`571-272-7822
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`
`Paper 51
`Entered: September 29, 2016
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`LUMENTUM HOLDINGS, INC., LUMENTUM, INC.,
`LUMENTUM OPERATIONS, LLC, CORIANT OPERATIONS, INC.,
`CORIANT (USA) INC., CIENA CORPORATION, CISCO SYSTEMS,
`INC., and FUJITSU NETWORK COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-007311
`Patent RE42,368
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`1 IPR2015-01969 was joined with IPR2015-00731 on March 10, 2016, by
`Order in IPR2015-01969, Paper 11 (IPR2015-00731, Paper 42).
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`IPR2015-00731
`Patent RE42,368
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`
`INTRODUCTION
`I.
`Petitioner, Lumentum Holdings, Inc., Lumentum Inc., Lumentum
`Operations, LLC, Coriant Operations, Inc., Coriant (USA) Inc., Ciena
`Corporation, Cisco Systems, Inc., and Fujitsu Network Communications,
`Inc., filed petitions requesting an inter partes review of claims 1–6, 9–13,
`and 15–22 of U.S. Patent No. RE42,368 (“the ’368 patent”). Paper 1
`(“Petition” or “Pet.”); see also IPR2015-01969, Paper 6.
`Claims 1–6, 9–13, and 15–22 of the ’368 patent were previously held
`to be unpatentable in Cisco Systems, Inc., Ciena Corporation, Coriant
`Operations, Inc., Coriant (USA) Inc., and Fujitsu Network Communications,
`Inc., v. Capella Photonics, Inc., IPR2014-01166, (PTAB Jan. 28, 2016)
`(Paper 44) (the ’1166 case). Claims 1–6, 9–12, and 15–22 of the ’368 patent
`also were previously held to be unpatentable in Fujitsu Network
`Communications, Inc., Coriant Operations, Inc., Coriant (USA) Inc., and
`Ciena Corporation v. Capella Photonics, Inc., IPR2015-00726, (PTAB
`Sep. 28, 2016) (Paper 38) (the ’726 case). The grounds of unpatentability
`asserted by Petitioner in this case rely on combinations of prior art,
`evidence, and arguments not asserted in either the ’1166 case or the ’726
`case. Likewise, Patent Owner, Capella Photonics, Inc., advances arguments
`and evidence in response in this case that were not asserted by Patent Owner
`in either the ’1166 case or the ’726 case.
`Based on the information provided in the Petition, and in
`consideration of the Preliminary Response (Paper 7) of Patent Owner, we
`instituted a trial pursuant to 35 U.S.C. § 314(a) of: (1) claims 1–6, 9–11, 13,
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`and 15–22 as obvious over Bouevitch,2 Sparks3, and Lin4 under 35 U.S.C. §
`103(a); and, (2) claim 12 as obvious over Bouevitch, Sparks, Lin, and
`Dueck5 under 35 U.S.C. § 103(a). Paper 8 (“Institution Decision”); see also
`IPR2015-01969, Paper 11.
`After institution of trial, Patent Owner filed a Response (Paper 17,
`“Response” or “PO Resp.”) and Petitioner filed a Reply (Paper 37, “Pet.
`Reply”). The Petition is supported by the Declaration of Sheldon
`McLaughlin (Ex. 1028). The Response is supported by the Declaration of
`Dr. Alexander V. Sergienko (Ex. 2022).
`A transcript of the Oral Hearing conducted on May 24, 2016, is
`entered as Paper 50 (“Tr.”).
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons that follow, Petitioner has shown by
`a preponderance of the evidence that claims 1–6, 9–13, and 15–22 of the
`’368 patent are unpatentable.
`BACKGROUND
`II.
`The ’368 patent (Ex. 1001)
`A.
`The ’368 patent, titled “Reconfigurable Optical Add-Drop
`Multiplexers with Servo Control and Dynamic Spectral Power Management
`Capabilities,” reissued May 17, 2011, from U.S. Patent No. 6,879,750
`
`
`2 U.S. Patent No. 6,498,872 B2, issued December 24, 2002 (Ex. 1003,
`“Bouevitch”)
`3 U.S. Patent No. 6,625,340 B1, issued September 23, 2003 (Ex. 1004,
`“Sparks”).
`4 U.S. Patent No. 5,661,591, issued August 26, 1997 (Ex. 1010, “Lin”)
`5 U.S. Patent No. 6,011,884, issued January 4, 2000 (Ex. 1021, “Dueck”)
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`(“the ’750 patent”). Ex. 1001. The ’750 patent issued April 12, 2005, from
`application number 10/745,364, filed December 22, 2003.
`According to the ’368 patent, “fiber-optic communications networks
`commonly employ wavelength division multiplexing (WDM), for it allows
`multiple information (or data) channels to be simultaneously transmitted on
`a single optical fiber by using different wavelengths and thereby
`significantly enhances the information bandwidth of the fiber.” Id. at 1:37–
`42. An optical add-drop multiplexer (OADM) is used both to remove
`wavelengths selectively from a multiplicity of wavelengths on an optical
`fiber (taking away one or more data channels from the traffic stream on the
`fiber), and to add wavelengths back onto the fiber (inserting new data
`channels in the same stream of traffic). Id. at 1:45–51.
`The ’368 patent describes a “wavelength-separating-routing (WSR)
`apparatus that uses a diffraction grating to separate a multi-wavelength
`optical signal by wavelength into multiple spectral channels, which are then
`focused onto an array of corresponding channel micromirrors.” Id. at
`Abstract. “The channel micromirrors are individually controllable and
`continuously pivotable to reflect the spectral channels into selected output
`ports.” Id. According to Petitioner, the small, tilting mirrors are sometimes
`called Micro ElectroMechanical Systems or “MEMS.” Pet. 8.
`The WSR described in the ’368 patent may be used to construct
`dynamically reconfigurable OADMs for WDM optical networking
`applications. Ex. 1001, Abstract.
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`Figure 1A of the ’368 patent is reproduced below.
`
`
`Figure 1A depicts wavelength-separating-routing (WSR) apparatus 100, in
`accordance with the ’368 patent. WSR apparatus 100 is comprised of an
`array of fiber collimators 110 (multiple input/output ports, including input
`port 110-1 and output ports 110-2 through 110-N), diffraction grating 101 (a
`wavelength separator), quarter wave plate 104, focusing lens 102 (a beam-
`focuser), and array of channel micromirrors 103. Ex. 1001, 6:57–63, 7:55–
`56.
`A multi-wavelength optical signal emerges from input port 110-1 and
`
`is separated into multiple spectral channels by diffraction grating 101, which
`are then focused by focusing lens 102 into a spatial array of distinct spectral
`spots (not shown). Id. at 6:64–7:2. Channel micromirrors 103 are
`positioned such that each channel micromirror receives one of the spectral
`channels.
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`Figure 1B of the ’368 patent is reproduced below.
`
`
`Figure 1B depicts a close-up view of the array of channel
`micromirrors 103 shown above in Figure 1A. Id. at 8:6–7. The channel
`micromirrors “are individually controllable and movable, e.g. pivotable (or
`rotatable) under analog (or continuous) control, such that, upon reflection,
`the spectral channels are directed” into selected output ports by way of
`focusing lens 102 and diffraction grating 101. Id. at 7:6–11.
`According to the ’368 patent:
`each micromirror may be pivoted about one or two axes. What 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 9:8–14.
`
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`
`Figure 3 of the ’368 patent is reproduced below.
`
`
`Similar to Figure 1A, above, Figure 3 also shows a WSR apparatus as
`described by the ’368 patent. Ex. 1001, 10:25–26. In this embodiment, two-
`dimensional array of fiber collimators 350 provides an input port and
`plurality of output ports. Id. at 10:31–32. First and second two-dimensional
`arrays of imaging lenses 360, 370 are placed in a telecentric arrangement
`between two-dimensional collimator-alignment mirror array 320 and two-
`dimensional fiber collimator array 350. Id. at 10:37–43. “The channel
`micromirrors 103 must be pivotable biaxially in this case (in order to direct
`its corresponding spectral channel to anyone of the output ports).” Id. at
`10:43–46.
`The WSR also may incorporate a servo-control assembly (together
`termed a “WSR-S apparatus”). Id. at 4:65–67. According to the
`’368 patent:
`The servo-control assembly serves to monitor the power levels
`of the spectral channels coupled into the output ports and further
`provide control of the channel micromirrors on an individual
`basis, so as to maintain a predetermined coupling efficiency of
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`each spectral channel in one of the output ports. As such, the
`servo-control assembly provides dynamic control of the coupling
`of the spectral channels into the respective output ports and
`actively manages the power levels of the spectral channels
`coupled into the output ports.
`Id. at 4:47–56.
`Figure 5 of the ’368 patent is reproduced below.
`
`
`
`
`Figure 5 depicts OADM 500 in accordance with the ’368 patent composed
`of WSR-S (or WSR) apparatus 510 and optical combiner 550. Id. at 12:40–
`44. Input port 520 transmits a multi-wavelength optical signal, which is
`separated and routed into a plurality of output ports, including pass-through
`port 530 and one or more drop ports 540-1 through 540-N. Id. at 12:44–48.
`Pass-through port 530 is optically coupled to optical combiner 550, which
`combines the pass-through spectral channels with one or more add spectral
`channels provided by one or more add ports 560-1 through 560-M. Id. at
`12:52–56. The combined optical signal is then routed into an existing port
`570, providing an output multi-wavelength optical signal. Id. at 12:56–58.
`
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`
`Illustrative Claims
`B.
`Challenged claims 1, 15, 16, and 17 of the ’368 patent are
`independent. Claims 2–6 and 9–13 ultimately depend from claim 1 and
`claims 18–22 ultimately depend from claim 17. Claims 1 and 17 of the
`’368 patent are illustrative of the claims at issue:
`1. An optical add-drop apparatus comprising
`an input port for an input multi-wavelength optical signal
`having first spectral channels;
`one or more other ports for second spectral channels; an
`output port for an output multi-wavelength optical signal;
`a wavelength-selective device for spatially separating said
`spectral channels; [and]
`a spatial array of beam-deflecting elements positioned such
`that each element receives a corresponding one of said
`spectral channels, each of said elements being individually
`and continuously controllable in two dimensions to reflect
`its corresponding spectral channel to a selected one of said
`ports and to control the power of the spectral channel
`reflected to said selected port.
`Ex. 1001, 14:6–20.
`17. A method of performing dynamic add and drop in a
`WDM optical network, comprising
`separating an input multi-wavelength optical signal into
`spectral channels;
`imaging each of said spectral channels onto a corresponding
`beam-deflecting element; and
`controlling dynamically and continuously said beam-
`deflecting elements in two dimensions so as to combine
`selected ones of said spectral channels into an output
`multi-wavelength optical signal and to control the power
`of the spectral channels combined into said output multi-
`wavelength optical signal.
`Ex. 1001, 16:3–14.
`
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`III. ANALYSIS
`Claim Construction
`A.
`The Board interprets claims using the “broadest reasonable
`construction in light of the specification of the patent in which [they]
`appear[].” 37 C.F.R. § 42.100(b). We presume a claim term carries its
`“ordinary and customary meaning,” which is “the meaning that the term
`would have to a person of ordinary skill in the art in question” at the time of
`the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). A patentee may, however, act as their own lexicographer and give a
`term a particular meaning in the Specification, but must do so with
`“reasonable clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994). Only terms which are in controversy need to
`be construed, and then only to the extent necessary to resolve the
`controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999).
`“to control”
`1.
`Independent claims 1, 15, and 16 each recite outside of the preamble:
`a spatial array of beam-deflecting elements positioned such that
`each element receives a corresponding one of said spectral
`channels, each of said elements being individually and
`continuously controllable in two dimensions to reflect its
`corresponding spectral channel to a selected one of said ports and
`to control the power of the spectral channel reflected to said
`selected port.
`Ex. 1001, 14:14– 20, 15:14–20, 15:31–37 (emphases added). Independent
`claim 17 contains a similar limitation.6 Petitioner contends that the “to
`
`
`6 Claim 17 recites: “controlling dynamically and continuously said beam-
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`control” clause “refers merely to intended use” and is limited “only to
`structure that may be capable of redirecting a spectral channel to a particular
`port.” Pet. 13. Petitioner further asserts that the “to control” clause means
`“to change the power in the spectral channel that is received by a particular
`port.” Id. Petitioner identifies no sufficient evidence in support of
`construing “to control” as meaning “to change.” Patent Owner does not
`address the meaning of the term. Although “apparatus claims cover what a
`device is, not what a device does,” the language at issue here describes the
`function that the apparatus must be capable of performing. Hewlett-Packard
`Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed.Cir.1990); see also
`K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999)
`(explaining that functional language is an additional limitation in the claim).
`In that regard, the “to control” clause is, thus, functional rather than non-
`functional. Accordingly, the claimed “spatial array of beam-deflecting
`elements” is further limited to a spatial array that satisfies the “to control”
`functional limitations. We determine no further express construction of the
`“to control” clause is necessary for purposes of this decision.
`“continuously controllable”
` 2.
`Claim 1 requires “a spatial array of beam-deflecting elements . . . each
`of said elements being individually and continuously controllable.”
`Similarly, claim 17 requires “controlling dynamically and continuously said
`beam-deflecting elements.” Petitioner asserts that “continuously
`
`
`deflecting elements in two dimensions so as to combine selected ones of said
`spectral channels into an output multi-wavelength optical signal and to
`control the power of the spectral channels combined into said output multi-
`wavelength optical signal.” Ex. 1001, 16:9–14.
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`controllable” should be construed to mean “able to effect changes with fine
`precision.” Pet. at 11. Petitioner also notes, however, that the ’368 patent
`identifies “under analog control” as an example of continuous control, and
`contends that “the example of analog control does not alone define the
`[broadest reasonable interpretation] of continuously controllable.” Id. at 12;
`see also Ex. 1028 (stating “a mirror that is disclosed to be under analog
`control would fit within the scope of "continuously controllable”).
`Petitioner identifies the following disclosures of the ’368 patent as
`supporting its proposed construction:
`The ’368 Patent explains that “[a] distinct feature of the channel
`micromirrors in the present invention, in contrast to those used
`in the prior art, is that the motion…of each channel micromirror
`is under analog control such that its pivoting angle can be
`continuously adjusted.” ([Ex. 1001], 4:7–11; emphasis added).
`Another passage in the specification states that “[w]hat is
`important is that the pivoting (or rotational) motion of each
`channel micromirror be individually controllable in an analog
`manner, whereby the pivoting angle can be continuously
`adjusted so as to enable the channel micromirror to scan a
`spectral channel across all possible output ports.” (Id., 9:9–14;
`emphasis added). Yet another passage states that “channel
`micromirrors 103 are individually controllable and movable,
`e.g., pivotable (or rotatable) under analog (or continuous)
`control.” (Id., 7:6–8).
`Pet. 12. Patent Owner disputes Petitioner’s proposed construction, but offers
`no express alternative. PO Response 46–47. We find that Petitioner:
`(1) offers no sufficient explanation for how its proposed definition accounts
`for the term “continuously” in “continuously controllable”; (2) directs us to
`no portion of the specification of the ’368 patent that uses “fine precision”;
`and (3) fails to explain what “fine precision” is intended to encompass or
`
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`exclude. See id. at 11–12. Additionally, based on all of the evidence
`presented, we are not persuaded that “continuously controllable” is limited
`to “analog control,” or that “analog control” necessarily corresponds to
`“continuous” control under all circumstances. We determine that
`“continuously controllable,” in light of the specification of the ’368 patent,
`encompasses “under analog control such that it can be continuously
`adjusted.”
`“port”
`3.
`Claim 1 requires “an input port . . . one or more other ports. . . [and]
`an output port.” Patent Owner contends that in the ’368 patent “the structure
`or elements making up the ports are collimators.” PO Resp. 33. Patent
`Owner offers no definition of “port,” and does not suggest that the
`’368 patent provides an express definition of the term, but instead argues
`that a “port,” as claimed, is not a “circulator port” because the ’368 patent
`“disavows circulator-based optical systems.” Id. at 34. We disagree.
`There is no dispute that the ordinary and customary meaning of “port”
`encompasses circulator ports, and, indeed, any “point of entry or exit of
`light.” See Dr. Sergienko Deposition Transcript (Ex. 1040), 43:16–23,
`45:12–13 (“The circulator ports are ports with constraints.”). Nor does the
`’368 patent equate the term “port” to “collimator,” as both “port” and
`“collimator” appear separately in the claims of the ’368 patent. Ex. 1001,
`14:7, 14:48–51. We have considered the testimony of Dr. Sergienko as well
`(Ex. 2022 ¶¶ 168–172), and find that even if certain fiber collimators serve
`as ports in the ’368 patent, that does not redefine the term “port” to mean
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`“collimator.” See id. at ¶ 171. Thus, the primary issue is whether the ’368
`patent disavows circulator ports from the scope of the term “port.”
`Although the broad scope of a claim term may be intentionally
`disavowed, “this intention must be clear,” see Teleflex, Inc. v. Ficosa N. Am.
`Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) (“The patentee may
`demonstrate an intent to deviate from the ordinary and accustomed meaning
`of a claim term by including in the specification expressions of manifest
`exclusion or restriction, representing a clear disavowal of claim scope.”),
`and cannot draw limitations into the claim from a preferred embodiment.”
`Conoco, Inc. v. Energy & Envtl. Int’l., 460 F.3d 1349, 1357 (Fed. Cir. 2006).
`Patent Owner fails to show any expressions of manifest exclusion or
`restriction, representing a clear disavowal of claim scope with respect to the
`use of “port” in the ’368 patent. Patent Owner argues: (1) that the ’368
`patent provides a scalable system without circulator ports, that a provisional
`application to the ’368 patent “describes existing add/drop architectures that
`had a number of problems” (PO Resp. 35); (2) that U.S. Patent No.
`6,984,917 shows how experts use the term “input port” and “output port”
`because it uses elements “similar to how the ’368 patent describes fiber
`collimators serving as ports” (PO Resp. 42–43); and (3) that because the
`inventors of the ’368 patent “consistently emphasized the limitations of
`circulator-based switches and provided an alternative configuration,” a
`person of ordinary skill in the art would have understood that the inventors
`were disavowing the use of optical circulators (PO Resp. 35). See also PO
`Resp. 34–39 (citing Ex 2022 ¶ 182).
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`We do not discern any “clear disavowal of claim scope” from the
`arguments advanced by Patent Owner. Dr. Sergienko merely states that
`based on market differentiation, construing “ports” to include circulator
`ports “goes beyond the intent of the ’368 patent.” Ex. 2022, ¶ 182. Even if
`the ’368 patent were viewed as Dr. Sergienko suggests, a speculative
`purported intent of market differentiation is not disavowal. Moreover,
`Petitioner further demonstrates that a provisional application to the ’368
`patent in fact uses circulator ports as “ports.” Pet. Reply 12–13 (citing
`Ex. 1008, 3, Fig. 9). Such usage undermines Patent Owner’s disavowal
`contention. Patent Owner’s argument that the provisional application is
`“entirely consistent with the ’368 patent’s use of collimators” fails to negate
`the fact that the provisional application uses circulator ports as “ports.” See
`PO Resp. 39–42. Similarly, we find insufficient support for Patent Owner’s
`argument based on the preamble that “circulators can only be coupled to, but
`not part of, the [optical add drop] apparatus. See id. at 39. We are not
`persuaded that the preamble’s recitation of a “[a]n optical add-drop
`apparatus comprising” of claim 1 is limiting because “the body of the claim
`fully and intrinsically sets forth the complete invention, including all of its
`limitations.” See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
`1305 (Fed. Cir. 1999). Because “the preamble offers no distinct definition
`of any of the claimed invention’s limitations, but rather merely states . . . the
`purpose or intended use of the invention, . . . the preamble is of no
`significance to claim construction.” Id. (citing Rowe v. Dror, 112 F.3d 473,
`478 (Fed. Cir. 1997); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc.,
`868 F.2d 1251, 1257 (Fed. Cir. 1989); Kropa v. Robie, 187 F.2d 150, 152
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`(CCPA 1951)). We also are persuaded that Bouevitch’s “Configurable
`Optical Add/Drop Multiplexer” is recognized as an optical add-drop
`apparatus and includes circulators. See Pet. Reply 13. We have considered
`all of the arguments advanced by Patent Owner in its effort to redefine
`“port” as excluding “circulator ports” (PO Resp. 31–43), and find
`insufficient support for Patent Owner’s contention that the ’368 patent
`disavows or otherwise excludes circulator ports from the scope of the term
`“port.” We determine that “port,” in light of the specification of the ’368
`patent, encompasses “circulator port.”
`“beam focuser”
`4.
`Claim 11 requires a “beam-focuser for focusing said separated
`spectral channels onto said beam deflecting elements.” The ’368 patent
`states that “[t]he beam-focuser may be a single lens, an assembly of lenses,
`or other beam focusing means known in the art.” Ex. 1001, 4:20–22.
`Petitioner contends that “beam focuser” is “a device that directs a
`beam of light to a spot.” Pet. 16. According to Petitioner:
`The Summary of the ’368 patent states that the “beam-focuser
`focuses the spectral channels into corresponding spectral spots.”
`([Ex. 1001], 3:63-64.) The specification also explains that the
`beams of light are “focused by the focusing lens 102 into a spatial
`array of distinct spectral spots (not shown in FIG. lA) in a one-
`to-one correspondence.” (Id., 6:65-7:5.) The MEMS mirrors are
`in turn “positioned in accordance with the spatial array formed
`by the spectral spots, such that each channel micromirror
`receives one of the spectral channels.” (Id.)
`Id. Patent Owner does not dispute expressly Petitioner’s proposed
`construction, and provides no alternative construction of “beam focuser.”
`Consistent with Petitioner’s proposed construction, Dr. Sergienko testified
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`that “focusing means bringing of the energy in the original image limited to
`the focal spot.” Ex. 1040, 245:17–19. We agree that, based on the
`specification of the ’368 patent, “beam focuser” means “a device that directs
`a beam of light to a spot.”
`“dynamically”
`5.
`Claim 17 recites “[a] method of performing dynamic add and drop in
`a WDM optical network, comprising: . . . controlling dynamically and
`continuously said beam-deflecting elements in two dimensions.” Ex. 1001,
`16:3–10. Petitioner contends that “‘dynamically’ imports an aspect of
`control during operation,” and equates the term to “able to effect changes . . .
`during operation.” Pet. 17. It is unclear how Petitioner equates
`“dynamically” to “during operation” and no supporting citation is provided.
`The ’368 patent uses “dynamic” and “dynamically” throughout the
`specification, stating, for example, that “[t]he power levels of the spectral
`channels in the output ports may be dynamically managed according to
`demand.” Ex. 1001, 11:30–32. We determine from the specification that
`the ’368 patent uses “dynamically” in contrast to “static,” in accordance with
`its ordinary and customary meaning.
`6.
`Additional Claim Terms
`Petitioner addresses several additional claim terms, including “in two
`dimensions,” “spectral monitor,” and “servo-control assembly.” Pet. 12–16.
`For purposes of this decision, no express construction of any additional
`claim terms is necessary.
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`References Asserted as Prior Art
`B.
`Petitioner relies on Bouevitch, Sparks, Lin, and Dueck with respect to
`its assertion that the challenged claims would have been obvious.
`Bouevitch
`1.
`Bouevitch describes an optical device for rerouting and modifying an
`optical signal, including modifying means such as a MEMS array and a
`liquid crystal array which function as an attenuator when the device operates
`as a dynamic gain equalizer (DGE), and as a switching array when the
`device operates as a configurable optical add/drop multiplexer (COADM).
`Ex. 1003, Abstract. According to Petitioner, the COADM described in
`Bouevitch “uses MEMS mirrors with 1 axis of rotation.” Pet. 20. Petitioner
`also contends that the Bouevitch COADM controls the power of its output
`channels by tilting beam-deflecting mirrors at varying angles. Id. at 19.
`Sparks
`2.
`Sparks describes an optical switch arranged to misalign the optical
`beam path to provide a predetermined optical output power. Ex. 1004,
`Abstract. According to Sparks, “[t]he system operates by controlling the
`movable micromirrors (16, 26), which are fabricated using MEMS
`technology and are capable of two axis movement, to carefully align the
`beams so as to ensure that the maximum possible input optical signal is
`received at the output of the switch.” Id. at 4:43–46.
`Lin
`3.
`Lin describes a “spatial light modulator… operable in the analog
`
`mode for light beam steering or scanning applications.” Ex. 1010, Abstract.
`Lin explains that the angular deflection of a mirror about the torsional axis is
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`a function of the voltage potential applied to an address electrode. Id. at
`6:29–32. Petitioner contends that Figure 3B of Lin depicts a continuous and
`linear relationship between the deflection angle of the MEMS mirrors and
`the applied voltage. Pet. 31.
`
`4.
`Dueck
`
`Dueck describes a wavelength division multiplexer that integrates an
`axial gradient refractive index element with a diffraction grating to provide
`efficient coupling from a plurality of input sources. Ex. 1021, Abstract.
`Petitioner contends that Dueck describes various diffraction gratings for use
`in WDM devices. Pet. 19.
`Asserted Obviousness Over Bouevitch, Sparks, and Lin
`C.
`Petitioner asserts that claims 1–6, 9–11, 13, and 15–22 would have
`been obvious over Bouevitch, Sparks, and Lin.7 Pet. 5.
`1.
`Claim 1
`Claim 1, directed to an optical add-drop apparatus, requires “an input
`port . . . one or more other ports . . . [and] an output port.” Petitioner asserts
`that Bouevitch discloses an optical add-drop apparatus, including an input
`
`
`7 Petitioner initially argues that Patent Owner admitted in a Replacement
`Reissue Application Declaration by Assignee that all elements of claim 1,
`except for two-axis mirrors, were disclosed by Bouevitch. Pet. 9–11
`(quoting Ex. 1002, 81–82). Petitioner identifies no persuasive authority for
`the proposition that such a statement should be treated as an admission in
`this proceeding. Moreover, rather than admit that all original elements of
`claim 1 are disclosed by Bouevitch, the statement makes clear that three
`additional references not relied upon by Petitioner in this proceeding were
`considered in combination with Bouevitch. As a result, we are not
`persuaded that Patent Owner has admitted all elements of claim 1, except for
`two-axis mirrors, were disclosed by Bouevitch.
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`port (labeled “IN”), one or more other ports (labeled 80b “IN ADD” and
`“OUT DROP”), and an output port (labeled “OUT EXPRESS”), as recited
`by claim 1 of the ’368 patent. Pet. 25–26 (citing Ex. 1003, Fig. 11).
`Petitioner’s contentions are supported by Sheldon McLaughlin, an employee
`of Petitioner. Ex. 1028 (Declaration of Sheldon McLaughlin) ¶¶ 2, 38–41.
`Patent Owner argues that, under its proposed claim construction of
`“port,” Bouevitch discloses at most two ports because the ’368 patent
`equates “port” to “collimator” and disavows circulator ports. PO Resp. 31–
`44. For the reasons explained above in our claim construction analysis for
`“port,” we reject Patent Owner’s claim construction for “port.”
`Accordingly, we do not agree with Patent Owner’s contention that the only
`ports disclosed by Bouevitch are collimator lenses 12a and 12b. See
`PO Resp. 44. Petitioner has shown, as discussed above and as supported by
`Mr. McLaughlin, that Bouevitch discloses the recited input, output, and one
`or more other ports, as recited by claim 1.
`Claim 1 requires “a wavelength-selective device” for spatially
`separating spectral channels. Petitioner identifies diffraction grating 20 of
`Bouevitch as corresponding to the recited “wavelength-selective device.”
`Pet. 27. Claim 1 also requires “a spatial array of beam-deflecting elements.”
`Petitioner identifies MEMS mirror array 50 of Bouevitch as corresponding
`to the recited “spatial array of beam-deflecting elements positioned such that
`each element receives a corresponding one of said spectral channels.”
`Pet. 27–28. Patent Owner does not dispute Petitioner’s contentions, with
`which we agree. Patent Owner does, however, argue that “Petitioner does
`not meet its burden of showing in the Petition how ‘deflecting’ to a
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`circulator and then ‘propagating’ to the output or the drop meets the claim
`element “reflecting” to an output port,” and that “propagating” is not
`“reflecting.” PO Resp. 44–45. Patent Owner’s argument is not persuasive
`because it is beyond the scope of the claims, which do not require reflection
`directly to an output port. To the contrary, we agree with Petitioner that
`“Fig. 1A of the ’368 patent, for example, discloses a light beam that reflects
`off micromirror 103, and then propagates back though both focusing lens
`102 and quarter-wave plate 104 before being directed to an output port.”
`Pet. Reply 14.
`For each of the beam-deflecting elements, claim 1 further requires that
`they be “individually and continuously controllable in two dimensions to
`reflect its corresponding spectral channel to a selected one of said ports and
`to control the power of the spectral channel reflected to said selected port.”
`The ’368 patent provides analog control as an example of
`“continuously controllable,” and Petitioner sho