NW,
`Suite 1000, Washington, DC 20004-1304, Tel.: (202) 637-2278, Fax.:
`(202)637-2201. Back-up counsel: Robert Steinberg,
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`4
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`Petitioner Ciena Corp. et al.
`Exhibit 1040-7
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`

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`
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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`Bob.Steinberg@lw.com, Latham & Watkins LLP, 355 South Grand Avenue,
`Los Angeles, CA 90071-1560, Tel.: (213) 891-8989, Fax.: (213) 891-8763. J.
`
`Pieter van Es, PvanEs@bannerwitcoff.com; Thomas K. Pratt,
`TPratt@bannerwitcoff.com, Banner & Witcoff, Ltd., 10 South Wacker
`Drive, Suite 3000, Chicago, IL 60606, Tel: (312)463-5000, Fax: (312)463-
`
`5001. Jordan N. Bodner, JBodner@bannerwitcoff.com; Michael S. Cuviello,
`MCuviello@bannerwitcoff.com, Banner & Witcoff, Ltd., 1100 13th Street
`NW, Suite 1200, Washington, DC 20005, Tel: (202)824-3000, Fax: (202)824-
`
`3001.
`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.
`Petitioner consents to email service at: cchalsen@milbank.com,
`lkass@milbank.com, nbrowand@milbank.com, and
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`sbalusu@milbankMatthew.Moore@lw.com, Bob.Steinberg@lw.com,
`cienacapellaipr.lwteam@lw.com, PvanEs@bannerwitcoff.com,
`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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`
`
`5
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`Petitioner Ciena Corp. et al.
`Exhibit 1040-8
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`

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`
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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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
`review is sought is available for inter partes review and that Petitioner is not
`barred or estopped from requesting an inter partes review challenging the patent
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`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
`optical network. WDM was known before the ‘678 patent’s priority date. E.g., Ex.
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`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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`6
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`Petitioner Ciena Corp. et al.
`Exhibit 1040-9
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`

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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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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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`‘678 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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`(“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
`known in the art prior to the ‘678 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 ‘678 patent’s priority date. E.g., Ex.
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`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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`
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`7
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`Petitioner Ciena Corp. et al.
`Exhibit 1040-10
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`

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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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`that enters the port. Power control (i.e., attenuation) by intentional misalignment in
`add/drop switches was known prior to the ‘678 priority date. See, e.g., U.S. Patent
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`No. 6,442,307 (“Carr”) (Ex. 1005) at 11:13-33.
`
`ROADMs use wavelength selective routers (WSRs), also called wavelength
`selective switches (WSSs), to perform switching and power control. See, e.g., id.
`
`at 11:13-20; U.S. Patent No. 6,625,340 (“Sparks”) (Ex. 1006) at Fig. 2b, 5:4-11.
`As of the ‘678 patent’s priority date, WSRs/WSSs were known. See, e.g., Ex. 1002
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`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-
`
`art WSSs could tilt the individual mirrors using analog voltage control. Ex. 1005
`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
`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
`
`were cited on the face of the ‘678 patent.
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`Reissue Prosecution and Overview of the Claims: The ‘678 patent is a
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`reissue of U.S. Patent No. RE39,397 (“the ‘397 patent”). According to Capella, the
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`original patent’s claims were invalid over Bouevitch and in further view of three
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`additional references. Capella expressly acknowledged its error and identified the
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`two elements that it alleged needed to be added to its claims to support
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`8
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`Petitioner Ciena Corp. et al.
`Exhibit 1040-11
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`

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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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`patentability, namely (1) pivotability of channel micromirrors, and (2) control of
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`power to output ports:
`
`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 pivotability of channel micromirrors and
`control of power of received spectral channels coupled to
`output ports, as indicated by the amendments to Claim 1
`in the Preliminary Amendment referred to above.
`
`Ex. 1003 at 104 (emphases added).
`
`To distinguish over Bouevitch, Capella’s first amendment specified that the
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`mirrors must be pivotal about two axes. As for the second amendment, Patent
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`Owner specified that the mirrors are used to control the power of the channel
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`coupled to a port. Capella made almost identical amendments to claims 44 and 61.
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`V. CLAIM CONSTRUCTION
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`
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`This Petition shows that the Petitioned Claims of the ‘678 patent (Ex. 1001)
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`are unpatentable when the claims are given their broadest reasonable interpretation
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`in light of the specification, which is further supported by patentee’s allegations in
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`the co-pending litigation.
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`
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`9
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`Petitioner Ciena Corp. et al.
`Exhibit 1040-12
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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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.
`Petitioner agrees that no express construction is required for purposes of this inter
`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
`
`required. The challenges presented herein do not change whether no express
`
`constructions or the constructions set forth below are adopted.
`
`A.
`
`“In two dimensions” (claims 61-67)
`
`In the Capella Litigation, Capella asserted that “in two dimensions” should
`
`be given its plain and ordinary meaning or construed to mean “in two dimensions
`
`(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
`Litigation, FNCPetitioner proposed that “in two dimensions” means “in two
`axes.” Id.
`
`The broadest reasonable interpretation (“BRI”) for the phrase “in two
`
`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 ‘678 patent
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`consistently describes these beam-deflecting elements as various types of mirrors
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`which are rotated around the two axes in which the mirrors tilt to deflect light. The
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`specification states, for example, that “each channel micromirror may be pivotable
`
`about one or two axes.” Ex. 1001 at 4:25-26, 9:8-9. The specification also
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`
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`10
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`Petitioner Ciena Corp. et al.
`Exhibit 1040-13
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`

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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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`describes certain embodiments that use two-dimensional arrays of input and output
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`ports. For these embodiments, the specification describes that the mirrors are
`
`required to tilt along two axes (“biaxially”) to switch the beams between the ports.
`Id. at 4:25-29. And further, the ‘678 patent explains how to control power by
`tilting the mirrors in two axes. Id. at 4:45-56, 11:5-36.
`“Continuously [controllable/controlling/pivotable]” (claims 1-20,
`B.
`27, 31-67)
`
`In the Capella Litigation, Capella asserted that “continuously” should be
`
`given its plain and ordinary meaning or construed to mean “actively.” Ex. 1012 at
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`10. Petitioner disagrees with Capella’s position. In the Capella Litigation,
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`FNCPetitioner proposed that “continuously [controllable/controlling/pivotable]”
`should be construed as “by analog and not step-wise control.” Id.
`
`The BRI for “continuously [controllable/controlling/pivotable]” in light of
`
`the specification is “under analog control.” This definition is consistent with the
`
`use of the term in the specification, which describes how “analog” means are used
`
`to effect continuous control of the mirrors. 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 at 4:7-11 (emphasis added). Another passage in the specification states that
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`“[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
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`
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`11
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`Petitioner Ciena Corp. et al.
`Exhibit 1040-14
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`

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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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`micromirror to scan a spectral channel across all possible output ports.” Id. at 9:9-
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`14 (emphasis added). Yet another passage states that “channel micromirrors 103
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`are individually controllable and movable, e.g., pivotable (or rotatable) under
`analog (or continuous) control.” Id. at 7:6-8.
`“Servo-control assembly” / “servo-based” (claims 2-4, 21-30, 32-
`C.
`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
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`“assembly that uses automatic feedback to control a device in response to a control
`
`signal.” The 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 terms in the specification, which
`
`equates servo control with use of an automatic feedback loop. For example, when
`
`describing its “servo control,” the ‘678 patent teaches a spectral monitor that
`
`provides “feedback” control for the mirrors. Ex. 1001 at 11:21-24. The ‘678
`
`patent states that “servo-control assembly 440 further includes a processing unit
`
`470, in communication with the spectral monitor 460 and the channel micromirrors
`
`
`
`12
`
`Petitioner Ciena Corp. et al.
`Exhibit 1040-15
`
`

`
`
`
`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
`
`430 of the WSR apparatus 410. The processing unit 470 uses the power
`measurements from the spectral monitor 460 to provide feedback control of the
`
`channel micromirrors 430.” Id. at 11:18-24 (emphasis added). In another passage,
`
`the ‘678 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 spectral channel.” Id. at 4:45-52.
`
`Moreover, the ‘678 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 ‘678 patent
`
`achieves the same goals that the patent ascribes to its “servo-control assembly”—
`
`automatic adjustment to account for changing conditions, such as the 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 Optics
`
`Standard Dictionary (3rd ed. 1997); Ex. 1015 at 1227, Webster’s New World
`
`College Dictionary (3rd ed. 1997).
`“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
`
`
`
`13
`
`Petitioner Ciena Corp. et al.
`Exhibit 1040-16
`
`

`
`
`
`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
`
`position. In the Capella Litigation, FNCPetitioner 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 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, FNCPetitioner proposed that the term “channel
`
`
`
`14
`
`Petitioner Ciena Corp. et al.
`Exhibit 1040-17
`
`

`
`
`
`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
`
`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 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
`
`‘678 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,
`
`
`
`15
`
`Petitioner Ciena Corp. et al.
`Exhibit 1040-18
`
`

`
`
`
`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
`
`constructing, and/or testing optical systems. Ex. 101610392 at ¶ 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 1-4, 9, 10, 13, 17, 19-23, 27, 29, 44-46, 53 and 61-65 of the ‘678 patent.
`
`Petitioner requests this relief in view of the following references:
`
`
`Exhibit
`
`Description
`
`Filing Date
`
`Type of
`Prior Art
`§ 102(e)
`(Pre-AIA)
`
`Ex. 1009 U.S. Patent No. 6,798,941 to Smith
`et al. (“Smith”)
`
`Ex. 1002 U.S. Patent No. 6,498,872 to
`Bouevitch et al. (“Bouevitch”)
`Ex. 1005 U.S. Patent No. 6,442,307 to
`Carr et al. (“Carr”)
`Ex. 1006 U.S. Patent No. 6,625,340 to
`Sparks et al. (“Sparks”)
`Ex. 1007 U.S. Patent Application
`Publication No. 2002/0081070 to
`Tew (“Tew”)
`
`
`
`September 20,
`2001 – Prior art
`date of September
`22 2000
`December 5, 2000
`
`§ 102(e)
`(Pre-AIA)
`November 3, 2000 § 102(e)
`(Pre-AIA)
`December 29, 1999 § 102(e)
`(Pre-AIA)
`§ 102(e)
`(Pre-AIA)
`
`November 13, 2001
`- Prior art date of
`November 30, 2000
`
`A full list of exhibits relied on in this petition is included as Attachment B.
`Summary of Grounds for Challenge
`A.
`Inter partes review is requested on the grounds for unpatentability listed in
`
`
`2 For all citations to Dr. Drabik’s unsigned, corrected declaration, Ex. 1039,
`
`Petitioner also cites to the same paragraphs of Dr. Drabik’s substantively
`
`identical signed declaration, Ex. 1016.
`
`
`
`16
`
`Petitioner Ciena Corp. et al.
`Exhibit 1040-19
`
`

`
`
`
`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
`the index below. In support of the proposed grounds for unpatentability, this
`
`Petition is accompanied by a declaration of a technical expert, Dr. Timothy Drabik
`
`(Ex. 10161039), which explains what the art would have conveyed to a PHOSITA.
`
`Ground 35 USC
`1
`§ 102
`2
`§ 103
`
`Index of References
`
`Smith
`Smith in view of Carr
`
`§ 103 Bouevitch in view of Carr
`
`§ 103 Bouevitch in view of Sparks
`
`§ 103
`§ 103
`
`Smith in view of Tew
`Smith in view of Carr and Tew
`
`§ 103 Bouevitch in view of Carr and
`Tew
`
`Claims
`
`61-65
`1-4, 9