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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`CORIANT (USA) INC.,
`Petitioner
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`v.
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`CAPELLA PHOTONICS, INC.
`Patent Owner
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`Inter Partes Review Case No. IPR2015-01961
`Patent No. RE42,678
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`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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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`CIENA CORPORATION
`
`CORIANT OPERATIONS, INC., and
`
`CORIANT (USA) INC.,
`Petitioner
`
`v.
`
`CAPELLA PHOTONICS, INC.
`Patent Owner
`
`Inter Partes Review Case No. IPR2015-01961
`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
`
`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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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
`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 ................................ 5
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`IV. BACKGROUND ........................................................................................... 5
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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 ................15
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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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`E. Ground 1: Claims 1, 9, 10, 13, 17, 19, 44, 53, 61, 64 and 65 would
`have been obvious by the combination of Bouevitch and Carr .........17
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`F.
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`Ground 2: Claims 1-4, 19-23, 27, 29, 44-46 and 61-63 would have
`been obvious by the combination of Bouevitch and Sparks .............33
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`VIII. CONCLUSION ............................................................................................55
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`ATTACHMENT A: ...............................................................................................57
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`ATTACHMENT B: APPENDIX OF EXHIBITS .................................................58
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`i
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`I.
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`INTRODUCTION
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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`Petitioner Ciena Corp., Coriant Operations, Inc., and Coriant (USA) Inc., (
`“Petitioner”) requests inter partes review of claims 1-4, 9, 10, 13, 17, 19-23, 27,
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`29, 44-46, 53 and 61-65 (“Petitioned Claims”) of U.S. Patent No. RE42,678 (“the
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`‘678 patent”) (Ex. 1001), assigned on its face to Capella Photonics, Inc.
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`(“Capella”).
`This corrected1 Petition relies on one primary reference: U.S. Patent No.
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`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
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`paralegals and understands that the defect was with Petitioner’s use of internal
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`cross-citations in the claim charts of the declaration to other portions of the same
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`document. To address this, Petitioner has replaced all such internal cross-citations
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`in the declaration with the language referenced elsewhere in the same document.
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`Petitioner corrected both the declaration (Ex. 1039) and this corrected Petition,
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`since the Petition includes this same defect. For this reason only, the claim charts
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`in the declaration (Ex. 1039) and this Petition have lengthened. Otherwise, the
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`corrected Petition and declaration include the same information as originally filed
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`and the same information as the instituted grounds of the petition and declaration
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`in IPR2015-00727, which Petitioner seeks to join. The corrected declaration is left
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`intentionally unsigned as advised by the PTAB clerk. No substantive changes
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`were made to the declaration, but Dr. Timothy Drabik was hospitalized on
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`1
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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`6,498,872 (“Bouevitch”) (Ex. 1002).
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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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`combination with Carr or U.S. Patent No. 6,625,340 (“Sparks”) (Ex. 1006) render
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`all of the 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 IPR2014-01276 and Bouevitch, Sparks,
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`and Lin in IPR2015-00739. This Petition presents different grounds and prior art
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`references than those addressed in those challenges. This petition presents the
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`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
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`Thursday Oct. 1, 2015 and is not available to review or sign the updated
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`declaration.
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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`Real Parties-in-Interest: Petitioner Ciena Corporation, Coriant Operations,
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`Inc. (“COI”), Coriant (USA) Inc. (“CUSA”), are the real parties-in-interest in this
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`petition. Tellabs, Inc., a parent holding company of COI, was accused in litigation
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`identified herein of infringing the ‘678 Patent. Even though Tellabs, Inc. was
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`dismissed on jurisdictional grounds, Tellabs, Inc., and CUSA’s corresponding
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`parent holding company, Coriant International Group LLC (formerly Blackhawk
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`Holding Vehicle LLC), are also identified in this section out of an abundance of
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`caution.”
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`Related Matters: Capella has asserted the ‘678 patent in the following
`actions: Capella Photonics, Inc. v. Cisco Systems, Inc., No. 3:14-cv-03348;
`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;
`Capella Photonics, Inc. v. Ciena Corporation, No. 3:14-cv-03351 (collectively,
`“Capella Litigation”). Petitioner is also filing a petition for inter partes review
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`against U.S. Patent No. RE42,368, which is the other patent asserted in the Capella
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`Litigation and is related to the ‘678 patent. This Petition is filed with a motion
`seeking to join Inter partes review No. 2015-00727. Inter partes review Nos.
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`2014-01166, 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–
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`01276, 2015-00727, 2015-00739, and 2015-00894 (joined with 2014–01276) are
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`directed to U.S. Patent No. RE42,678.
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`Counsel: Lead counsel in this case is Matthew J. Moore (PTO Reg. No.
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`42,012); backup counsel is Robert Steinberg (Reg. No. 33,144), J. Pieter van Es
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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`(Reg. No. 37,746), Thomas K. Pratt (Reg. No. 37,210), Jordan N. Bodner (Reg.
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`No. 42,338), and Michael Cuviello (Reg. No. 59,255). A power of attorney for
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`each 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.: (202)637-
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`2201. Back-up counsel: Robert Steinberg, Bob.Steinberg@lw.com, Latham &
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`Watkins LLP, 355 South Grand Avenue, Los Angeles, CA 90071-1560, Tel.:
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`(213) 891-8989, Fax.: (213) 891-8763. J. Pieter van Es,
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`PvanEs@bannerwitcoff.com; Thomas K. Pratt, TPratt@bannerwitcoff.com,
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`Banner & Witcoff, Ltd., 10 South Wacker Drive, Suite 3000, Chicago, IL 60606,
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`Tel: (312)463-5000, Fax: (312)463-5001. Jordan N. Bodner,
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`JBodner@bannerwitcoff.com; Michael S. Cuviello,
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`MCuviello@bannerwitcoff.com, Banner & Witcoff, Ltd., 1100 13th Street NW,
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`Suite 1200, Washington, DC 20005, Tel: (202)824-3000, Fax: (202)824-3001.
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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: Matthew.Moore@lw.com,
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`Bob.Steinberg@lw.com, cienacapellaipr.lwteam@lw.com,
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`PvanEs@bannerwitcoff.com, TPratt@bannerwitcoff.com,
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`JBodner@bannerwitcoff.com, MCuviello@bannerwitcoff.com, Banner-
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`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. 506239 as well as any
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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`additional fees that might be due in connection with this Petition.
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`III. CERTIFICATION OF GROUNDS FOR STANDING
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`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
`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
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`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 ‘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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`pass along, and drop channels from an optical fiber without disrupting the overall
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`U.S. Patent No. RE42,678
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`traffic flow on the fiber. Ex. 1001 at 1:51-58. OADMs were known before the
`‘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,
`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 ‘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
`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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`that enters the port. Power control (i.e., attenuation) by intentional misalignment in
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`U.S. Patent No. RE42,678
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`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.
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`ROADMs use wavelength selective routers (WSRs), also called wavelength
`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 ‘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
`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
`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 ‘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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`patentability, namely (1) pivotability of channel micromirrors, and (2) control of
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`power to output ports:
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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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 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.
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`Ex. 1003 at 104 (emphases added).
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`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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`The Board previously concluded that no express construction was necessary
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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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
`partes review but offers the constructions set forth below only for purposes of this
`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 whether no express
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`constructions or the constructions set forth below are adopted.
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`A.
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`“In two dimensions” (claims 61-67)
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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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`(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, Petitioner proposed that “in two dimensions” means “in two 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 ‘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
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`about one or two axes.” Ex. 1001 at 4:25-26, 9:8-9. The specification also
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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
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`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
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`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)
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`In the Capella Litigation, Capella asserted that “continuously” should be
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`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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`Petitioner proposed that “continuously [controllable/controlling/pivotable]” should
`be construed as “by analog and not step-wise control.” Id.
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`The BRI for “continuously [controllable/controlling/pivotable]” in light of
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`the specification is “under analog control.” This definition is consistent with the
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`use of the term in the specification, which describes how “analog” means are used
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`to effect continuous control of the mirrors. The patent explains that “[a] distinct
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`feature of the channel micromirrors in the present invention, in contrast to those
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`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.
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`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
`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)
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`In the Capella Litigation, Capella asserted that “servo-control assembly”
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`should be given its plain and ordinary meaning or construed to mean “assembly
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`that controls a device in response to a control signal.” Ex. 1012 at 93. Petitioner
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`disagrees with Capella’s position. In the Capella Litigation, Petitioner proposed
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`that “servo-control assembly” should be construed as “assembly that automatically
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`takes measurements, and controls a mechanical device on response to those
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`measurements.” Id.
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`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
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`signal.” The BRI for the term “servo-based” in light of the specification is “using
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`automatic feedback to control a device in response to a control signal.” These
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`definitions are consistent with the use of the terms in the specification, which
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`equates servo control with use of an automatic feedback loop. For example, when
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`describing its “servo control,” the ‘678 patent teaches a spectral monitor that
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`provides “feedback” control for the mirrors. Ex. 1001 at 11:21-24. The ‘678
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`patent states that “servo-control assembly 440 further includes a processing unit
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`470, in communication with the spectral monitor 460 and the channel micromirrors
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`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
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`U.S. Patent No. RE42,678
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`channel micromirrors 430.” Id. at 11:18-24 (emphasis added). In another passage,
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`the ‘678 patent states that the servo-control assembly “serves to monitor the power
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`levels of the spectral channels coupled into the output ports and further provide
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`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.
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`Moreover, the ‘678 patent figures depicting the “servo-control assembly”
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`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.
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`Also confirming this BRI, the feedback-based control described in the ‘678 patent
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`achieves the same goals that the patent ascribes to its “servo-control assembly”—
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`automatic adjustment to account for changing conditions, such as the possible
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`changes in alignment of the parts within the device. Ex. 1001 at 4:56-67. Extrinsic
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`evidence confirms that a servo involves an automatic feedback. Ex. 1013 at 617,
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`Newton’s Telecom Dictionary (17th ed. 2001); Ex. 1014 at 908, Fiber Optics
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`Standard Dictionary (3rd ed. 1997); Ex. 1015 at 1227, Webster’s New World
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`College Dictionary (3rd ed. 1997).
`“Beam-deflecting elements” (claims 61-67)
`D.
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`In the Capella Litigation, Capella asserted that the term “beam-deflecting
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`elements” should be given its plain and ordinary meaning or construed to mean
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`“components of a switching array that can be controlled to cause a change in the
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`path of a light beam.” Ex. 1012 at 38-39. Petitioner disagrees with Capella’s
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`position. In the Capella Litigation, Petitioner proposed that “beam-deflecting
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`elements” is indefinite, or alternatively should be construed under § 112(6), or
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`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, 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.
`
`
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`13
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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`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,
`
`
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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`constructing, and/or testing optical systems. Ex. 10392 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:
`
`
`Filing Date
`
`Exhibit
`
`Description
`
`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”)
`
`
`
`December 5, 2000
`
`Type of
`Prior Art
`§ 102(e)
`(Pre-AIA)
`November 3, 2000 § 102(e)
`(Pre-AIA)
`December 29, 1999 § 102(e)
`(Pre-AIA)
`
`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
`
`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. 1039), which explains what the art would have conveyed to a PHOSITA.
`
`
`
`
`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.
`
`
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`15
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
`Index of References
`35 USC
`§ 103 Bouevitch in view of Carr
`
`Ground
`1
`
`2
`
`§ 103 Bouevitch in view of Sparks
`
`Claims
`1, 9, 10, 13, 17, 19, 44, 53,
`61, 64 and 65
`1-4, 19-23, 27, 29, 44-46
`and 61-63
`
`
`
`
`
`Claims 1-4, 9, 10, 13, 17, 19-23, 27, 29, 44-46, 53 and 61-65 of the ‘678
`
`patent would have been obvious to a PHOSITA by the art cited in the grounds of
`
`unpatentability described above. In the attached declaration, Dr. Drabik provides a
`
`thorough discussion of the state of the art at the time of this alleged “invention.”
`
`Ex. 1039 at ¶¶ 45-62, Drabik Decl. His declaration makes clear that all the
`
`elements of all the Petitioned Claims lack invention. Ex. 1039 at ¶¶ 98-131,
`
`Drabik Decl.
`B. Motivation to Combine References
`
`Petitioner submits that no showing of specific motivations to combine the
`
`respective references in Grounds 1-2 (set forth below) is required, as the respective
`
`combinations would have no unexpected results, and at most would simply
`
`represent known alternatives to one of skill in the art. See KSR Int’l Co. v.
`Teleflex, Inc., 127 S.Ct. 1727, 1739-40 (2007). Indeed, the Supreme Court held
`
`that a person of ordinary skill in the art is “a person of ordinary creativity, not an
`
`automaton” and “in many cases a person of ordinary skill in the art will be able to
`fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 1742.
`
`Nevertheless, specific motivations and reasons to combine the references are
`
`identified below.
`C. Ground 1: Claims 1, 9, 10, 13, 17, 19, 44, 53, 61, 64 and 65 would
`
`
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
`have been obvious by the combination of Bouevitch and Carr
`
`Claims 1, 9, 10, 13, 17, 19, 44, 53, 61, 64 and 65 would have been obvious
`
`over Bouevitch in view of Carr. Each element of these claims is either disclosed or
`
`would be an obvious variant on the teachings of Bouevitch and Carr.
`Bouevitch is a prior art reference to the ‘678 patent under § 102(e).
`
`Bouevitch is entitled to a prior art date of at least its filing date of December 5,
`
`2000, which is before the earliest effective filing date of March 19, 2001 for the
`‘678 patent. After disclosing Bouevitch and stating that “Claim 1 is deemed to be
`too broad and invalid in view of U.S. Patent No. 6,498,872 to Bouevitch” and
`
`other references, Capella has never claimed that Bouevitch is not prior art.
`
`Bouevitch discloses a configurable optical add/drop multiplexer (“COADM”) that
`
`uses MEMS mirrors for routing signals. Ex. 1002 at Abstract. By tilting its
`
`MEMS mirrors, the Bouevitch COADM switches an input spectral channel to
`either an output port or a drop port. Id. at 14:14-15:18, Fig. 11. The Bouevitch
`
`COADM can also add a new channel in place of a dropped channel. Id.
`Bouevitch’s COADM uses MEMS mirrors with one axis of rotation. E.g., id. at
`
`7:23-37 (describing tilting mirrors along one axis). Ex. 1039 ¶ 101, Drabik Decl.
`
`Carr discloses a two-dimensional array of double-gimballed mirrors that can
`be tilted about two perpendicular torsion bars to any desired orientation. Id. at
`
`3:44-47; 3:66-4:2. Carr discloses power control or attenuation by tilting the
`
`MEMS mirrors to orientations such that only a portion of input signals that are
`reflected off the MEMS mirrors enters the output fibers. Id. at 11:13-20. Carr also
`
`states that the MEMS mirrors may be oriented in a manner to drop a signal by
`
`
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`17
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`Corrected Petition for Inter Partes Review of
`U.S. Patent No. RE42,678
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`reflecting the input signal to no output fiber or add a channel to an output fiber by
`orienting a mirror to reflect a new input to the output. Id. at 11:26-33.
`
`A PHOSITA would have been motivated to combine Bouevitch with Carr
`
`for a number of independent reasons. Fundamentally, the two references cover
`
`highly related subject matter. Each reference discusses devices in the same field
`
`of fiber optic communications. Id. at 1:6-15; Ex. 1002 at 1:10-19. Each reference
`
`is directed at the same application in that
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