throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 13
`Entered: October 14, 2016
`
`
`
`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 IPR2015-007391
`Patent RE42,678 E
`____________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`1 IPR2015-01971 was joined with IPR2015-00739 on March 11, 2016, by
`Order in IPR2015-01971, Paper 12 (IPR2015-00739, Paper 41).
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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 1–4, 9, 10,
`13, 17, 19–23, 27, 29, 44–46, 53, and 61–65 of U.S. Patent No. RE42,678 E
`(Ex. 1001, “the ’678 patent”). Paper 1 (“Petition” or “Pet.”); see also
`IPR2015-01971, Paper 6.
`Claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46, 53, and 61–65 of the
`’678 patent were previously held to be unpatentable in Cisco Systems, Inc.,
`Ciena Corporation, Coriant Operations, Inc., Coriant (USA) Inc., and
`Fujitsu Network Communications, Inc., v. Capella Photonics, Inc., IPR2014-
`01276, (PTAB Feb. 17, 2016) (Paper 40) (the ’1276 case). Claims 1–4, 9,
`10, 13, 17, 19–23, 27, 29, 44–46, 53, and 61–65 of the ’678 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., IPR2015-00727, (PTAB Sep. 28, 2016) (Paper 36)
`(the ’727 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 ’1276 case or the ’727 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 ’1276 case or the ’727
`case.
`
`Based on the information provided in the Petition, and in
`consideration of the Preliminary Response (Paper 6) of Patent Owner, we
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`instituted a trial pursuant to 35 U.S.C. § 314(a) of: (1) claims 1–4, 9, 10, 13,
`19–23, 27, 44–46, and 61–65 as obvious over Bouevitch,2 Sparks3, and Lin4
`under 35 U.S.C. § 103(a); and, (2) claims 17, 29, and 53 as obvious over
`Bouevitch, Sparks, Lin, and Dueck5 under 35 U.S.C. § 103(a). Paper 7
`(“Institution Decision”); see also IPR2015-01971, Paper 12.
`After institution of trial, Patent Owner filed a Response (Paper 16,
`“Response” or “PO Resp.”) and Petitioner filed a Reply (Paper 36, “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 49 (“Tr.”).
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons that follow, Petitioner has shown by
`a preponderance of the evidence that claims 1–4, 9, 10, 13, 17, 19–23, 27,
`29, 44–46, 53, and 61–65 of the ’678 patent are unpatentable.
`BACKGROUND
`II.
`The ’678 patent (Ex. 1001)
`A.
`The ’678 patent, titled “Reconfigurable Optical Add-Drop
`Multiplexers with Servo Control and Dynamic Spectral Power Management
`
`
`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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`Capabilities,” reissued September 6, 2011, from U.S. Patent No. RE 39,397
`(“the ’397 patent”). Ex. 1001. The ’397 patent reissued November 14,
`2006, from U.S. Patent No. 6,625,346 (“the ’346 patent”). Id. The ’346
`patent issued September 23, 2003, from U.S. Patent Application
`No. 09/938,426, filed August 23, 2001.
` According to the ’678 patent, “fiber-optic communications networks
`commonly employ wavelength division multiplexing (WDM), for it allows
`multiple information (or data) channels to be simultaneously transmitted on
`a single optical fiber by using different wavelengths and thereby
`significantly enhances the information–bandwidth of the fiber.” Id. at 1:37–
`42. An optical add-drop multiplexer (OADM) is used both to remove
`wavelengths selectively from a multiplicity of wavelengths on an optical
`fiber (taking away one or more data channels from the traffic stream on the
`fiber) and to add wavelengths back onto the fiber (inserting new data
`channels in the same stream of traffic). Id. at 1:45–51.
`The ’678 patent describes a “wavelength-separating-routing (WSR)
`apparatus that uses a diffraction grating to separate a multi-wavelength
`optical signal by wavelength into multiple spectral channels, which are then
`focused onto an array of corresponding channel micromirrors.” Id. at
`Abstract. “The channel micromirrors are individually controllable and
`continuously pivotable to reflect the spectral channels into selected output
`ports.” Id. According to Petitioner, the small, tilting mirrors are sometimes
`called Micro Electro Mechanical Systems or “MEMS.” Pet. 8. The WSR
`described in the ’678 patent may be used to construct dynamically
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`reconfigurable OADMs for WDM optical networking applications.
`Ex. 1001 at Abstract.
`Figure 1A of the ’678 patent is reproduced below.
`
`
`Figure 1A depicts wavelength-separating-routing (WSR) apparatus 100, in
`accordance with the ’678 patent. WSR apparatus 100 is composed of an
`array of fiber collimators 110 (multiple input/output ports, including input
`port 110-1 and output ports 110-2 through 110-N), diffraction grating 101 (a
`wavelength separator), quarter wave plate 104, focusing lens 102 (a
`beam-focuser), and array of channel micromirrors 103. Ex. 1001, 6:57–63,
`7:55–56.
`
`A multi-wavelength optical signal emerges from input port 110-1 and
`is separated into multiple spectral channels by diffraction grating 101, which
`are then focused by focusing lens 102 into a spatial array of distinct spectral
`spots (not shown). Id. at 6:64–7:2. Channel micromirrors 103 are
`positioned such that each channel micromirror receives one of the spectral
`channels. Id. at 7:2–5.
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`
`Figure 1B of the ’678 patent is reproduced below.
`
`
`Figure 1B depicts a close-up view of the array of channel micromirrors 103
`shown above in Figure 1A. Id. at 8:6–7. The channel micromirrors “are
`individually controllable and movable, e.g., pivotable (or rotatable) under
`analog (or continuous) control, such that, upon reflection, the spectral
`channels are directed” into selected output ports by way of focusing lens 102
`and diffraction grating 101. Id. at 7:6–11.
`According to the ’678 patent:
`[e]ach micromirror may be pivoted about one or two axes. What
`is important is that the pivoting (or rotational) motion of each
`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 ’678 patent is reproduced below.
`
`
`Similar to Figure 1A, above, Figure 3 also shows a WSR apparatus as
`described by the ’678 patent. Id. at 10:25–26. In this embodiment, two-
`dimensional array of fiber collimators 350 provides an input port and
`plurality of output ports. Id. at 10:31–32. First and second two-dimensional
`arrays of imaging lenses 360, 370 are placed in a telecentric arrangement
`between two-dimensional collimator-alignment mirror array 320 and two-
`dimensional fiber collimator array 350. Id. at 10:37–43. “The channel
`micromirror 103 must be pivotable biaxially in this case (in order to direct
`its corresponding spectral channel to any one of the output ports).” Id. at
`10:43–46.
`The WSR also may incorporate a servo-control assembly (together
`termed a “WSR-S apparatus”). Id. at 4:65–67. According to the ’678
`patent:
`The servo-control assembly serves to monitor the power levels
`of the spectral channels coupled into the output ports and further
`provide control of the channel micromirrors on an individual
`basis, so as to maintain a predetermined coupling efficiency of
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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 ’678 patent is reproduced below.
`
`
`
`
`Figure 5 depicts OADM 500 in accordance with the ’678 patent composed
`of WSR-S (or WSR) apparatus 510 and optical combiner 550. Id. at 12:40–
`44. Input port 520 transmits a multi-wavelength optical signal, which is
`separated and routed into a plurality of output ports, including pass-through
`port 530 and one or more drop ports 540-1 through 540-N. Id. at 12:44–48.
`Pass-through port 530 is optically coupled to optical combiner 550, which
`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, 21, 44, and 61 of the ’678 patent are
`independent. Challenged claims 2–4, 9, 10, 13, 17, 19, and 20 ultimately
`depend from claim 1; claims 22, 23, 27, and 29 ultimately depend from
`claim 21; claims 45, 46, and 53 ultimately depend from claim 44; and,
`claims 62–65 ultimately depend from claim 61. Claims 1, 21, and 61 of the
`’678 patent are illustrative of the claims at issue:
`1. A wavelength-separating-routing
`comprising:
`a) multiple fiber collimators, providing an input port
`for a multi-wavelength optical signal and a plurality of output
`ports;
`
`apparatus,
`
`b) a wavelength-separator, for separating said multi-
`wavelength optical signal from said input port into multiple
`spectral channels;
`c) a beam-focuser, for focusing said spectral channels
`into corresponding spectral spots; and
`d) a spatial array of channel micromirrors positioned
`such that each channel micromirror receives one of said
`spectral channels, said channel micromirrors being pivotal
`about two axes and being individually and continuously
`to reflect [[said]] corresponding received
`controllable
`spectral channels into any selected ones of said output ports
`and to control the power of said received spectral channels
`coupled into said output ports.
`Ex. 1001, 14:6–23 (emphases in original, “[[ ]]” indicating matter in
`the first reissue that forms no part of the second reissue, and matter in
`italics indicating additions made by second reissue).
`21. A servo-based optical apparatus comprising:
`a) multiple fiber collimators, providing an input port
`for a multi-wavelength optical signal and a plurality of output
`ports;
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`b) a wavelength-separator, for separating said multi-
`wavelength optical signal from said input port into multiple
`spectral channels;
`c) a beam-focuser, for focusing said spectral channels
`into corresponding spectral spots; and
`d) a spatial array of channel micromirrors positioned
`such that each channel micromirror receives one of said
`spectral channels,
`said channel micromirrors being
`individually controllable to reflect said spectral channels into
`selected ones of said output ports; and
`e) a servo-control assembly, in communication with
`said channel micromirrors and said output ports, for
`maintaining a predetermined coupling of each reflected
`spectral channel into one of said output ports.
`Ex. 1001, 15:29–48.
`61. A method of performing dynamic wavelength
`separating and routing, comprising:
`a) receiving a multi-wavelength optical signal from an
`input port;
`b) separating said multi -wavelength optical signal into
`multiple spectral channels;
`c) focusing said spectral channels onto a spatial array
`of corresponding beam-deflecting elements, whereby each
`beam-deflecting element receives one of said spectral
`channels; and
`d) dynamically and continuously controlling said
`beam-deflecting elements [[, thereby directing]] in two
`dimensions to direct said spectral channels into [[a plurality]]
`any selected ones of said output ports and to control the
`power of the spectral channels coupled into said selected
`output ports.
`Ex. 1001, 18:55–19:3 (emphases in original, with “[[ ]]” indicating matter in
`the first reissue that forms no part of the second reissue, and matter in italics
`indicating additions made by second reissue).
`
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`
`III. ANALYSIS
`Claim Construction
`A.
`The Board interprets a claim using the “broadest reasonable
`construction in light of the specification of the patent in which it appears.”
`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).
`“continuously controllable”
`1.
`Claims 1 and 44 require “a spatial array of channel micromirrors . . .
`being individually and continuously controllable.” Ex. 1001, 14:16–20;
`17:43–47. Similarly, claim 61 requires “dynamically and continuously
`controlling said beam-deflecting elements.” Id. at 18:65–66. Petitioner
`asserts that “continuously controllable” should be construed to mean “able to
`effect changes with fine precision.” Pet. at 11. Petitioner also notes,
`however, that the ’678 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 ¶¶ 59–60
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`(explaining that 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 ’678 patent as supporting its proposed
`construction:
`The ‘678 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. at 9:9–14;
`emphasis added). ‘678 Patent states “channel micromirrors 103
`are individually controllable and movable, e.g., pivotable (or
`rotatable) under analog (or continuous) control.” (Id. at 7:6–8).
`Pet. 11–12. Patent Owner disputes Petitioner’s proposed construction, but
`offers no express alternative. PO Response 47–48. 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 ’678 patent that uses “fine precision”;
`and (3) fails to explain what “fine precision” is intended to encompass or
`exclude. See Pet. 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 ’678 patent,
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`encompasses “under analog control such that it can be continuously
`adjusted.”
`“servo-control assembly” and “servo-based”
`2.
`Challenged claims 2–4, 21–23, and 45 recite a “servo-control
`assembly.” Petitioner asserts “servo-control assembly” means “feedback-
`based control assembly,” thereby suggesting “servo” means “feedback-
`based.” Pet. 12. Challenged claims 21–25, 27, and 29 recite a “servo-based
`optical apparatus.” Petitioner asserts that “servo-based” means “feedback-
`based control.” Id. Patent Owner offers no construction of the terms. We
`are not persuaded that “servo” necessarily means “feedback” or “feedback-
`based” merely because the ’678 patent describes a processing unit within a
`servo-control assembly as using power measurements from the spectral
`monitor to provide feedback control of the channel mirrors. See Pet. 13–14.
`The ’678 patent does not use the term “servo-based” outside of the
`preamble of challenged claims 21–25, 27, and 29. “If . . . the body of the
`claim fully and intrinsically sets forth the complete invention, including all
`of its limitations, and the preamble offers no distinct definition of any of the
`claimed invention’s limitations, . . . then the preamble is of no significance
`to claim construction because it cannot be said to constitute or explain a
`claim limitation.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
`1298, 1305 (Fed. Cir. 1999) (citations omitted). The bodies of claims
`21–25, 27, and 29 fully and intrinsically set forth the complete invention;
`therefore, the use of “servo-based” in the preamble does not serve as a
`limitation and need not be construed for purposes of this decision.
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`
`With respect to “servo-control assembly,” the ’678 patent states that it
`“serves to monitor the power levels of the spectral channels coupled into the
`output ports and further provide control of the channel micromirrors on an
`individual basis.” Ex. 1001, 4:47–50. Further, “[i]f the WSR apparatus
`includes an array of collimator-alignment mirrors . . . the servo-control
`assembly may additionally provide dynamic control of the collimator-
`alignment mirrors.” Id. at 4:56–60. According to the ’678 patent, “[a]
`skilled artisan will know how to implement a suitable spectral monitor along
`with an appropriate processing unit to provide a servo-control assembly in a
`WSP-S apparatus according to the present invention, for a given
`application.” Ex. 1001, 12:11–15.
`Based on the specification, a “servo-control assembly” encompasses a
`spectral monitor and processing unit to monitor spectral channel power
`levels and control channel micro mirrors on an individual basis. See id. at
`11:10–36.
`“port”
`3.
`Claim 1 recites “multiple fiber collimators, providing an input port . . .
`and a plurality of output ports.” Ex. 1001, 14:8–10. By comparison, claim
`61 does not recite a collimator, but instead requires “receiving a multi-
`wavelength optical signal from an input port,” and “controlling said beam
`deflecting elements . . . to direct said spectral channels into . . . output
`ports.” Id. at 18:57–19:1. Patent Owner offers no definition of “port,” and
`does not suggest that the ’678 patent provides an express definition of the
`term, but instead argues that a “port,” as claimed, is not a “circulator port”
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`because the ’678 patent “disavows circulator-based optical systems.” PO
`Resp. at 35–36. 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. 1051), 43:16–23,
`45:12–13 (“The circulator ports are ports with constraints.”). Nor does the
`’678 patent equate the term “port” to “collimator,” as both “port” and
`“collimator” appear separately in the claims of the ’678 patent. Ex. 1001,
`14:8–10. We have considered the testimony of Dr. Sergienko as well
`(Ex. 2022 ¶¶ 168–172), and find that even if certain fiber collimators serve
`as ports in the ’678 patent, that does not redefine the term “port” to mean
`“collimator.” See id. at ¶ 171. Thus, the primary issue is whether the ’678
`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) (“[t]he 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, 1357-58 (Fed. Cir.
`2006).
`Patent Owner fails to show any expressions of manifest exclusion or
`restriction, representing a clear disavowal of claim scope with respect to the
`use of “port” in the ’678 patent. Patent Owner argues: (1) that the ’678
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`patent provides a scalable system without circulator ports (PO Resp. 1),
`(2) that a provisional application to the ’678 patent “describes existing
`add/drop architectures that had a number of problems” (PO Resp. 37);
`(3) 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 ’678
`patent describes fiber collimators serving as ports” (PO Resp. 43–44); and
`(4) that because the inventors of the ’678 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.
`36–37). See also PO Resp. 34–40 (citing Ex 2022 ¶ 182).
`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 ’678 patent.” Ex. 2022, ¶ 182. Even if
`the ’678 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 ’678
`patent in fact uses circulator ports as “ports.” Pet. Reply 15–16 (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 ’678 patent’s use of collimators” fails to negate
`the fact that the provisional application uses circulator ports as “ports.” See
`PO Resp. 42–43. Similarly, we find insufficient support for Patent Owner’s
`argument based on the preamble that “circulators can only be coupled to, but
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`not part of, the [optical add drop] apparatus. See id. at 40–41. 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
`(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 16. We have considered
`all of the arguments advanced by Patent Owner in its effort to redefine
`“port” as excluding “circulator ports” (PO Resp. 32–44), and find
`insufficient support for Patent Owner’s contention that the ’678 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 ’678
`patent, encompasses “circulator port.”
`“beam-focuser”
`4.
`Claims 1, 21, and 44 each require a “beam-focuser, for focusing said
`spectral channels into corresponding spectral spots.” The ’678 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.
`
`17
`
`

`
`IPR2015-00739
`Patent RE42,678 E
`
`
`Petitioner contends that “beam focuser” is “a device that directs a
`beam of light to a spot.” Pet. 14. According to Petitioner:
`The Summary of the ‘678 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. at 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
`that “focusing means bringing of the energy in the original image limited to
`the focal spot.” Ex. 1051, 245:17–19. We agree that, based on the
`specification of the ’678 patent, “beam focuser” means “a device that directs
`a beam of light to a spot.”
`5.
`Additional Claim Terms
`Petitioner addresses several additional claim terms, including
`“spectral monitor,” “in two dimensions,” “control the power,” and “optical
`sensor.” Pet. 13–16. For purposes of this decision, no express construction
`of any additional claim terms is necessary.
`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.
`
`18
`
`

`
`IPR2015-00739
`Patent RE42,678 E
`
`
`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. 19. Petitioner
`also contends that the Bouevitch COADM controls the power of its output
`channels by tilting beam-deflecting mirrors at varying angles. Id. at 18.
`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
`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
`
`19
`
`

`
`IPR2015-00739
`Patent RE42,678 E
`
`linear relationship between the deflection angle of the MEMS mirrors and
`the applied voltage. Pet. 31–32.
`
`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. 18.
`Asserted Obviousness Over Bouevitch, Sparks, and Lin
`C.
`Petitioner asserts that claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46,
`53, and 61–65 would have been obvious over Bouevitch, Sparks, and Lin.6
`Pet. 5.
`Claim 1
`1.
`Claim 1, directed to a wavelength-separating-routing apparatus,
`requires “multiple fiber collimators, providing an input port . . . and a
`plurality of output ports.” Ex. 1001, 14:6–10. Petitioner shows that
`Bouevitch describes microlenses 12a and 12b, corresponding to the recited
`
`
`6 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, 104). 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.
`20
`
`

`
`IPR2015-00739
`Patent RE42,678 E
`
`“multiple fiber collimators.” Pet. 24–25. Petitioner’s declarant, Sheldon
`McLaughlin, an employee of Petitioner, equates microlenses 12a and 12b to
`fiber collimators. Ex. 1028 ¶ 43. Petitioner further asserts that the
`microlenses of Bouevitch, in conjunction with fiber waveguides and
`circulators, provide an input port (labeled “IN”), and a plurality of output
`ports (labeled “OUT EXPRESS” and “OUT DROP”). Pet. 25–26 (citing Ex.
`1003, Fig. 11). Petitioner’s contentions are supported by Mr. McLaughlin.
`Ex. 1028 ¶¶ 44–45.
`Patent Owner argues that, under its proposed claim construction of
`“port,” Bouevitch discloses at most two ports because the ’678 patent
`equates “port” to “collimator” and disavows circulator ports. PO Resp. 32–
`45. For the reasons explained above in our claim construction analysis, 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. 45. Petitioner
`has shown, as discu

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