UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`CISCO SYSTEMS, INC. AND OCLARO, INC.
`Petitioners
`
`v.
`
`OYSTER OPTICS, LLC
`Patent Owner
`____________
`
`IPR2017-01881
`Patent 8,913,898
`____________
`
`PETITIONERS’ REPLY
`
`i
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`CISCO SYSTEMS, INC. AND OCLARO, INC.
`Petitioners
`
`v.
`
`OYSTER OPTICS, LLC
`Patent Owner
`____________
`
`IPR2017-01881
`Patent 8,913,898
`____________
`
`PETITIONERS’ REPLY
`
`i
`
`
`
`IPR2017-01881
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................................... 1
`
`II. THE BOARD SHOULD CONSIDER ALL CHALLENGED CLAIMS ..... 1
`
`III. GROUND 1: CORKE AND ADE RENDER OBVIOUS CLAIMS 14, 15,
`20–22, AND 24 ........................................................................................................................... 3
`
`A. Patent Owner’s Response fatally ignores Corke’s unidirectional fiber
`embodiments ........................................................................................................... 3
`
`1. Corke’s embodiments without protection switching .................................... 3
`
`2. Corke’s unidirectional fiber embodiments ................................................... 4
`
`B. The Corke–Ade combination teaches placing a laser on the same card as the
`modulator ..............................................................................................................10
`
`C. The combination discloses a transceiver card with an energy level detector12
`
`D. Corke discloses an “energy level detector including a threshold indicating a
`drop in amplitude” ................................................................................................13
`
`IV. GROUND 4: THE COMBINATION OF CORKE, ADE, AND
`KOBAYASHI RENDER OBVIOUS CLAIM 19 ....................................................... 17
`
`V. GROUND 5: THE COMBINATION OF ROBERTS ‘840 AND ADE
`RENDER OBVIOUS CLAIMS 14, 15, 20–22, AND 24 ........................................... 20
`
`1. A POSITA would put the receiver of Roberts ‘840 together with a
`transmitter on the same card, as in Ade ............................................................20
`
`2. The Roberts ‘840–Ade combination discloses measurement elements on a
`transceiver card .................................................................................................22
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`ii
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`IPR2017-01881
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`3. Roberts ‘840 discloses measuring the energy level of the second optical
`signal .................................................................................................................23
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`VI. GROUND 8: THE COMBINATION OF ROBERTS ‘840, ADE, AND
`KOBAYASHI RENDERS OBVIOUS CLAIM 19 ..................................................... 24
`
`VII. CONCLUSION .............................................................................................................. 25
`
`iii
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`
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`IPR2017-01881
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`LIST OF EXHIBITS
`
`U.S. Patent No. 7,620,327 (the “’327 Patent”)
`
`U.S. Patent No. 8,913,898
`
`Declaration of Dr. Daniel Blumenthal
`
`Blumenthal CV
`
`U.S. Patent No. 5,510,917 to Corke et al. (“Corke”)
`
`Optical Fiber Telecommunications Vol. IIIB, Kaminow and Koch
`(“OFTIIIB”)
`
`U.S. Patent No. 5,513,029 (“Roberts ’029”)
`
`Coherent Optical System Design by Pieter W. Hooijmans
`
`U.S. Patent No. 5,969,840 (“Roberts ’840”)
`
`U.S. Patent No. 6,529,316 (“Treyz”)
`
`Declaration of Scott Bennett
`
`Digital Processing, Optical Transmission and Coherent Receiving
`Techniques by Le Nguyen Binh
`
`Coherent Optical Communications Systems by Silvello Betti et al.
`
`N. M. Blachman, “The effect of phase error of DPSK error
`probability,” ZEEE Trans. Commun., vol. COM-29, pp. 364-365,
`1981.
`
`G. Nicholson, “Probability of error for optical heterodyne DPSK
`system with quantum phase noise,’’ Electron. Lett., vol. 20, 1005-06
`(1984)
`
`R. Wyatt, T. G. Hodgkinson and D. W. Smith, “DPSK heterodyne
`experiment featuring an external cavity diode laser local oscillator,”
`in Electronics Letters, vol. 19, no. 14, 550-52 (July 1983)
`
`iv
`
`
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
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`1025
`
`1026
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`1027
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`1028
`
`1029
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`1030
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`1031
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`IPR2017-01881
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`S. Yamazaki, S. Murata, K. Komatsu, Y. Koizumi, S. Fujita, K.
`Emura, and K. Minemura, “A 1.2 Gbit/s optical DPSK heterodyne
`detection transmission system using monolithic external cavity DFB
`LDs,” presented at OFC’87 (New Orleans, LA), 12 (1987)
`
`S. Watanabe, T. Naito, T. Chikama, T. Kiyonaga, Y. Onoda, and H.
`Kuwahara, “Polarization-insensitive 1.2 Gb/s optical DPSK
`heterodyne transmission experiment using polarization diversity,”
`presented at ECOC’88 (Brighton, U.K.), vol. 1, pp. 90-93 (1988)
`
`J. M. P. Delavaux, L. D. Tzeng, M. Dixon and R. E. Tench, “1.4
`Gbit/s optical DPSK heterodyne transmission system experiment,”
`1988 Fourteenth European Conference on Optical Communication,
`ECOC 88 (Conf. Publ. No.292), Brighton, UK, 475-78 vol.1 (1988)
`
`John R. Barry et al., Performance of Coherent Optical Receivers,
`Proceedings of the IEEE, Vol. 78, No. 8 (Aug. 1990)
`
`Optically Preamplified 3 Gb/s DPSK Receiver with 80 Photons/bit
`Sensitivity, Eric. A. Swanson et al., OSA/OFC (1993)
`
`U.S. Patent No. 6,559,996 to Miyamoto et al. (“Miyamoto”)
`
`U.S. Patent No. 5,543,952 to Yonenaga et al. (“Yonenaga”)
`
`U.S. Patent No. 5,347,601 to Ade et al. (“Ade”)
`
`U.S. Patent No. 6,404,281 to Kobayashi et al. (“Kobayashi”)
`
`Provisional Patent Application
`
`First Utility Application
`
`Comparison between provisional and utility application
`
`Treyz’ provisional application
`
`Comparison of Treyz’ provisional and Treyz
`
`Small Form-factor Pluggable (SFP) Transceiver MultiSource
`Agreement (MSA)
`
`v
`
`
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
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`1038
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`1039
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`1040
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`DPSK 32 x 10 Gb/s Transmission Modeling on 5 x 90 km
`Terrestrial System, June-Koo Rhee et al., (IEEE Photonics Tech.
`Letters., Vol.
`12, No. 12, Dec. 2000)
`
`U.S. Patent No. 7,016,612 to Ikeda et al. (“Ikeda”)
`
`U.S. Patent No. 4,982,083 to Graham et al. (“Graham”)
`
`U.S. Patent Publication No. 2002/0181058 A1 to Ger et al. (“Ger”)
`
`Reserved.
`
`T. E. Stern and K. Bala, Multiwavelength Optical Networks: A
`Layered Approach, pp. 610-16, 629-32, Addison Wesley Longman,
`1999.
`
`Transcript of the Deposition of Keith W. Goossen (September 20,
`2018)
`
`Supplemental Declaration of Dr. Daniel Blumenthal in Support of
`Petitioners’ Reply
`
`J. Capobianco and J. Rando, “Applications of an Injection Molded
`Bidirectional Active Coupler,” EFOC/LAN 86 Proceedings, pp. 121-
`26, Fasano, Kennelly, and Polishuk, Information Gatekeepers, 1986.
`
`1041
`
`U.S. Patent No. 5,781,320 to Byers (“Byers”)
`
`vi
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`
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`I.
`
`INTRODUCTION
`
`The Board instituted review on all claims following the SAS Institute decision,
`
`and this Reply demonstrates that challenged claims1 are unpatentable as presented
`
`in the Petition. Despite Patent Owner’s objections, the Modification Order was
`
`proper under SAS Institute, the statutory law, and guidance issued by the Director.
`
`With respect to the substance of the grounds, Patent Owner provides solely attorney
`
`argument for half of the asserted grounds, and for only limited issues relating to
`
`those grounds, and the limited expert testimony Patent Owner does provide fails to
`
`recognize teachings in the prior art that render the claims unpatentable. As explained
`
`below, Petitioners’ obviousness challenge stands uncontroverted and the challenged
`
`claims should be found unpatentable.
`
`II.
`
`THE BOARD SHOULD CONSIDER ALL CHALLENGED CLAIMS
`Patent Owner argues that 35 U.S.C. §§ 314 and 316 do not permit a second or
`
`modified institution decision. Resp., 12–17; see SAS Order. Similar arguments by
`
`the same PO were previously denied. See Alcatel-Lucent USA Inc. v. Oyster Optics,
`
`LLC, IPR2018-00070, Paper 27 at 3–5 (PTAB Aug. 31, 2018) (denying request for
`
`rehearing because decision to institute was not an abuse of discretion).
`
`1 Petitioners maintain all challenged claims and grounds as presented in the Petition
`
`1
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`Although Rule 42.5 did not contemplate proceedings in which an intervening
`
`Supreme Court decision renders prior Board action ultra vires, the SAS Order is
`
`consistent with precedent, which provides for a binary institution decision. See DI,
`
`1–2; SAS Order, 1–2. The SAS Order is consistent with precedent, which provides
`
`for a binary institution decision. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355–56
`
`(2018); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018);
`
`Elysium Health Inc. v. Trustees of Dartmouth College, IPR2017-01795, Paper 36 at
`
`4–10 (PTAB Sept. 5, 2018) (modification of institution decision supported by Office
`
`policy and precedent, and Rule 42.5 does not address whether IPR encompasses all
`
`challenges). Specifically, the Board must consider all challenged claims and
`
`grounds in the petition. BioDelivery Scis. Int'l, Inc. v. Aquestive Therapeutics, Inc.,
`
`898 F.3d 1205, 1209–10 (Fed. Cir. 2018); Eset, LLC v. Finjan, Inc., IPR2017-01738,
`
`Paper 28 (PTAB Aug. 10, 2018) (IPR guided by “petition, not the Director’s
`
`discretion”).
`
`Patent Owner also argues that IPR is not available for pre-AIA patents. Resp.,
`
`54–55. But Patent Owner fails to assert a constitutional violation and only suggests
`
`that the PTAB cannot cancel patents. See Oil States Energy Servs., LLC v. Greene's
`
`Energy Grp., LLC, 138 S. Ct. 1365, 1370 (2018). Moreover, the ’898 Patent was
`
`subject to inter partes proceedings prior to the AIA. See id. at 1371; Ex. 1002.
`
`2
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`Therefore, the Board should consider all challenged claims and find all
`
`challenged claims unpatentable.
`
`III. GROUND 1: CORKE AND ADE RENDER OBVIOUS CLAIMS 14, 15,
`
`20–22, AND 24
`
`A. Patent Owner’s Response fatally ignores Corke’s unidirectional fiber
`
`embodiments
`
`Patent Owner’s Response fails to rebut Petitioners’ arguments by ignoring
`
`entire categories of embodiments disclosed in Corke.
`
`1.
`Corke’s embodiments without protection switching
`Corke discloses a system for monitoring transmissions over an optical fiber
`
`communications system. Ex. 1005, Abstract. Specifically, Corke discloses a system
`
`including components for monitoring the power of optical signals received over an
`
`optical fiber. Ex. 1039, ¶8. Patent Owner ignores that Corke discloses its monitoring
`
`can be used without requiring protection switching. Indeed, Patent Owner’s and Dr.
`
`Goossen’s arguments all rely on this faulty assumption. Accordingly, Patent Owner
`
`has failed to rebut Petitioners’ challenge of the claims.
`
`In particular, Corke states that “[t]he same monitoring system can also be
`
`employed simply to provide performance information to an operator or
`
`computerized management system or to automatically control an alarm to trigger a
`
`diagnostic sequence. Thus the invention, in addition to its importance to actuating
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`3
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`the switching between routes, has other important applications as well.” Ex. 1005,
`
`11:2–8. Clearly, Corke clearly teaches using its monitoring outside of protection
`
`switching. All of Patent Owner’s and Dr. Goossen’s arguments rely on assuming the
`
`opposite of what is taught here in Corke. Resp., 25–28. Even Dr. Goossen agreed
`
`during his deposition that a POSITA would understand that Corke’s detectors could
`
`be applied to monitoring the power level of a signal without protection switching as
`
`there are many functions that employ monitoring in an unprotected link. Ex. 1038,
`
`83:11 – 84:12.
`
`Further, as explained in the Petition, it would be obvious to combine Corke
`
`and Ade. Pet. 23–29; Ex. 1003, ¶¶82–83. A POSITA would readily understand how
`
`to combine the monitoring teachings of Corke, such as the teachings described in
`
`Figure 2 of Corke, without including protection switching for the reasons provided
`
`in the Petition. Ex. 1039, ¶9. Therefore, the opinions of Dr. Goossen and Patent
`
`Owner’s arguments are irrelevant by failing to address the clear disclosure of
`
`embodiments in Corke that do not rely on protection switching. Accordingly, Patent
`
`Owner’s arguments should not weigh on the proceedings, and even if considered,
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`are wrong for the reasons Petitioners explain below.
`
`Corke’s unidirectional fiber embodiments
`2.
`As presented in the Petition, the Corke–Ade combination teaches a single card
`
`with Corke’s optical power detectors and Ade’s receiver, transmitter, and modulator
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`4
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`with control circuitry. Ex. 1003, ¶ 83; Pet., 26. The Petition refers to both FIGs. 2
`
`and 4 of Corke, which both depict an energy level detector integrated with a receiver.
`
`Pet., 24–25. FIG. 2 of Corke forms the basis for the proposed combination of the
`
`energy level detector of Corke with the receiver in the transceiver of Ade. Id., 24.
`
`FIG. 4 of Corke further supports the notion of a receiver and a transmitter being co-
`
`located, as in Ade. Id., 25. But, Petitioners’ combination does not rely on the specific
`
`embodiment illustrated in FIG. 4.
`
`Despite the Petition’s reliance on FIG. 2 of Corke, the Response disregards
`
`the teachings of the categories of embodiments disclosed in FIG. 2 (and associated
`
`FIGs. 1a and 1b of Corke). Patent Owner bases all its arguments on the “bidirectional
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`fiber” embodiments, such as the embodiments depicted in FIGs. 4 and 7. There,
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`Corke discloses using fibers for both transmission and reception, i.e., using
`
`“bidirectional fibers.” Ex. 1005, FIGs. 4 and 7. Patent Owner refers to these
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`embodiments as the “Corke system” and “Corke method,” disregarding other
`
`embodiments, including Corke’s FIG. 2 embodiment explicitly relied upon in the
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`Petition. In particular, the Response asserts that certain advantages found in the
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`“bidirectional fiber” embodiments are diminished in Petitioners’ combination.
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`5
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`Resp., 25–27. But, in doing so, Patent Owner improperly ignores embodiments for
`
`which such alleged drawbacks are non-existent and irrelevant.2
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`Patent Owner ignores Corke’s embodiments shown in FIG. 2. The example
`
`system illustrated in FIG. 2 shows “unidirectional fibers,” i.e., fibers carrying a
`
`transmission in only one direction. FIG. 2 illustrates a detailed embodiment of
`
`control device 6 as shown in FIGs. 1a and 1b3. FIG. 2 illustrates the receiver
`
`integrated with detectors 15, which may monitor the energy level of the incoming
`
`transmission. Neither FIG. 2 nor the accompanying description describes these
`
`2 See e.g., Merck & Co. v. Biocraft Laboratories, 874 F.2d 804 (Fed. Cir.), cert.
`
`denied, 493 U.S. 975 (1989) (holding that a reference may be relied upon for all that
`
`it would have reasonably suggested to one having ordinary skill the art, including
`
`nonpreferred embodiments); and Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d
`
`1319, 1323 (Fed. Cir. 2005) (optional inclusion of a particular component teaches
`
`compositions that both do and do not contain that component).
`
`3 FIGs. 1a and 1b show simplified diagrams of a protection system with a switch 7
`
`at a receiver 8. Blumenthal Decl., ¶10. Switch 7 is configured to switch between the
`
`fibers 4, 5 transmitting a signal to receiver 8, e.g., in response to detecting a fault or
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`degradation of the signal. Id.
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`6
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`examples as using “bidirectional fibers” nor do the functions of these examples rely
`
`on using “bidirectional fibers.” See Ex. 1038, at 40:7–16; 63:18 – 64:14 (agreeing
`
`that FIG. 2 uses unidirectional fibers and FIG. 4 cannot be considered a “preferred
`
`embodiment”). Indeed, Corke’s unidirectional fiber embodiments would function
`
`exactly as described and shown when combined with Ade using a different
`
`unidirectional fiber connected to each of the transmitter and receiver of Ade. Ex.
`
`1039, ¶15.
`
`As mentioned above, the combination combines the detector of Corke, e.g.,
`
`as shown in FIG. 2, at the receiver with the transceiver chip of Ade. Pet., 26. As
`
`admitted by Patent Owner’s expert, Dr. Goossen, the detection techniques described
`
`in FIG. 2 of Corke do not require the bidirectional fibers. Ex. 1038, 40:7–16.
`
`Therefore, the combination of the detector of Corke in FIG. 2 with Ade does not
`
`require using a bidirectional fiber.
`
`A POSITA would have understood that the node incorporating the receiver in
`
`FIG. 2 would also have included a transmitter. Ex. 1039, ¶13. Two-way
`
`communication using separate fibers for each direction of communication was well-
`
`known. Ex. 1039, ¶10 and ¶13. For example, the node incorporating receiver 8a/8b
`
`of Corke’s FIG. 2 would predictably include a transmitter to convey information
`
`back to the node from which it is receiving information, as is shown in Ade. Ex.
`
`1039, ¶13. Combined with Ade, this would result in the transmitter and receiver
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`7
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`being incorporated on the same chip on a card having separate transmit (output) and
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`receive (input) fibers. Id.
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`The disclosure in Corke of using “bidirectional fibers” does not obviate the
`
`disclosure of unidirectional fibers in FIGs. 1a, 1b, and 2. Petitioners do not rely on
`
`the bidirectionality of fibers in FIG. 4 disclosing any claim element, but as further
`
`suggesting that receivers of Corke would be co-located and integrated with
`
`transmitters. Pet., 25–26. Thus, while certain Corke bidirectional fiber embodiments
`
`may switch the transmit fiber based on the received signal, necessarily because the
`
`same fiber is used for receiving and transmitting the signal, Corke’s teachings are
`
`not limited to bidirectional fiber systems. Because Patent Owner’s arguments in
`
`Section V.A.1 of its Response (and in ¶¶ 27–47 of Dr. Goossen’s Declaration (Ex.
`
`2026)) are solely related to the bidirectional fiber embodiments of Corke, they are
`
`irrelevant to the actual proposed combination with Corke.
`
`Furthermore, despite Dr. Goossen’s implications otherwise, the technique
`
`shown and described in FIG. 2 of Corke, implemented using unidirectional fibers
`
`can and was used effectively to control switching of the fiber (route) used to receive
`
`signals based on faults in the received signals. Ex. 1039, ¶9. In fact, FIGS. 1a/1b and
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`2 illustrate a well-known, conventional protection scheme, 1+1 protection switching,
`
`that allows such control. Id. Accordingly, Dr. Goossen’s assertion that the use of
`
`bidirectional fibers is necessary to the protection switching in Corke is incorrect. Ex.
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`8
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`1039, ¶14. If a bidirectional fiber is used for communication between nodes, such as
`
`in Corke’s FIG. 4, the decision to switch between a primary fiber to a secondary
`
`fiber based on the received signals may also cause the change of the fiber used for
`
`transmission (since they are the same fiber). However, the switching of the transmit
`
`fiber is not necessary to provide protection switching. Ex. 1039, ¶10 and ¶13. For
`
`example, FIG. 2 of Corke describes a system with unidirectional fibers providing
`
`protection switching. Id. Therefore, Dr. Goossen’s implication that bidirectional
`
`fibers are required to provide protection switching described in Corke is incorrect.
`
`In summary, Corke and Ade disclose protection switching and using separate
`
`unidirectional fibers for receiving and transmitting signals, despite Patent Owner’s
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`attempt to ignore teachings of Corke. For example, Corke’s FIG. 2 teaches
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`protection switching in a unidirectional fiber system. A POSITA would have
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`modified Corke with Ade to include a transmitter using a separate fiber
`
`unidirectionally, which would have still provided protection switching as
`
`contemplated in Corke’s FIG. 2. Moreover, the proposed combination would be
`
`consistent with the broader scope of Corke and Ade even if it did not provide
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`protection switching. Accordingly, Patent Owner’s fails to address the entirety of
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`the disclosure of the combination of Corke and Ade and must fail.
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`9
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`B. The Corke–Ade combination teaches placing a laser on the same card as the
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`modulator
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`The Corke–Ade combination teaches placing a laser on the same card as the
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`modulator, receiver, and detector disclosed in the combination. Pet., 26. Patent
`
`Owner argues that the combination of Corke and Ade does not disclose a transceiver
`
`card having a laser. Resp., 32–36. The Response disregards, however, that Ade
`
`discloses a laser used with its transceiver chip. Ex. 1039, ¶15. And, even if Ade
`
`discloses the laser as “external” to the transceiver chip, it still suggests to a POSITA
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`to place the disclosed laser on the same card as the transceiver chip. Ex. 1039, ¶16.
`
`Accordingly, the Corke–Ade combination at least suggests to a POSITA to place the
`
`laser on the same card as the components of Ade’s transceiver chip.
`
`Patent Owner fails to point to any portion of Ade that would suggest the laser
`
`being placed remotely from the card including Ade’s transceiver chip. Instead,
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`Patent Owner wrongly asserts that Petitioners have not provided a reason why a
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`POSITA would have placed the laser on the same card as the transceiver chip of
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`Ade. The Petition explains that it would have been obvious to a POSITA to place
`
`the laser on the same card as the transmitter, receiver, and detector(s). Pet., 31–33.
`
`Ex. 1003, ¶152. Generally, at the time, a POSITA would have been motivated to
`
`integrate as much of the desired functionality of a telecommunications device into
`
`individual cards. Ex. 1039, ¶17. Therefore, a POSITA would understand that even
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`10
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`if the laser was “external” to Ade’s chip, it would still be desirable to integrate it
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`onto the same card.
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`Additionally, a POSITA would have specific motivations to integrate the laser
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`on the same card. Ade expressly discloses the laser input light is used by the
`
`transmitter to provide the transmitted signal. Ex. 1039, ¶17. A POSITA would desire
`
`to provide the most coherent and best input to the transmitter, which would be best
`
`accomplished by placing the laser as close to the modulator as possible, possibly in
`
`the same package. Id. Accordingly, a POSITA would be motivated to place the laser
`
`disclosed in Ade on the same card as the components of Ade’s transceiver chip.
`
`Patent Owner fails to rebut Petitioner’s evidence that the components of Ade’s
`
`chip and laser would be located on the same “transceiver card.” The concept of a
`
`transceiver card, a card including both transmitter and receiver, was well-known at
`
`the time of filing of the ‘898 patent. Ex. 1039, ¶18. Indeed, the ‘898 Patent’s own
`
`background labels the integration of a laser and modulator defining a transmitter and
`
`a receiver on a “single card” as “typical.” Ex. 1002, 1:25–37. It was well known that
`
`semiconductor chips, like the chip in Ade, are affixed to a card (i.e., a printed circuit
`
`board—PCB), e.g., to provide robustness to changing environmental conditions and
`
`improved reliability. Ex. 1039, ¶19; see also Ex. 1038, 32:22–24 (agreeing that “a
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`printed circuit board is a board having layers of interconnections that you have
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`electronic components on.”). Thus, a POSITA would have understood that an actual
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`system would implement Ade’s chip by placing it on such a card, and it would have
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`obvious to implement the laser in Ade on that same card. Id.
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`C. The combination discloses a transceiver card with an energy level detector
`
`Patent Owner further fails to rebut Petitioners’ evidence that the Corke–Ade
`
`combination makes obvious a transceiver card with an energy level detector. As
`
`discussed in the previous section, transceiver cards were well known in the prior art,
`
`and the transceiver chip of Ade, when mounted on a card/PCB, would be such a
`
`transceiver card. Therefore, it would have been obvious to place the receiver and
`
`transmitter (with the laser) onto the same transceiver card.
`
`Furthermore, a POSITA would have been motivated to place the energy level
`
`detector of Corke proximate the receiver on the same card as the receiver. Ex. 1039,
`
`¶21. Indeed, Ade already suggests integrating a photodetector on the same chip as
`
`the transmitter and receiver. Ex. 1039, ¶22. Thus, a POSITA would have understood
`
`that the detectors in Corke could be integrated in the chip of Ade or placed on the
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`same card as such as the chip. Ex. 1039 ¶22.
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`In addition to the explicit suggestions from Corke and Ade, a POSITA would
`
`have further motivation to integrate the detectors of Corke on the same chip or the
`
`same card as Ade’s transceiver. For example, the motivations to miniaturize and
`
`condense more functionality into cards also applies here. Ex. 1039, ¶21. Further, a
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`POSITA would be motivated to measure the energy level as accurately as possible.
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`Ex. 1039, ¶23. As a result, a POSITA would have placed the detector of Corke as
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`close to receiver as possible to ensure an accurate measurement of the light signal at
`
`the receiver. Ex. 1039, ¶21 and ¶23. Accordingly, a POSITA would have placed the
`
`detector of Corke on the same card as the components of Ades chip, if not on the
`
`chip itself.
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`D. Corke discloses an “energy level detector including a threshold indicating a
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`drop in amplitude”
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`Patent Owner improperly narrows the scope of the “energy level detector”
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`claim element of Claim 14 in attempting to distinguish it from Corke’s detectors . In
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`particular, Patent Owner argues that Corke’s threshold does not “indicate[] a drop in
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`amplitude” because it does not disclose using phase-modulated signals and because
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`detecting a drop in amplitude of an amplitude-modulated signal would cause the
`
`system in Corke to falsely detect line faults and signal degradation. Resp., 39–41.
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`Patent Owner’s extreme narrow view is contrary, however, to the disclosure of the
`
`‘898 Patent and to the understanding of a POSITA.
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`In particular, Patent Owner argues that the threshold claim element requires
`
`monitoring the amplitude associated with each and every bit of the optical signal.
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`Resp., 40–41. In light of this narrow view, Patent Owner views the claim as
`
`implicitly requiring the transmission, reception, and monitoring of only a phase-
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`modulated signal. This is because, under Patent Owner’s narrow view, the
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`monitoring of the amplitude of each and every bit of an amplitude modulated signal
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`would cause a constant crossing of the monitored threshold. Resp., 39–41; Ex. 1038,
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`107:14 – 108:2. This is wrong at least because it is contrary to the disclosure of the
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`‘898 Patent. The ‘898 Patent uses the terms amplitude and energy interchangeably
`
`when discussing monitoring an optical signal to detect a tap. Ex. 1002, 5:11–16
`
`(“Detector 33 monitors the light energy in the fiber 111 via the light energy coupled
`
`to the detector by splitter 31. If the amplitude drops during monitoring, which may
`
`indicate a tap, the detector 33 provides an alert and can, for example, send and [sic]
`
`electronic signal to the processor via bus 135 to indicate a drop or increase in the
`
`optical energy level.”). But, detecting an “energy” requires some aggregation over
`
`time or averaging. Ex. 1039, ¶27. For example, a monitoring photodetector would
`
`detect a power based on a large number of incident bits on the order of 100 million
`
`to a billion or more. Id. Additionally, the ‘898 Patent discloses averaging the output
`
`of the photodetector prior and comparing the output to thresholds to determine a
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`drop in amplitude. Ex. 1039, ¶28. In particular, photodetector 153 of the ‘898 Patent
`
`outputs an electrical current, which corresponds to the optical signal received at the
`
`photodetector, to filter 154. The signal is filtered by filter 154, allowing only lower
`
`frequency components of the signal to propagate, thereby averaging the signal. Id.;
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`Ex. 1002, 5:39–42 (stating “the electrical signal may be filtered by a low pass filter
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`154 to provide an average voltage level which represents the average optical power
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`measured by photodetector 153.”) (emphasis added). The filtered signal is then
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`amplified by amplifier 155 before comparison to the thresholds. Ex. 1039, ¶28.
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`Accordingly, the ‘898 Patent discloses comparing the detected signal to thresholds
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`only after averaging the signal by filtering and amplifying photodetector 133s output
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`signal. Ex. 1039, ¶28. Accordingly, the recited “threshold indicating a drop in
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`amplitude” is compared to an averaged output from photodetector’s measurement
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`of the optical signal. Ex. 1039, ¶¶27–28.
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`As a result, the ‘898 Patent’s disclosed embodiments would not measure bit-
`
`by-bit changes of the amplitude or energy level of the measured signal. Ex. 1039,
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`¶¶27–28. Therefore, Patent Owner’s own interpretation would exclude the disclosed
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`embodiments of the ‘898 Patent.
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`Second, dependent claim 18 is rendered superfluous if Patent Owner’s
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`interpretation of this claim element is accepted. Claim 14 does not specify any type
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`of modulation used in the second optical signal. However, claim 18 recites “wherein
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`the second optical signal comprises a phase-modulated optical signal.” Thus, if claim
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`14 requires the second optical signal to be phase-modulated, then claim 18 would be
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`superfluous. Moreover, the ‘898 Patent expressly contemplates using amplitude
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`modulation, clearly stating that “conventional amplitude-modulated transmitters and
`
`receivers, including those using return-to-zero type signals, for example, may also
`
`be used.” Ex. 1002, 4:45–48. Therefore, challenged claim 14 does not require a
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`phase-modulated signal, and thus its requirement of measuring a drop in the
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`amplitude of a signal must be something that can be done with amplitude modulated
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`signals.
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`Accordingly, claim 14 requires measuring a “drop in amplitude” that is
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`measurable in amplitude-modulated signals. Ex. 1039, ¶29. Indeed, Patent Owner is
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`also wrong to suggest a limiting difference between a drop in “amplitude” and a drop
`
`in “intensity.” For example, a POSITA would understand that both terms can be used
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`interchangeably when referring to measuring a drop in the average power and/or
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`energy resulting from a signal having that average amplitude or average intensity.
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`Ex. 1039, ¶¶25–26. As a matter of physics, the value of amplitude and the value of
`
`intensity are directly and mathematically correlated. Ex. 1039, ¶25; Ex. 1038, 101:3
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`– 103:20 (agreeing). As a result, a POSITA would understand that a threshold
`
`representing a particular average intensity also represents an average amplitude. Ex.
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`1039, ¶26. Thus, a POSITA considering using a threshold to detect a drop in energy
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`of an optical signal using an energy level detector would understand that such a
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`threshold would detect a drop in both intensity and amplitude. Id.
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`Furthermore, contrary to Patent Owner’s assertions, Corke’s energy level
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`detector can detect a drop in amplitude of an amplitude-modulated signal.4 Ex. 1039,
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`¶30. The type of modulation does not change the fact that that average detected
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`power measured at the receiver would drop if the signal degraded. Ex. 1039, ¶29.
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`Even a detector receiving a signal modulated with Amplitude Shift-keying (ASK)
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`would produce a detectable difference in its output in response to signal degradation,
`
`e.g., due to a tap or kink/fault of the fiber. Ex. 1039, ¶30. Therefore, Corke discloses
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`an energy level detector using a threshold indicating a drop in amplitude, as
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`understood by a POSITA at the time of the ‘898 patent.
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`For at least these reasons, Patent Owner has failed to rebut Petitioners’
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`challenge and claim 14 should be found unpatentable.
`
`IV. GROUND 4: THE COMBINATION OF CORKE, ADE, AND
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`KOBAYASHI RENDER OBVIOUS CLAIM 19
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`Kobayashi discloses “a photodiode and a linear or logarithmic amplifier
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`scaling an output of the photodiode,” as recited in challenged claim 19 (aka the
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`“scaling requirement”) by disclosing circuit 100 including photodiode Pd1 and
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`multiple different components that each scale the output of the photodiode. Patent
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`4 Petitioners do not accede to Patent Owner’s assertion that the Corke-Ade
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`combination is limited to amplitude-modulation
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`Owner does not challenge the combination of Kobayashi with Corke and Ade, but
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`instead asserts that Petitioners have not identified what part of Kobayashi discloses
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`the “scaling requirement.” Resp., 42–43. Furthermore, Patent Owner does not
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`address the disclosure
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