UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`JDS Uniphase Corporation
`Petitioner
`
`V.
`
`Capella Photonics, Inc.
`Patent Owner
`
`Patent No. RE42,3 68
`
`Filing Date: June 15, 2010
`Reissue Date: May 17, 2011
`
`Title: RECONFIGURABLE OPTICAL ADD—DROP IVIULTIPLEXERS
`WITH SERVO CONTROL AND DYNAMIC SPECTRAL POWER
`MANAGEMENT CAPABILITIES
`
`DECLARATION OF SHELDON MCLAUGHLIN
`
`Inter Partes Review No. Unassigned
`
`
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`
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`Exhibit 1028, Page 1
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`Table of Contents
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`Page
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS ............................................ ..4
`
`A.
`
`Education and Background ................................................................ ..4
`
`B. Materials Considered ......................................................................... ..5
`
`II.
`
`LEGAL PRINCIPLES USED IN THE ANALYSIS ................................... ..8
`
`A.
`
`B.
`
`C.
`
`D.
`
`Person Having Ordinary Skill in the Art ........................................... ..8
`
`Prior Art............................................................................................. ..9
`
`Identification of Combinations of Prior Art..................................... .. 10
`
`Broadest Reasonable Interpretations ............................................... ..1O
`
`THE ‘368 Patent ........................................................................................ ..l2
`
`STATE OF THE ART OF THE RELEVANT TECHNOLOGY AT
`THE TIME OF THE ALLEGED INVENTION ........................................ .. 13
`
`III.
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`IV.
`
`A.
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`Reconfigurable Optical Add-Drop Multiplexers ............................ ..l3
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`B. Wavelength Selective Switches ...................................................... ..I5
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`C. Microelectromechanical Systems .................................................... .. 1 8
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`V. MOTIVATION TO COMBINE................................................................ ..20
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`A. Motivation to Combine Bouevitch and Sparks ............................... ..20
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`VI. BOUEVITCH AND SPARKS RENDER OBVIOUS ALL
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`PETITIONED CLAIMS ............................................................................ ..26
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`A. Claim 1 .............................................................................................. ..26
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`(i)
`
`(ii)
`
`Claim 1 — preamble .................................................................. ..26
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`Element 1[a] — Input porl:........................................................ .26
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`(iii) Element 1 [b] - Output & other ports for 2nd channels ........... ..27
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`(iv) Element 1[c] — Wavelength-selective device ......................... ..28
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`(V)
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`Element l[d] — 2~axis beam—deflecting element..................... ..29
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`(vi)
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`2—axis beam-deflecting elements ............................................. ..36
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`Exhibit 1023, Page 2
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`EE2r3
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`1'5!
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`2E
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`
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`B.
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`C.
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`Claim 2 .............................................................................................. ..41
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`Claim 3 .............................................................................................. ..44
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`D. Claim 4 .............................................................................................. ..5l
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`E
`
`F.
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`Claim 5 .............................................................................................. ..52
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`Claim 6 .............................................................................................. ..53
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`G. Claim 9 .............................................................................................. ..55
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`H. Claim 10 ............................................................................................ ..55
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`1.
`
`J.
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`Claim 11 ............................................................................................ ..56
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`Claim 12 — Grounds 1, 3 and 4 .......................................................... ..57
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`K. Claim 13 ............................................................................................ ..59
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`L.
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`Claim 15 — Grounds 1 and 2 .............................................................. ..60
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`(i)
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`(ii)
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`Element l5[c] m drop ports for dropped channels ................... ..60
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`Element 15[d]-[e] ................................................................... ..6l
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`(iii) Element l5[f] — dropped channels to drop ports ..................... ..6l
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`M. Claim 16 »~ Grounds 1 and 2 .............................................................. ..6l
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`(i)
`
`(ii)
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`Element l6[c] — Add ports for added channels....................... ..62
`
`Element l6[e] «~ Addition of channels from add ports ............ ..63
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`N. Claim 17 ............................................................................................ ..63
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`(i)
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`(ii)
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`Element l7[a] — Separating signal into channels .................... ..64
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`Element l7[b] — Imaging channels ......................................... ..64
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`(iii) Element l7[c] ~» Dynamic & continuous 2—axis control ......... ..64
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`Claim l8 ............................................................................................ ..66
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`Claim 19 ............................................................................................ ..66
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`0
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`P.
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`Q. Claim 20 ............................................................................................ ..67
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`R
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`S.
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`Claim 21 ............................................................................................ ..68
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`Claim 22 ............................................................................................ ..68
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`VIII. CONCLUSION........................................................................................... ..69
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`Exhibit 1028, Page 3
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`rA.<~av<7..<xvV».-..-.v.'\r.-_-.-.-:=-.9;r:>‘v"1<,"A\\i\i‘::-‘pi-k1~A‘:Eh7.::::;;:1r,<v<g<)g
`
`
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`
`
`I, Sheldon McLaughlin, declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`
`1.
`
`I have been asked by JDS Uniphase Corporation (“JDSU”) to opine
`
`on certain matters regarding US. Patent No. RE42,368, hereinafter referred to
`
`as the’368 patent. Specifically, this declaration addresses the obviousness of the
`
`’368 patent in light of prior art.
`
`A.
`
`Education and other background information
`
`2.
`
`I hold the positon of Senior Principal Optical Development Engineer
`
`in the Exploratory Research Group at JDS Uniphase. I received my B.Sc.
`
`degree in Engineering Physics from Queen’s University in Kingston, Ontario in
`
`1996, my M.A.Sc. degree in Engineering Science from Simon Fraser
`
`University in Burnaby, BC in 1999, and my Postgraduate Certificate in Optical
`
`Sciences from the University of Arizona in Tucson, Arizona in 2010.
`
`I began
`
`my career in optical communications in 1990 as a student at Bell—Northern
`
`Research in Ottawa, Ontario. I joined JDS Uniphase in Ottawa in 1999. From
`
`1999 to 2002, I Worked on optical design and product development of fiber
`
`optic components including an interleaver, a tunable dispersion compensator,
`
`and an integrated planar lightwave circuit of a reconfigurable optical add—drop
`
`multiplexers. From 2002 to the present, I have been primarily responsible for
`
`optical design and development of wavelength selective switches at JDS
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`Exhibit 1028, Page 4
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`i3 i
`
`t
`
`Uniphase.
`
`I designed the optics for the industry’s first commercially available
`
`MEMS WSS, JDSU’s “MWS50”, and I have taken a lead role in the optical
`
`design and development of each successive generation of JDSU’s WSS
`
`products since then.
`
`I hold 8 US patents relating to fiber optic devices, and I
`
`have authored or co~authored approximately 12 journal or conference papers,
`
`including 2 invited papers on WSS technology. From 2009 to 2011 I served on
`
`the technical program subcommittee for the OFC—NFOEC conference.
`
`B. Materials Considered
`
`3. The analysis that I provide in this Declaration is based on my
`
`education and experience in the field of photonics, as well as the documents I
`
`have considered, including Ex. 1001 (US. Patent No. RE42,368, herein “the
`
`‘368 Patent”), which states on its face that it issued from an application filed on
`
`Mar. 19, 2001.
`
`4. Furthermore, I have reviewed the relevant portions of various relevant
`
`publications, some of which represent that state of the art at the time of the
`
`alleged invention of the ‘368 Patent, to which this Declaration relates. These
`
`publications include those listed below:
`
`Exhibit 1001 :U.S. Reissued Patent No. RE42,3 68 to Chen
`
`et al. (“‘368 Patent”)
`
`Exhibit 1003: US. Patent No. 6,498,872 to Bouevitch
`
`et al. (“Bouevitch”)
`
`Exhibit 1028, Page 5
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`

`
`Exhibit 1004: U.S. Patent No. 6,625,340 to Sparks et al. (“Sparks Patent,”
`or “Sparks”)
`
`Exhibit 1005; Excerpts from Born et 3.1., PRINCIPLES or OPTICS, (6“‘
`Ed., Perganimon Press 1984)
`
`Exhibit 1006: U.S. Patent No. 6,798,992 to Bishop et al. (“Bishop”)
`
`Exhibit 1007: U.S. Patent No. 6,507,421 to Bishop et al. (“Bishop ‘421”)
`
`Exhibit 1009: US. Patent No. 6,253,001 to Hoen (“Hoen”)
`
`Exhibit 1010: U.S. Patent No. 5,661,591 to Lin at al. (“Lin”)
`
`Exhibit 1011: Doerr et al., An Automatic 40~WaVe1ength Channelized
`Equalizer, IEEE Photonics Technology Letters, Vol., 12, No. 9,
`(Sept. 2000)
`
`Exhibit 1015: Ford et al., Wavelength Add—««Dr0p Switching Using Tilting
`Micromirrors, Journal of Lightwave Technology, Vol. 17, No. 5 (May
`1999) (“Ford”)
`
`Exhibit 1016: U.S. Patent No. 6,069,719 to Mizrahi (“Mizrahi”)
`
`Exhibit 1017: U.S. Patent No. 6,204,946 to Aksyuk et al. (“Alisyuk”)
`
`Exhibit 1018: U.S. Patent Application Publication No. US
`2002/0105692 to Lauder et al. (“Lauder”)
`
`Exhibit 1020: Andrew S. Dewa, and John W. Orcutt, Development of
`a silicon 2—axis micro-mirror for optical cross-connect,
`Technical Digest of the Solid State Sensor and Actuator
`Workshop, Hilton Head Island, SC, June 4~8, 2000) at pp. 93-
`96 (“Dewa”)
`
`Exhibit 1021: US. Patent No. 6,011,884 to Dueck et al. (“Dueck”)
`
`Exhibit 1022: U.S. Patent No. 6,243,507 to Goldstein et al. (“Goldstein
`
`Exhibit 1028, Page 6
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`

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`‘507”)
`
`Exhibit 1023: U.S. Patent No. 6,567,574 to Ma, et al. (“Ma”)
`
`Exhibit 1026: U.S. Patent No. 5,875,272 to Kewitsch et al. (“Kewitsch”)
`
`Exhibit 1027: U.S. Patent No. 6,285,500 to Ranalli at al.
`
`(“Ranalli”)
`
`Exhibit 1029: Declaration of Dan Marom as filed in Inner Partes Review
`No. 2014~01 166 (“Marom Declaration”)
`
`Exhibit 1031: U.S. Patent No. 5,414,540 to Patel et al. (“Patel”)
`
`Exhibit 1032: Borella, et al., Optical Components for WDM
`Lighrwave Networks, Proceedings of the IEEE, Vol. 85,
`N0. 8, August 1997 (“Borella”)
`
`Exhibit 1033: U.S. Pater1tNo. 6,928,244 to Goldstein et al.
`
`(“Goldstein ‘244”)
`
`Exhibit 1035: C. Randy Giles and Magaly Specter, The Wavelength
`Add/Drop fl/[ultiplexerfor Lighrwave Communication Networks,
`Bell Labs Technical Journal, (Jan.—Mar. 1999) (“Giles and
`Spector”)
`
`Exhibit 1036: U.S. Patent No. 5,872,880 to Maynard (“Maynard”)
`
`
`
`5.
`
`I make special note of the Marorn Declaration (Ex. 1029). This
`
`declaration was submitted and published in connection with Inter Partes Review
`
`No. 2014-01166. Inter Partes Review No. 2014-01166 also addresses the same
`
`patent, RE42,368, at issue in the present Petition for inter partes review. I have
`
`read the Marorn Declaration and it informs my present declaration. For example,
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`Exhibit 1028, Page 7
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`

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`substantial portions of the Marom Declaration are repeated herein without
`
`particular attribution,
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`including, but not limited to,
`
`those portions herein that
`
`discuss the state of the art at the earliest priority filing of the ‘368 Patent and those
`
`portions that discuss Bouevitch, Bishop, Hoen, Dueck, and Lin.
`
`II.
`
`LEGAL PRINCIPLES USED IN THE ANALYSIS
`
`6.
`
`I am not a patent attorney, nor have I independently researched the law
`
`on patent validity. Attorneys for the Petitioner have explained certain legal
`
`principles to 1ne that I have relied upon in forming my opinions set forth in this
`
`report.
`
`A.
`
`Person Having Ordinary Skill in the Art
`
`7.
`
`I understand that my assessment of claims of the ‘368 Patent must be
`
`undertaken from the perspective of what would have been known or understood by
`
`a person having ordinary skill in the art reading the ‘368 Patent on its relevant
`
`filing date. I will refer to such a person as a "PHOSITA."
`
`8. For the relevant priority date for the ‘368 Patent, I have used in my
`
`declaration the earliest application date on the face of the patent: Mar. 19, 2001.
`
`However, I have not yet analyzed whether the ‘3 68 Patent is entitled to that date for
`
`its priority.
`
`9. Counsel has advised me that to determine the appropriate level of one of
`
`ordinary skill in the art, the following four factors may be considered: (a) the types
`
`Exhibit 1028, Page 8
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`

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`3i.
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`5l
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`of problems encountered by those working in the field and prior art solutions
`
`thereto; (b) the sophistication of the technology in question, and the rapidity with
`
`which innovations occur in the field; (c) the educational level of active workers in
`
`the field; and (d) the educational level of the inventor.
`
`10. With a career in optical communications of approximately 25 years, I
`
`am well acquainted with the level of ordinary skill required to implement the
`
`subject matter of the ‘368 Patent. 1 have direct experience with and am capable of
`
`rendering an informed opinion on what the level of ordinary skill in the art was for
`
`the relevant field as of March 2001.
`
`11. The relevant technology field for the ‘368 Patent is free-space photonic
`
`switching sub~systems, a field related to free-space optics. Based on this, and the
`
`four factors above,
`
`it is my opinion that the PHOSITA 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, including at least three
`
`years of additional experience designing, constructing, and/or testing optical
`
`systems.
`
`12. My analysis and opinions regarding the '368 patent have been based on
`
`the perspective of the PHOSITA as of March 2001.
`
`B.
`
`Prior Art
`
`13.
`
`I understand that the law provides categories of information that
`
`Exhibit 1028, Page 9
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`

`
`constitute prior art that may be used to anticipate or render obvious patent claims.
`
`To be prior art to a particular patent claim under the relevant law, I understand that
`
`a reference must have been made, known used, published, or patented, or be the
`
`subject of a patent application by another, before the priority date of the patent. I
`
`also understand that the PHOSITA is presumed to have knowledge of the relevant
`
`prior art.
`
`C.
`
`Identification of Combinations of Prior Art
`
`14.
`
`I understand that the Petitioner is requesting inrerpartes review of
`
`claims 1-6, 9~13, and 15-22 of the 368 patent under the grounds set forth in Table
`
`1 below. I will sometimes refer to these combinations as Ground Nos. 1, 2, 3 or 4
`
`in the remainder of my declaration below.
`
`
`Bouevitch iniviewiot
`I
`
`I
`
`Table 1
`
`
`
`Obviousiiunider
`
`l03i(a)
`
`
`
`
`
`1-6, 9-13,
`
`and 15—22
`
`l—6, 9-13,
`
`
`Obvious under § 103 (a) by Bouevitch in View of
` Sparks further in view of Lin.
`
`and 15-22
`
`i2
`
`Obvious under § l03(a) by Bouevitch in View of Sparks
`
`Obvious under § 103 (a) by Bouevitch in view of
`
`Exhibit 1028, Page 10
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`
`
`in further view of Dueck.
`
` Sparks and Lin in further View of Dueck.
`
`

`
`
`
`D.
`
`Broadest Reasonable Interpretations
`
`15.
`
`I understand that, in inter partes review proceedings, the claim terms
`
`are to be given their broadest reasonable interpretation (BRI) in light of the
`
`specification. See 37 C.F.R. § 42.l0O(b). In performing my analysis and rendering
`
`my opinions, I have interpreted any claim terms, for which the Petitioner has not
`
`proposed a BRI construction, by giving them the ordinary meaning that they would
`
`have to the PHOSITA, reading the ’368 Patent with its priority filing date (March
`
`19, 2001) in mind.
`
`16.
`
`I understand that the Petitioner has made determinations about the
`
`broadest reasonable interpretations of several of the claim terms in the ‘368 Patent.
`
`1 have identified these BRIS in Table 2, below.
`
`Table 2
`
`*
`
`
`
`
`
`“able to effect changes with fine precision”
`
`“actuatable in two axes"
`
`“to change the power in the spectral channel
`that is received by a particular port”
`
`"a device for measuring power in a spectral
`channel"
`"feedback—based control assembly"
`
`_ _'
`
`--7:-I ii{,:"'§.-“".,"_._3'i—Term‘i.—
`
`“continuously controllable”
`(claims 1, 15, 16)
`
`[Controllable] “in two
`dimensions” (claims
`1, 15, 16)
`
`“to control the power of the
`spectral channel reflected to
`said selected port” (claims 1,
`15,16)
`“spectral monitor" (claim 3)
`
`“servo—control assembly”
`
`(claims 3, 4)
`
`Exhibit 1028, Page 11
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`
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`"a device that directs a beam of light to a spot"
`
`"able to effect changes with fine precision durin
`operation"
`
`“bean1—-focuser" (claim 11)
`
`“controlling dynamically and
`continuously” (claim 17)
`
`“in two dimensions” (claim
`17)
`
`“so as to combine selected
`
`ones of said spectral channels
`into an output multi-
`wavelength optical signal”
`(claim 17)
`
`
` “route different spectral channels to a common
`
`“in two axes"
`
`path”
`
`“control the power of the
`spectral channels combined
`into said output multi-
`wavelength optical signal”
`(claim 17)
`
`channels of a set of spectral channels that are, at
`some point, routed along the same pat ”
`
` “to change the power of one or more spectral
`
`17. My analysis in this declaration assumes that the terms in Table 2, above,
`
`are defined using the associated BRIS. From my reading of the ‘368 Patent, I
`
`believe that these BRls are consistent with how one of skill in the art at the time
`
`the ‘368 Patent was filed would interpret the claim terms.
`
`III. THE ‘368 PATENT
`
`18. As indicated on its face, the ‘368 Patent reissued from U.S. reissue
`
`patent application No. 12/816,084 on June 15, 2010 as a reissue of U.S. patent No.
`
`6,879,750. The ‘368 Patent claims priority to U.S. provisional application No.
`
`60/277,217, filed on March 19, 2001. The ‘368 Patent reissued on May 17, 2011.
`
`Exhibit 1028, Page 12
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`

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`19. As its title indicates, the '368 patent relates to reconfigurable optical
`
`add—drop multiplexers (ROADMS). (Id, Title (“RECONFIGURABLE OPTICAL
`
`ADD—DROP MULTIPLEXERS WITH SERVO CONTROL AND DYNAMIC
`
`SPECTRAL POWER MANAGEMENT CAPABILITIES”).) More specifically,
`
`the ‘368 Patent describes "a wavelength-separating routing (WSR) apparatus and
`
`method" (Id. at Abstract) which separates a rnulti-wavelength optical signal into
`
`separate channels and directs selected channels into selected output ports.
`
`IV.
`
`STATE OF THE ART OF THE RELEVANT TECHNOLOGY AT
`THE TIME OF THE ALLEGED INVENTION
`
`A.
`
`Reconfigurable Optical Add-Drop Multiplexers
`
`20. Early optical wavelength-division multiplexed (VVDM) networks had
`
`fixed wavelength channel optical add drop multiplexers (OADMS), in order for
`
`information to be accessible at the network node. A basic OADM sub-system has
`
`four fiber ports, with one ‘input’ fiber port for receiving a WDM signal, a ‘drop’
`
`fiber port where the WDM channel that is configured to be dropped will emerge,
`
`an ‘add’ fiber port where the replacement WDM channel will be introduced, and
`
`an ‘output’
`
`fiber port for the complete WDM signal (including the replaced
`
`channel) which will lead back to the optical network for transmission to the next
`
`node. For example, a WDM add/drop multiplexer from before the filing date of the
`
`‘368 Patent is shown symbolically below:
`
`Exhibit 1028, Page 13
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`

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`
`
`(a) Channel connections from input ports (ln[1]
`and Add[3]) to output ports (Out[2] and Drop[4])
`
`(Giles and Specter, Ex. 1035), C. Randy Giles and Magaly Specter, The
`
`Wavelength Add/Drop Multiplexer for Lightvvave Communication Networks, Bell
`
`Labs Technical Journal,
`
`(Jan.—Mar. 1999) at 210). OADMS were sometimes
`
`implemented by using fixed filters to extract a single wavelength channel.
`
`21. For greater flexibility in optical network operation, a reconfigurable
`
`OADM (a ROADM) was useful
`
`to enable network traffic to grow without
`
`requiring manual hardware changes. Different implementations of ROADMS were
`
`known at the filing date for the ‘3 68 Patent. (See, e. g., Ex. 1017, U.S. Patent No.
`
`6,204,946 to Aksyuk et al.
`
`(“Aksyuk”)
`
`(1997)
`
`(entitled “Reconfigurable
`
`wavelength division multiplex add/drop device using micromirrors”); Ex. 1033,
`
`U.S. Patent No. 6,928,244 to Goldstein et al. (2000) (“Goldstein ‘244”) (entitled
`
`“System and method of wavelength add/drop multiplexing having client
`
`configurability”); Ex. 1003, Bouevitch at Abstract (disclosing “a configurable
`
`optical add/drop multiplexer (COADM)”); Ex. 1018, U.S. Patent Application
`
`Exhibit 1028, Page 14
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`

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`
`
`
`
`Publication No. US 2002/0105692 to Lauder et al., p. 4, Fig. 11.)
`
`B. Wavelength Selective Switches
`
`22. One implementation of ROADMS uses wavelength~selective switches
`
`(WSS). WSS is the established category name today for switches that operate on
`
`a multi—wavelength optical signal but whose switching function can be tailored
`
`per wavelength channel. Circa year 2000 there were a few other names for
`
`devices that performed such switching functions such as Wavelength~Routing
`
`Switch (or WRS; see Ex. 1032, Borella, et al., Optical Components for WDM
`
`Lightwave Networks, Proceedings of the IEEE, Vol. 85, NO. 8, August 1997 at
`
`pp.l292), and Wavelength—Selective Router (or WSR; see Ex. 1026, U.S. Patent
`
`No. 5,875,272 to Kewitsch et al. at Abstract, 4:15-25). Such conventions as
`
`WSR and WRS are now referred to as WSS without loss of generality. WSS can
`
`be constructed using various methods and technologies, but in the matter of the
`
`‘368 Patent, the WSS is implemented in free-space (as opposed to light guided
`
`implementations), using the light radiating out of the transmission optical fiber
`
`at the switch input port, and spatially separating this WDM light beam into
`
`individual beams using a dispersive optics arrangement (similar to an optical
`
`spectrometer). In this arrangement, each beam corresponds to an individual
`
`channel distinguished by its unique center wavelength. Each input channel/beam
`
`is then individually routed by a bearn~steering system and then propagates
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`Exhibit 1028, Page 15
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`

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`through the same dispersive optics arrangement, in reverse, to a chosen output
`
`port of the WSS, Where all the wavelength channels routed to the port are
`
`coupled back to the output optical fiber associated with that port.
`
`23. The WSS can serve as the basis for a ROADM. For example,
`
`consider a simple WSS with two optical fibers. The ROADM ‘input’ fiber port
`
`WDM signal is introduced to the first WSS optical fiber. Let all the WSS beam
`
`steering elements, except one (or more), tilt the WDM channel beams back
`
`towards the first WSS optical fiber, and the one (or more) beam steering
`
`element(s) tilts the WDM channel(s) to the second WSS optical fiber. The first
`
`set of WDM channels exiting the first WSS optical fiber is then attached to the
`
`ROADM ‘output’ fiber port. The one (or more) WDM channel(s) that was tilted
`
`to the second WSS optical fiber is attached to the ROADM ‘drop’ fiber port. A
`
`replacement WDM signal introduced at the ROADM ‘add’ fiber port is then
`
`attached to the second WSS optical
`
`fiber and is guided by the WSS
`
`configuration (via the one or more beam steering element) to the first WSS
`
`optical fiber, Where it will emerge on the ROADM ‘output’ fiber port. In this
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`implementation the two WSS optical fibers carry optical signals bi—directionally
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`to/from the WSS (serving as input/output), to be separated outside of the WSS
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`with an optical circulator for each optical fiber. At ROADM nodes the same
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`WDM channels are often added and dropped at the same time - that is, the added
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`Exhibit 1028, Page 16
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`

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`x3§3313E
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`and the dropped channels use the same wavelength, but they contain different
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`information. The dropped channel
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`information is destined for users at
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`the
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`network node, and the same or others users at the network node upload new
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`information to the network onto the added channel.
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`24.
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`it is advantageous to have the add channel information use the same
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`wavelength as the drop channel (though it is not necessary) for two main
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`reasons: it is known that the dropped wavelength slot is available to accept new
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`information, so no network routing path calculation is invoked and no blocking
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`or contention can occur, and the WSS configuration is already configured by the
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`beam steering element to route the ‘add’ wavelength channel to the ‘output’
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`port, in the implementation described above.
`
`25. These routing techniques were known prior to the ‘368 priority date.
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`(Bouevitch, Ex. l003 at 5:15-38; Mizrahi, Ex. l0l6 at l:55-2:45; Aksyu-k, EX.
`
`l0l7 at 1:56-67.)
`
`26.
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`In addition to routing channels, ROADMS may also be used to
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`control the power of the individual channels at the output fiber port. Power control
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`is used to reduce the power imbalance between wavelength channels, often
`
`originating from uneven gain in optical amplifiers. Devices performing such
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`dynamic spectral power control were known before the ‘368 Patent (EX. 1015, Ford
`
`et al., Wavelength Add—Dr0p Switching Using Tilting Micromirrors, Journal of
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`Exhibit 1028, Page 17
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`

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`Lightwave Technology, Vol. 17, No. 5 (May 1999) at p. 905). Power control can
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`be incorporated in the ROADM function by utilizing WSS that can control not only
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`the switching state but also the level of power attenuation to the switched port. In
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`MEMS-based WSS this switching is typically done by steering individual beams
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`slightly away from the output port such that the misalignment reduces the amount
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`of the channel’s power that enters the port. This power control technique using
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`WSSS in ROADMS was known prior to the ‘368 priority date. (See .2.g. , Sparks,
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`Ex. 1004 at 4:48~65.) ROADMS use wavelength selective routers (WSRS) to
`
`perform switching (See, e. g., Kewitsch, EX.1026 at 10:64-11:29.) WSRS are also
`
`referred to as wavelength selective switches (WSSS). (See, e.g., Ranalli, EX. 1027,
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`U.S. Patent No. 6,285,500 to Ranalli at al. (“Ranalli”) at Fig. 1.) As of the ‘368
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`priority date, WSRS/WSSS were known. (See, e.g., Kewitsch, EX. 1026 at Abstract,
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`4:15-25; Ranalli, Ex. 1027 at Fig. 1; Ex. 1032 at 1292.)
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`C. Microelectromechanical Systems
`
`27. The embodiment of WSSs relevant to this petition steers light beams
`
`using small tilting mirrors, the tilt of the mirrors actuated by EVIEMS, which
`
`stand for Micro ElectroMechanical Systems. WSSS can tilt
`
`the individual
`
`mirrors using several different operating methods,
`
`including analog Voltage
`
`control. (See, e.g., EX. 1010, U.S. Patent No. 5,661,591 to Lin at al. (“Lin”) at
`
`Fig. 3B, 2:3—9.) MEMS is a broad area of technology and can have many
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`Exhibit 1028, Page 18
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`

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`li5i
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`operating modes. Voltage controlled mirror actuation by electrostatic forces are
`
`the easiest to design and realize; there are also magnetic, thermal, and piezo
`
`methods as well. Electrostatic MEMS can be operated using analog voltage for
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`continuous control, binary voltage for two—state control, and there is also a
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`variant using rapid switching of a binary voltage to mimic analog voltage since
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`the mirror is a slowly moving device and acts as a low pass filter (a technique
`
`called pulse width modulation).
`
`28.
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`Prior—art l\/[EMS mirrors could be tilted in one or two axes. (Sparks,
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`EX. 1004 at 4:18-26 and 42-47; US. Patent No. 6,567,574 to Ma, et al. (“Ma”), EX.
`
`1023 at Fig. 5; Andrew S. Dewa, and John W. Orcutt, Development ofa silicon 2-
`
`axis micro-mirrorfor optical cr0ss- connect, Technical Digest of the Solid State
`
`Sensor and Actuator Workshop, Hilton Head Island, SC (June 48, 2000) (“Dewa”)
`
`Ex. 1020 at p. 93.) Such 2—axis actuating mirrors were known for many years prior
`
`to the filing of the ‘368 Patent. For example, U.S. Patent No. 5,872,880 to Maynard
`
`(“Maynard”) Ex. 1036, filed on August 12, 1996, is entitled a “Hybrid—optical
`
`mu1ti—axis beam steering apparatus” and notes that “An aspect of the invention
`
`provides a micromachined mirror which is capable of steering a beam of light with
`
`multiple degrees of freedom.” (Id. 3 :9—l 1 .) Maynard also notes that “the
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`micromirror is precisely steered by the application of a controlled electrostatic
`
`effect, in either a current or a voltage mode.” (Id. 3:15-18.)
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`Exhibit 1028, Page 19
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`

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`V. MOTIVATION TO COMBINE
`
`29.
`
`I am informed that in order to properly combine the Bouevitch,
`
`Sparks and other references for purposes of obviousness, it is important to provide
`
`an explanation as to why the PHOSITA would have been motivated to combine
`
`those references. It would have been obvious to PHOSITA to combine the
`
`disclosures of Bouevitch and Sparks, and other references, as explained in more
`
`detail below. In particular, it would have been obvious to replace the (arguably) 1-
`
`axis actuating mirrors in the Bouevitch optical switch with the 2—axis actuating
`
`mirrors disclosed in Sparks, especially since Bouevitch notes that the l—aXis
`
`orientation can be in an arbitrary orientation with respect to dispersion axis, i.e.
`
`either horizontal or vertical (Ex. 1003 at 15 230534). Moreover, it would have been
`
`obvious to the PHOSITA to implement the power control function, disclosed in
`
`Sparks, in the ROADM of Bouevitch, at least because of the advantages provided
`
`by such power control in minimizing signal noise in multiplexed optical signals as
`
`disclosed by Sparks. (Sparks, EX. 1004 at 1:11-25.) These and other reasons are
`
`further discussed below. As I discuss later in this declaration, it would also have
`
`been obvious to combine the Lin and Dueck references with Bouevitch and/or
`
`Sparks.
`
`A. Motivation to Combine Bouevitch and Sparks and
`Further References
`
`30. First, the PHOSITA would know that techniques used in one reference
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`Exhibit 1028, Page 20
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`
`
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`ll
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`5 55555
`
`would be directly applicable to the other. For example, both Bouevitch and Sparks
`
`are directed to similar devices, specifically optical signal switches for use in
`
`telecommunications systems (Bouevitch, Ex. 1003 at 1:10—15 and 31-34; Sparks,
`
`Ex. 1004 at 423-14, 33-38, and 59-60). It is noted that Lin and Dueck are similarly
`
`directed to optical signal switches (Lin, Ex. 1010 at Title; Dueck, Ex. 1021 at 3:3-
`
`5). Knowing that the references were directed to similar components, fields, and
`
`uses, the PHOSITA would have understood that the teachings of any one reference
`
`would be readily applicable to the others.
`
`31.
`
`Second, the PHOSITA would further know that the 2-axis actuating
`
`mirrors of Sparks could be substituted for the 1-axis actuating mirrors in
`
`Bouevitch. The actuating mirrors of Sparks and Bouevitch are MEMS—based.
`
`(Bouevitch, Ex. 1003 at 1425-10 and 52~65; Sparks, Ex. 1004 at 4:42-47). The
`
`PHOSITA would understand that the principles of operation of the MEMS-based
`
`actuating mirrors are essentially the same except that the mirrors of Sparks are
`
`actuatable in one more axis than those of Bouevitch. The effect of tilting a MEMS
`
`mirror in 2 axes for the steering of a light beam is entirely predictable in View of
`
`the effect of a MEMS mirror tilting in 1 axis for the steering of a light beam.
`
`Because the implementation of both l—axis and 2-axis actuating mirrors were
`
`known at the time of the ‘368 Patent, the PHOSITA would also expect that using
`
`the 2—axis MEM.S—based mirrors of Sparks for directing a beam of light in place of
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`Exhibit1028, Page 21
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`

`
`the 1—axis MEMS—based mirrors of Bouevitch would yield a predictable result of
`
`the same functionality (e.g., movement of a reflective surface in a first axis) yet
`
`with more control (eg., the reflective surface moving in a second axis in similar
`
`manner as the movement
`
`in the first axis). There are virtually no technical
`
`obstacles to the substitution of a known 2-axis articulating mirror for a known 1-
`
`axis articulating mirror and the advantages of such a substitution are easily
`
`recognizable.
`
`32.
`
`Third,
`
`it would be obvious for the PHOSITA to try Sparks’ 2-axis
`
`actuating mirrors in Bouevitch because 2—axis actuating mirrors were among a
`
`small number of well—known and predictable solutions for beam—deflecting, and the
`
`PHOSITA would have expected to have success building devices using either type
`
`of mirror. 1-axis and 2—axis actuating mirrors were recognized in the prior art as
`
`interchangeable options, the selection of which merely depended on the preference
`
`of the engineer. (See Bishop ‘42l, EX. 1007 at 4:17-19 (claiming in the alternative
`
`a cross connect with "an array of tiltable mirrors comprising a plurality of mirrors,
`
`each mirror being tiltable about at least one tilting axis"); emphasis added.)
`
`Because Bouevitch already disclosed the use of l—axis MEMS-based mirrors, the
`
`PHOSITA would have a high expectation of success in trying Sparks’ 2—axis
`
`MEMS—based mirrors for any beam reflecting application in Bouevitch, including
`
`switching and power control.
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`Exhibit 1028, Page 22
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`