Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 14
`Entered: March 21, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CIENA CORPORATION, CORIANT OPERATIONS, INC.,
`AND CORIANT (USA) INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01961
`Patent RE42,678 E
`_______________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`Granting Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`

`

`IPR2015-01961
`Patent RE42,678 E
`
`
`I. INTRODUCTION
`Petitioner, Ciena Corporation, Coriant Operations, Inc., and Coriant
`(USA) Inc., filed a corrected Petition (Paper 7, “Pet.”) 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 (“the ’678 patent”). Petitioner also
`filed a Motion for Joinder, pursuant to 35 U.S.C. § 315(c) and 37 C.F.R.
`§§ 42.22 and 42.122(b), seeking to join this proceeding with Fujitsu
`Network Communications, Inc. v. Capella Photonics, Inc., Case IPR2015-
`00727 (“IPR-727”). Paper 5 (“Motion” or “Mot.”). In IPR-727, inter partes
`review of the ’678 patent was instituted on August 24, 2015, on the same
`grounds asserted against the same claims challenged in this proceeding. See
`IPR-727, Paper 8, 20.
`Patent Owner, Capella Photonics, Inc., did not file either a
`Preliminary Response to the Petition or an Opposition to the Motion for
`Joinder. Petitioner represents that the petitioner in IPR-727, Fujitsu
`Network Communications, Inc., does not oppose the Motion. Mot. 2.
`For the reasons described below, we institute an inter partes review of
`claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46, 53, and 61–65 of the ’678
`patent and grant Petitioner’s Motion for Joinder.
`
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`IPR2015-01961
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`II. INSTITUTION OF INTER PARTES REVIEW
`A.
`The ’678 patent (Ex. 1001)
`The ’678 patent, titled “Reconfigurable Optical Add-Drop
`Multiplexers with Servo Control and Dynamic Spectral Power Management
`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.
`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 characters, 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. 7. The WSR
`described in the ’678 patent may be used to construct a dynamically
`reconfigurable optical add-drop multiplexer (“ROADM”) for wavelength
`division multiplexing (“WDM”) optical networking applications. Ex. 1001,
`Abstract.
`
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`IPR2015-01961
`Patent RE42,678 E
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`Figure 1A of the ’678 patent is reproduced below.
`
`
`Figure 1A depicts WSR apparatus 100, in accordance with the ’678
`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. Id. at 7:2–5.
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`IPR2015-01961
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`The WSR may also 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
`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.
`
`Illustrative Claims
`B.
`Claims 1, 21, 44, and 61 of the ’678 patent are independent. 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
`
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`IPR2015-01961
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`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 (“[[ ]]” 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;
`
`b) a wavelength-separator, for separating said multi-
`wave-length 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.
`
`Id. at 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
`
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`IPR2015-01961
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`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.
`
`Id. at 18:55–19:3 (“[[ ]]” indicating matter in the first reissue that forms no
`part of the second reissue, and matter in italics indicating additions made by
`second reissue).
`
`Related Proceedings
`C.
`According to the parties, the ’678 patent is a subject of the following
`civil actions: Capella Photonics, Inc. v. Cisco Sys., Inc., No. 3:14-cv-03348
`(N.D. Cal.), Capella Photonics, Inc. v. Fujitsu Network Commc’ns, Inc.,
`No. 3:14-cv-03349 (N.D. Cal.), Capella Photonics, Inc. v. Tellabs Ops., Inc.,
`No. 3:14-cv-03350 (N.D. Cal.), Capella Photonics, Inc. v. Ciena Corp.,
`No. 3:14-cv-03351 (N.D. Cal.), Capella Photonics, Inc. v. Columbus
`Networks USA, Inc., No. 0:14-cv-61629 (S.D. Fla.), and Capella Photonics,
`Inc. v. Telefonica Int’l Wholesale Servs. USA, Inc., No. 1:14-cv-22701 (S.D.
`Fla.). Pet. 3; Paper 9, 2–4.
`In addition to IPR-727, the ’678 patent is also the subject of the
`following inter partes review proceedings: Cisco Systems, Inc. v. Capella
`Photonics, Inc., IPR2014-01276 (to which Ciena Corporation, Coriant
`Operations, Inc., Coriant (USA) Inc., and Fujitsu Network Communications,
`Inc. v. Capella Photonics, Inc., IPR2015-00894 was joined), and Lumentum
`Holdings, Inc., Lumentum, Inc., and Lumentum Operations LLC, v. Capella
`Photonics, Inc., IPR2015-00739 (to which Coriant Operations, Inc., Coriant
`
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`(USA) Inc., Ciena Corporation, Cisco Systems, Inc., and Fujitsu Network
`Communications, Inc. v. Capella Photonics, Inc., IPR2015-01971 was
`joined). On February 17, 2016, a Final Written Decision in IPR2014-01276
`held claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46, 53, and 61–65 of the
`’678 patent unpatentable.
`D.
`Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds, mirroring those instituted in
`IPR-727. See Pet. 16; see also IPR-727, Paper 8, 20.
`References
`Basis
`Claims Challenged
`Bouevitch1 and Carr2
`§ 103
`1, 9, 10, 13, 17, 19, 44, 53,
`61, 64, and 65
`1–4, 19–23, 27, 29, 44–46,
`and 61–63
`
`Bouevitch and Sparks3
`
`§ 103
`
`Analysis
`E.
`Petitioner sets forth how it contends claims 1, 9, 10, 13, 17, 19, 44, 53,
`
`61, 64, and 65 would have been obvious over Bouevitch and Carr, as well as
`how claims 1–4, 19–23, 27, 29, 44–46, and 61–63 would have been obvious
`over Bouevitch and Sparks. Pet. 16–55. Petitioner submits arguments and
`evidence which mirror what was submitted in IPR-727, including the same
`claim construction and rationale of unpatentability. See Ex. 1040
`(comparing the Petition to the petition filed as paper 1 in IPR-727). In
`
`
`1 U.S. Patent No. 6,498,872 B2, issued December 24, 2002 (Ex. 1002,
`“Bouevitch”).
`2 U.S. Patent No. 6,442,307 B1, issued August 27, 2002 (Ex. 1005, “Carr”).
`3 U.S. Patent No. 6,625,340 B1, issued September 23, 2003 (Ex. 1006,
`“Sparks”). Petitioner contends Sparks is 102(e) prior art as of its filing date
`of December 29, 1999. Pet. 33.
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`support of the Petition, Petitioner relies on a Declaration of Timothy J.
`Drabik, Ph.D. (Ex. 1039) which is substantively identical to the Declaration
`of Timothy J. Drabik, Ph.D. filed in IPR-727. See Ex. 1038.4
`In IPR-727, we determined that Fujitsu demonstrated a reasonable
`likelihood of prevailing in establishing the unpatentability of claims 1–4, 9,
`10, 13, 17, 19–23, 27, 29, 44–46, 53, and 61–65 of the ’678 patent. IPR-
`727, Paper 8. We granted the petition in IPR-727 and instituted inter partes
`review of claims 1, 9, 10, 13, 17, 19, 44, 53, 61, 64, and 65 as unpatentable
`under 35 U.S.C. § 103(a) as obvious over Bouevitch and Carr, as well as
`claims 1–4, 19–23, 27, 29, 44–46, and 61–63 as unpatentable under 35
`U.S.C. § 103(a) as obvious over Bouevitch and Sparks. Id. at 20.
`We have reviewed the Petition and the evidence cited therein.
`Petitioner states, and Patent Owner has not disputed, that the grounds
`asserted in the Petition are substantively identical to the grounds of
`unpatentability instituted in IPR-727, and those grounds are supported by a
`declaration from Dr. Drabik containing the same information provided in a
`declaration from Dr. Drabik in IPR-727. See Pet. n.1; Exs. 1037–1039.
`Accordingly, in view of the identity of the challenges to the ’678
`patent in the Petition and in the petition in IPR-727, we incorporate our
`
`4 Petitioner originally filed a signed declaration from Dr. Drabik as Exhibit
`1016. Petitioner explains that it filed a corrected, unsigned declaration from
`Dr. Drabik as Exhibit 1039 which contained no substantive changes to
`address issues with the use of internal cross-citations in the claim charts
`flagged in the Notice of Filing Date Accorded Petition and Time for Filing
`Patent Owner Preliminary Response (Paper 6, 1–2). See Pet. n. 1.
`Dr. Drabik was hospitalized and unable to review the corrected declaration
`when it was filed. Id. Petitioner also provides Exhibit 1038, comparing
`Dr. Drabik’s declaration in IPR-00727 to his original declaration in this case.
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`previous analysis from our institution decision in IPR-727, and we determine
`that the information presented in the Petition establishes that there is a
`reasonable likelihood that Petitioner would prevail in establishing
`unpatentability of claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46, 53, and
`61–65 of the ’678 patent. See IPR-727, Paper 8.
`
`III. MOTION FOR JOINDER
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat.
`284 (2011) (“AIA”) permits joinder of like review proceedings. The Board,
`acting on behalf of the Director, has the discretion to join an inter partes
`review with another inter partes review. See 35 U.S.C. § 315(c).5 Joinder
`may be authorized when warranted, but the decision to grant joinder is
`discretionary.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`ground(s) of unpatentability asserted in the petition; and (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review. See Kyocera Corporation v. Softview LLC, Case IPR2013-00004,
`slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`
`5 35 U.S.C. § 315(c) reads:
`Joinder.–If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`partes review under section 314.
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`To be considered timely, a motion for joinder must be filed no later
`than one month after the institution date of the inter partes review for which
`joinder is requested. 37 C.F.R. § 42.122(b). The Petition in this proceeding
`has been accorded a filing date of September 24, 2015. Paper 6, 1. This
`date is within one month after the date of institution in IPR-727, which was
`instituted on August 24, 2015. IPR-727, Paper 8. The Petition, therefore, is
`timely.
`Petitioner states that that the Petition copies the petition in IPR-727
`for “simplicity and efficiency,” and “presents no new substantive issues
`relative to [IPR-727] and does not seek to broaden the scope of [IPR-727] or
`request additional discovery.” Mot. 4–5. Petitioner further states that “the
`current schedule in [IPR-727] can stay unchanged,” and further agrees that
`Fujitsu’s counsel will act as lead counsel as long as Fujitsu remains in the
`proceeding. Id. at 5–6.
`We are persuaded that Petitioner has demonstrated sufficiently that
`joinder of this case to IPR-727 is warranted. Although the decision to
`institute review in both this case and in IPR-727 has been based on petitions
`supported by declarations from Dr. Drabik, we are aware from the
`proceedings in IPR-727 that Dr. Drabik died prior to being deposed by
`Patent Owner. IPR-727, Paper 17, 2. In IPR-727 we granted a motion to
`file a declaration from Dr. Joseph E. Ford as supplemental information to
`substitute for the declaration from Dr. Drabik. See id. We further explained
`in IPR-727 that, although Dr. Drabik’s declaration remains in the record as
`the evidentiary basis on which we instituted trial, going forward, we will not
`consider the content of Dr. Drabik’s declaration as a part of any Final
`Written Decision. Id. at 4–5. The joined proceedings shall continue based
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`on the record developed in IPR-727, including the declaration from
`Dr. Joseph E. Ford. As a joined proceeding, no declaration from Dr. Drabik
`filed in this case or in IPR-727 will be considered or relied upon as a part of
`any Final Written Decision.
`IV. CONCLUSION
`Based on the record before us, we institute an inter partes review in
`IPR2015-01961 and grant Petitioner’s Motion for Joinder with IPR2015-
`00727.
`
`V. ORDER
`
`Accordingly, it is
`ORDERED that inter partes review of U.S. Patent No. RE42,678 E is
`instituted in IPR2015-01961 with respect to the following grounds of
`unpatentability:
`(1) claims 1, 9, 10, 13, 17, 19, 44, 53, 61, 64, and 65 as obvious over
`Bouevitch and Carr under 35 U.S.C. § 103(a); and
`(2) claims 1–4, 19–23, 27, 29, 44–46, and 61–63 as obvious over
`Bouevitch and Sparks under 35 U.S.C. § 103(a);
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of U.S. Patent No. RE42,678 E is hereby instituted in
`IPR2015-01961, commencing on the entry date of this Order, and pursuant
`to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the
`institution of a trial;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2015-00727 is granted;
`FURTHER ORDERED that the instant proceeding is joined with
`IPR2015-00727;
`
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`FURTHER ORDERED that the grounds of unpatentability on which
`trial was instituted in IPR2015-00727 are unchanged, and trial will proceed
`on those grounds based on the record in IPR2015-00727;
`FURTHER ORDERED that the parties will file all papers in
`IPR2015-00727, and that IPR2015-01961 is hereby terminated under
`37 C.F.R. § 42.72;
`FURTHER ORDERED that the joined proceeding will follow the
`schedule effective in IPR2015-00727 as of the date of this Decision;
`FURTHER ORDERED that in IPR2015-00727, Fujitsu Network
`Communications, Inc., (“Fujitsu”), and Ciena Corporation, Coriant
`Operations, Inc., and Coriant (USA) Inc., (collectively, “Ciena”) will file
`papers, except for motions that do not involve the other party, as
`consolidated filings. Fujitsu will identify each such filing as a consolidated
`filing and will be responsible for completing all consolidated filings. Ciena
`may file an additional paper, not to exceed five pages, which may address
`only points of disagreement with contentions in Fujitsu’s consolidated filing.
`Any such filing by Ciena must identify specifically and explain each point of
`disagreement. Ciena may not file separate arguments in support of points
`made in Fujitsu’s consolidated filing;
`FURTHER ORDERED that, in addition to responding to any
`consolidated filing, Patent Owner may respond separately to any separate
`Ciena filing. Any such response by Patent Owner to a Ciena filing may not
`exceed the number of pages in the Ciena filing, and is limited to issues
`raised in the Ciena filing;
`FURTHER ORDERED that Fujitsu and Ciena will designate
`attorneys to conduct cross-examination of any witnesses produced by Patent
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`Owner and redirect any witnesses produced by Fujitsu and Ciena within the
`timeframe normally allotted by the rules to one party. Fujitsu and Ciena will
`not receive any separate cross-examination or redirect time. Fujitsu is
`permitted to ask questions before Ciena at depositions if it so choses;
`FURTHER ORDERED that Fujitsu is permitted to present argument
`before Ciena at any oral argument if it so chooses;
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the file of Case IPR2015-00727; and
`FURTHER ORDERED that the case caption in IPR2015-00727 shall
`be changed to reflect the joinder with this proceeding in accordance with the
`attached example.
`
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`IPR2015-01961
`Patent RE42,678 E
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`PETITIONER:
`
`Matthew J. Moore
`Robert Steinberg
`LATHAM & WATKINS LLP
`matthew.moore@lw.com
`Bob.Steinberg@lw.com
`
`Thomas K. Pratt
`J. Pieter van Es
`Jordan N. Bodner
`Michael Cuviello
`BANNER & WITCOFF, LTD.
`TPratt@bannerwitcoff.com
`PVanEs@bannerwitcoff.com
`JBodner@bannerwitcoff.com
`MCuviello@bannerwitcoff.com
`
`
`PATENT OWNER:
`
`Jason D. Eisenberg
`Robert Greene Sterne
`Jon E. Wright
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-PTAB@skgf.com
`rsterne-PTAB@skgf.com
`jwright-PTAB@skgf.com
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FUJITSU NETWORK COMMUNICATIONS, INC.,
`CORIANT OPERATIONS, INC., CORIANT (USA) INC.,
`CIENA CORPORATION,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-007271
`Patent RE42,678 E
`_______________
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`
`
`
`
`
`1 Case IPR2015-01961 has been joined with this proceeding.
`
`