Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 42
`Entered: March 10, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`CORIANT OPERATIONS, INC., CORIANT (USA) INC.,
`CIENA CORPORATION, CISCO SYSTEMS, INC., and
`FUJITSU NETWORK COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01969
`Patent RE42,368 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)
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 42
`Entered: March 10, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`CORIANT OPERATIONS, INC., CORIANT (USA) INC.,
`CIENA CORPORATION, CISCO SYSTEMS, INC., and
`FUJITSU NETWORK COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01969
`Patent RE42,368 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)
`
`
`
`
`
`
`
`
`IPR2015-01969
`Patent RE42,368 E
`
`
`I. INTRODUCTION
`Petitioner, Coriant Operations, Inc., Coriant (USA) Inc., Ciena
`Corporation, Cisco Systems, Inc., and Fujitsu Network Communications,
`Inc., filed a Petition requesting an inter partes review of claims 1–6, 9–13,
`and 15–22 of U.S. Patent No. RE42,368 E (“the ’368 patent”). Paper 6
`(“Pet.”). 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 JDS Uniphase Corporation v. Capella Photonics, Inc., Case
`IPR2015-00731 (“IPR-731”). Paper 7 (“Motion” or “Mot.”). In IPR-731,
`inter partes review of the ’368 patent was instituted on August 25, 2015, on
`the same grounds asserted against the same claims challenged in this
`proceeding. See IPR-731, Paper 8.
`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-731, Lumentum
`Holdings, Inc., Lumentum, Inc., and Lumentum Operations LLC,
`(collectively, “Lumentum,” formerly JDS Uniphase Corporation), does not
`oppose the Motion. Mot. 3.
`For the reasons described below, we institute an inter partes review of
`claims 1–6, 9–13, and 15–22 of the ’368 patent and grant Petitioner’s
`Motion for Joinder.
`
`II. INSTITUTION OF INTER PARTES REVIEW
`The ’368 patent (Ex. 1001)
`A.
`The ’368 patent, titled “Reconfigurable Optical Add-Drop
`Multiplexers with Servo Control and Dynamic Spectral Power Management
`
` 2
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`IPR2015-01969
`Patent RE42,368 E
`
`Capabilities,” reissued May 17, 2011, from U.S. Patent No. 6,879,750 (“the
`’750 patent”). Ex. 1001. The ’750 patent issued April 12, 2005, from U.S.
`Patent Application No. 10/745,364, filed December 22, 2003. Petitioner
`contends the earliest facial priority date for the ’368 patent is a provisional
`application filed on March 19, 2001. Pet. 19.
`According to the ’368 patent, “fiber-optic communications networks
`commonly employ wavelength division multiplexing (WDM), for it allows
`multiple information (or data) channels to be simultaneously transmitted on
`a single optical fiber by using different wavelengths and thereby
`significantly enhances the information bandwidth of the fiber.” Ex. 1001,
`1:37–42. An optical add-drop multiplexer (OADM) is used both to remove
`wavelengths selectively from a multiplicity of wavelengths on an optical
`fiber (taking away one or more data channels from the traffic stream on the
`fiber), and to add wavelengths back onto the fiber (inserting new data
`channels in the same stream of traffic). Id. at 1:45–51.
`The ’368 patent describes a “wavelength-separating-routing (WSR)
`apparatus that uses a diffraction grating to separate a multi-wavelength
`optical signal by wavelength into multiple spectral channels, which are then
`focused onto an array of corresponding channel micromirrors.” Id. at
`Abstract. “The channel micromirrors are individually controllable and
`continuously pivotable to reflect the spectral channels into selected output
`ports.” Id. According to Petitioner, the small, tilting mirrors are sometimes
`called Micro ElectroMechanical Systems or “MEMS.” Pet. 9.
`The WSR described in the ’368 patent may be used to construct
`dynamically reconfigurable OADMs for WDM optical networking
`applications. Ex. 1001, Abstract.
`
` 3
`
`
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`IPR2015-01969
`Patent RE42,368 E
`
`
`Figure 1A of the ’368 patent is reproduced below.
`
`
`Figure 1A depicts wavelength-separating-routing (WSR) apparatus
`100, in accordance with the ’368 patent. WSR apparatus 100 is comprised
`of an array of fiber collimators 110 (multiple input/output ports, including
`input port 110-1 and output ports 110-2 through 110-N), diffraction grating
`101 (a wavelength separator), quarter wave plate 104, focusing lens 102 (a
`beam-focuser), and array of channel micromirrors 103. Ex. 1001, 6:57–63,
`7:55–56.
`
`A multi-wavelength optical signal emerges from input port 110-1 and
`is separated into multiple spectral channels by diffraction grating 101, which
`are then focused by focusing lens 102 into a spatial array of distinct spectral
`spots (not shown). Id. at 6:64–7:2. Channel micromirrors 103 are
`positioned such that each channel micromirror receives one of the spectral
`channels. Id. at 7:2–5.
`
` 4
`
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`IPR2015-01969
`Patent RE42,368 E
`
`
`Figure 1B of the ’368 patent is reproduced below.
`
`
`Figure 1B depicts a close-up view of the array of channel
`micromirrors 103 shown above in Figure 1A. Ex. 1001, 8:6–7. The channel
`micromirrors “are individually controllable and movable, e.g., pivotable (or
`rotatable) under analog (or continuous) control, such that, upon reflection,
`the spectral channels are directed” into selected output ports by way of
`focusing lens 102 and diffraction grating 101. Id. at 7:6–11. According to
`the ’368 patent:
`each micromirror may be pivoted about one or two axes. What
`is important is that the pivoting (or rotational) motion of each
`channel micromirror be individually controllable in an analog
`manner, whereby the pivoting angle can be continuously
`adjusted so as to enable the channel micromirror to scan a
`spectral channel across all possible output ports.
`
`Id. at 9:8–14.
`
`
`
` 5
`
`
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`IPR2015-01969
`Patent RE42,368 E
`
`
`Figure 3 of the ’368 patent is reproduced below.
`
`
`Similar to Figure 1A, above, Figure 3 also shows a WSR apparatus as
`described by the ’368 patent. Ex. 1001, 10:25–26. In this embodiment, two
`dimensional array of fiber collimators 350 provides an input port and
`plurality of output ports. Id. at 10:31–32. First and second two-dimensional
`arrays of imaging lenses 360, 370 are placed in a telecentric arrangement
`between two-dimensional collimator-alignment mirror array 320 and two-
`dimensional fiber collimator array 350. Id. at 10:37–43. “The channel
`micromirrors 103 must be pivotable biaxially in this case (in order to direct
`its corresponding spectral channel to any one of the output ports).” Id. at
`10:43–46.
`The WSR may also incorporate a servo-control assembly (together
`termed a “WSR-S apparatus.”) Id. at 4:65–67. According to the ’368
`patent:
`The servo-control assembly serves to monitor the power levels
`of the spectral channels coupled into the output ports and further
`provide control of the channel micromirrors on an individual
`basis, so as to maintain a predetermined coupling efficiency of
`each spectral channel in one of the output ports. As such, the
`
` 6
`
`
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`
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`
`
`IPR2015-01969
`Patent RE42,368 E
`
`
`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.
`
`Ex. 1001, at 4:47–56.
`Figure 5 of the ’368 patent is reproduced below.
`
`
`Figure 5 depicts OADM 500 in accordance with the ’368 patent
`comprised of WSR-S (or WSR) apparatus 510 and optical combiner 550.
`Ex. 1001, 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 existing port 570, providing an output multi-wavelength optical
`signal. Id. at 12:56–58.
`
` 7
`
`
`
`
`
`
`
`IPR2015-01969
`Patent RE42,368 E
`
`
`Illustrative Claims
`B.
`Claims 1, 15, 16, and 17 of the ’368 patent are independent. Claims
`2–6 and 9–13 ultimately depend from claim 1 and claims 18–22 ultimately
`depend from claim 17. Claims 1 and 17 of the ’368 patent are illustrative of
`the claims at issue:
`1. An optical add-drop apparatus comprising
`an input port for an input multi-wavelength optical signal
`having first spectral channels;
`one or more other ports for second spectral channels; an
`output port for an output multi-wavelength optical signal;
`a wavelength-selective device for spatially separating said
`spectral channels; [and]
`a spatial array of beam-deflecting elements positioned such
`that each element receives a corresponding one of said
`spectral channels, each of said elements being individually
`and continuously controllable in two dimensions to reflect
`its corresponding spectral channel to a selected one of said
`ports and to control the power of the spectral channel
`reflected to said selected port.
`Ex. 1001, 14:6–20.
`
`
`17. A method of performing dynamic add and drop in a
`WDM optical network, comprising
`separating an input multi-wavelength optical signal into
`spectral channels;
`imaging each of said spectral channels onto a corresponding
`beam-deflecting element; and
`controlling dynamically and continuously said beam-
`deflecting elements in two dimensions so as to combine
`selected ones of said spectral channels into an output
`multi-wavelength optical signal and to control the power
`of the spectral channels combined into said output multi-
`wavelength optical signal.
`Id. at 16:3–14.
`
` 8
`
`
`
`
`
`
`
`IPR2015-01969
`Patent RE42,368 E
`
`
`Related Proceedings
`C.
`According to the parties, the ’368 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.
`5:14-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. 2; Paper 10, 2–3.
`In addition to IPR-731, the ’368 patent is also the subject of the
`following inter partes review proceedings: Cisco Systems, Inc. v. Capella
`Photonics, Inc., IPR2014-01166 (to which Ciena Corporation, Coriant
`Operations, Inc., Coriant (USA) Inc., and Fujitsu Network Communications,
`Inc. v. Capella Photonics, Inc., IPR2015-00816 was joined), and Fujitsu
`Network Communications, Inc. v. Capella Photonics, Inc., IPR2015-00726.
`The ’368 patent is also the subject of a petition for inter partes review in
`Ciena Corporation, Coriant Operations, Inc., and Coriant (USA) Inc., v.
`Capella Photonics, Inc., IPR2015-01958. On January 28, 2016, a Final
`Written Decision in IPR2014-01166 held claims 1–6, 9–13, and 15–22 of the
`’368 patent unpatentable.
`
` 9
`
`
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`IPR2015-01969
`Patent RE42,368 E
`
`
`Asserted Grounds of Unpatentability
`D.
`Petitioner asserts the following grounds, mirroring those instituted in
`IPR-731. See Pet. 6; see also IPR-731, Paper 8.
`Basis
`References
`Bouevitch,1 Sparks,2 and Lin3
`§ 103
`
`Claims Challenged
`1–6, 9–11, 13, and 15–22
`
`Bouevitch, Sparks, Lin, and Dueck4 § 103
`
`12
`
`Analysis
`E.
`Petitioner sets forth how it contends claims 1–6, 9–11, 13, and 15–22
`
`would have been obvious over Bouevitch, Sparks, and Lin, as well as how
`claim 12 would have been obvious over the same references and Dueck.
`Pet. 19–60. Petitioner submits arguments and evidence which mirrors what
`was submitted in IPR-731, including the same claim construction and
`rationale of unpatentability. See Ex. 1037 (comparing the Petition to the
`petition filed as paper 1 in IPR-731). In support of the Petition, Petitioner
`relies on the same declaration of Sheldon McLaughlin filed in IPR-731.
`Ex. 1028.
`In IPR-731, we determined that Lumentum demonstrated a reasonable
`likelihood of prevailing in establishing the unpatentability of claims 1–6, 9–
`
`
`1 U.S. Patent No. 6,498,872 B2, issued December 24, 2002 (Ex. 1003,
`“Bouevitch”).
`2 U.S. Patent No. 6,625,340 B1, issued September 23, 2003 (Ex. 1004,
`“Sparks”). Petitioner contends Sparks is 102(e) prior art as of its filing date
`of December 29, 1999. Pet. 20.
`3 U.S. Patent No. 5,661,591, issued August 26, 1997 (Ex. 1010, “Lin”).
`4 U.S. Patent No. 6,011,884, issued January 4, 2000 (Ex. 1021, “Dueck”).
`
`10
`
`
`
`
`
`IPR2015-01969
`Patent RE42,368 E
`
`11, 13, and 15–22 of the ’368 patent. IPR-731, Paper 8. We granted the
`petition in IPR-731 and instituted inter partes review of claims 1–6, 9–11,
`13, and 15–22 as unpatentable under 35 U.S.C. § 103(a) as obvious over
`Bouevitch, Sparks, and Lin, as well as claim 12 over Bouevitch, Sparks, Lin,
`and Dueck. Id. at 22.
`We have reviewed the Petition in this matter and the evidence cited
`therein. Petitioner states, and Patent Owner has not disputed, that the
`grounds asserted in this Petition are substantively identical to the grounds of
`unpatentability instituted in IPR-731, and that those grounds are supported
`by the same McLaughlin Declaration submitted in IPR-731. Pet. 6–7.
`Accordingly, in view of the identity of the challenges to the ’368
`patent in this Petition and in the petition in IPR-731, we incorporate our
`previous analysis from our institution decision in IPR-731, 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 1–6, 9–13, and 15–22 of the ’368 patent.
`
`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
`
`
`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
`
`11
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`IPR2015-01969
`Patent RE42,368 E
`
`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. See 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).
`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 25, 2015. Paper 8, 1. This
`date is within one month after the date of institution in IPR-731, which was
`instituted on August 25, 2015. The Petition, therefore, is timely.
`Petitioner states that that the Petition copies the petition in IPR-731
`for “simplicity and efficiency,” and “presents no new substantive issues
`relative to [IPR-731] and does not seek to broaden the scope of [IPR-731] or
`request additional discovery.” Mot. 5–6. Petitioner further states that “the
`current schedule in [IPR-731] can stay unchanged,” and further agrees that
`Lumentum’s counsel will act as lead counsel as long as Lumentum remains
`in the proceeding. Id.
`
`
`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.
`
`12
`
`
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`
`
`IPR2015-01969
`Patent RE42,368 E
`
`
`IV. CONCLUSION
`Based on the record before us, we institute an inter partes review in
`IPR2015-01969 and grant Petitioner’s motion to join this case to IPR2015-
`00731.
`
`V. ORDER
`
`Accordingly, it is
`ORDERED that inter partes review of U.S. Patent No. RE42,368 E is
`instituted in IPR2015-01969 with respect to the following grounds of
`unpatentability:
`(1) claims 1–6, 9–11, 13, and 15–22 as obvious over Bouevitch,
`Sparks, and Lin under 35 U.S.C. § 103(a); and
`(2) claim 12 as obvious over Bouevitch, Sparks, Lin, and Dueck 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. RE42,368 E is hereby instituted in
`IPR2015-01969, 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
`IPR2015-00731 is granted;
`FURTHER ORDERED that the instant proceeding is joined with
`IPR2015-00731;
`FURTHER ORDERED that the grounds of unpatentability on which
`trial was instituted in IPR2015-00731 are unchanged, and trial will proceed
`on those grounds based on the record in IPR2015-00731;
`FURTHER ORDERED that the parties will file all papers in
`
`13
`
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`
`
`IPR2015-01969
`Patent RE42,368 E
`
`IPR2015-00731, and that IPR2015-01969 is hereby terminated under
`37 C.F.R. § 42.72;
`FURTHER ORDERED that the joined proceeding will follow the
`schedule effective in IPR2015-00731 as of the date of this Decision;
`FURTHER ORDERED that in IPR2015-00731, Lumentum Holdings,
`Inc., Lumentum, Inc., and Lumentum Operations LLC, (collectively,
`“Lumentum”), and Coriant Operations, Inc., Coriant (USA) Inc., Ciena
`Corporation, Cisco Systems, Inc., and Fujitsu Network Communications,
`Inc. (collectively “Coriant”) will file papers, except for motions that do not
`involve the other party, as consolidated filings. Lumentum will identify
`each such filing as a consolidated filing and will be responsible for
`completing all consolidated filings. Coriant may file an additional paper, not
`to exceed five pages, which may address only points of disagreement with
`contentions in Lumentum’s consolidated filing. Any such filing by Coriant
`must identify specifically and explain each point of disagreement. Coriant
`may not file separate arguments in support of points made in Lumentum’s
`consolidated filing;
`FURTHER ORDERED that, in addition to responding to any
`consolidated filing, Patent Owner may respond separately to any separate
`Coriant filing. Any such response by Patent Owner to a Coriant filing may
`not exceed the number of pages in the Coriant filing, and is limited to issues
`raised in the Coriant filing;
`FURTHER ORDERED that Lumentum and Coriant will designate
`attorneys to conduct cross-examination of any witnesses produced by Patent
`Owner and redirect any witnesses produced by Lumentum and Coriant
`within the timeframe normally allotted by the rules to one party. Lumentum
`
`14
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`IPR2015-01969
`Patent RE42,368 E
`
`and Coriant will not receive any separate cross-examination or redirect time.
`Lumentum is permitted to ask questions before Coriant at depositions if it so
`choses;
`FURTHER ORDERED that Lumentum is permitted to present
`argument before Coriant at any oral argument if it so chooses;
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the file of Case IPR2015-00731; and
`FURTHER ORDERED that the case caption in IPR2015-00731 shall
`be changed to reflect the joinder with this proceeding in accordance with the
`attached example.
`
`
`
`PETITIONER:
`
`J. Pieter van Es
`Thomas K. Pratt
`Jordan N. Bodner
`Michael S. Cuviello
`Banner & Witcoff.com
`pvanes@bannerwitchoff.com
`tpratt@bannerwitchoff.com
`jbodner@bannerwitchoff.com
`mcuviello@bannerwitchoff.com
`
`Matthew J. Moore
`Robert Steinberg
`Latham & Watkins LLP
`matthew.moore@lw.com
`bob.steinberg@lw.com
`
`
`
`15
`
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`
`IPR2015-01969
`Patent RE42,368 E
`
`Wayne O. Stacy
`Cooley LLP
`wstacy@cooley.com
`
`Christopher Chalsen
`Lawrence J. Kass
`Nathaniel Browand
`Suraj Balusu
`Milbank, Tweed & McCloy LLP
`cchalsen@milbank.com
`lkass@milbank.com
`nbrowand@milbank.com
`sbalusu@milbank.com
`
`PATENT OWNER:
`
`Jason D. Eisenberg
`Robert Green Sterne
`Jon E. Wright
`Jonathan Tuminaro
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`jason-PTAB@skgf.com
`rsterne-PTAB@skgf.com
`jwright-PTAB@skgf.com
`jtuminar-PTAB@skgf.com
`
`
`
`
`16
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`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`LUMENTUM HOLDINGS, INC., LUMENTUM, INC.,
`LUMENTUM OPERATIONS LLC, CORIANT OPERATIONS, INC.,
`CORIANT (USA) INC., CIENA CORPORATION,
`CISCO SYSTEMS, INC., and
`FUJITSU NETWORK COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CAPELLA PHOTONICS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-007311
`Patent RE42,368 E
`_______________
`
`
`
`Before JOSIAH C. COCKS, KALYAN K. DESHPANDE, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`
`
`
`
`1 Case IPR2015-01969 has been joined with this proceeding.
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