DCT

4:10-cv-00080

QinetiQ Ltd v. Oclaro Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 4:10-cv-00080, N.D. Cal., 06/21/2010
  • Venue Allegations: Plaintiff alleges venue is proper based on Defendant having its principal place of business in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s optical components and multi-mode interference (MMI) devices infringe three patents related to optical beam splitting, recombination, and signal routing.
  • Technical Context: The technology concerns components for high-performance fiber optic communications networks, specifically devices that manipulate light signals within integrated optical circuits.
  • Key Procedural History: The complaint alleges that Defendant Oclaro had actual knowledge of the patents-in-suit since at least August 1, 2007, a date preceding the complaint by nearly three years. This allegation forms the basis for the willfulness claim. The complaint also notes that Oclaro is the successor to Bookham, Inc. following a 2009 merger.

Case Timeline

Date Event
1990-12-20 Priority Date for ’625, ’698, and ’354 Patents
1995-01-03 U.S. Patent No. 5,379,354 Issued
1995-04-25 U.S. Patent No. 5,410,625 Issued
1995-06-27 U.S. Patent No. 5,428,698 Issued
2007-08-01 Alleged date of Defendant's first knowledge of the patents
2009-04-27 Merger of Avanex Corp. into Bookham, Inc. (now Oclaro)
2010-06-21 First Amended Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 5,410,625, "Optical Device for Beam Splitting and Recombining", issued April 25, 1995

The Invention Explained

  • Problem Addressed: The patent describes a need for efficient, compact, and low-loss optical beamsplitters that are compatible with layered manufacturing techniques, such as semiconductor lithography, for use in integrated optical systems (ʼ625 Patent, col. 1:11-17, 2:26-31).
  • The Patented Solution: The invention proposes a device where a "first coupling waveguide" operating in its fundamental mode provides an in-phase, symmetric input to a central, wider "multimode waveguide." This specific input is designed to excite only the symmetric modes within the multimode section ('625 Patent, col. 4:8-12). Through a phenomenon called modal dispersion, the superposition of these symmetric modes evolves along the length of the waveguide, causing the single input beam to naturally re-form into two or more distinct, in-phase beams at the output, which are then captured by "second coupling waveguides" ('625 Patent, Abstract; Fig. 1).
  • Technical Importance: By restricting excitation to symmetric modes, the device purports to achieve more efficient and compact beam splitting compared to prior art, enabling a length reduction of a factor of four over certain earlier designs ('625 Patent, col. 4:30-34).

Key Claims at a Glance

The complaint does not specify which claims are asserted. Independent claim 1 is representative and includes the following essential elements:

  • An optical device including a multimode waveguide with a transverse cross-section.
  • A first coupling waveguide, operating in a fundamental mode, connected centrally to the multimode waveguide.
  • At least two second coupling waveguides connected to the multimode waveguide with port centers spaced apart across the cross-section.
  • The waveguides are configured such that an in-phase, symmetric fundamental mode from the first waveguide excites only symmetric modes of the multimode waveguide.
  • These excited modes, through modal dispersion, excite the fundamental mode of each second coupling waveguide.

The complaint implicitly reserves the right to assert other claims.

U.S. Patent No. 5,428,698, "Signal Routing Device", issued June 27, 1995

The Invention Explained

  • Problem Addressed: The patent identifies a need for efficient and compact optical switches for routing signals, noting that prior art devices like phased arrays suffered from radiation loss and that optical gate matrix switches were complex and incurred high optical loss (ʼ698 Patent, col. 1:11-15, 1:30-35).
  • The Patented Solution: The invention describes a signal router architecture. A "beamsplitter" multimode waveguide receives an input signal and, via modal dispersion, divides it among a set of parallel "relay waveguides." Each relay waveguide contains an electro-optic phase shifter ('698 Patent, Abstract; Fig. 1). By applying a specific set of phase shifts to the signals in the relay waveguides, the signals are then fed into a "recombiner" multimode waveguide where they interfere and recombine into a single beam directed to a selected output waveguide ('698 Patent, col. 2:40-56).
  • Technical Importance: The device provides a compact framework for an optical switch, using modal dispersion for splitting and combining, and phase control for selectable routing, potentially improving on the efficiency and complexity of prior art switches ('698 Patent, col. 2:60-65).

Key Claims at a Glance

The complaint does not specify which claims are asserted. Independent claim 1 is representative and includes the following essential elements:

  • A signal routing device for selectably routing a signal to at least one of a set of outputs.
  • At least one subsidiary waveguide for propagating a fundamental mode to excite modes within a multimode waveguide.
  • A set of relay waveguides for propagating a fundamental mode.
  • A multimode waveguide, optically coupled to the subsidiary and relay waveguides, that modally disperses radiation to the relay waveguides.
  • Phase shifting means for varying the phase of radiation within the relay waveguides.
  • Radiation redirecting means (e.g., a recombiner waveguide) for selectably routing the phase-shifted radiation to an output.

The complaint implicitly reserves the right to assert other claims.

Multi-Patent Capsule: U.S. Patent No. 5,379,354, "Intensity Dividing Multimode Wave Guide Device for Producing Intensity Distribution Maxima", issued January 3, 1995

  • Technology Synopsis: This patent describes a device for splitting a single input beam into multiple output beams of differing intensities ('354 Patent, Abstract). Unlike the '625 patent, this is achieved by launching the input radiation from an offset input port into the multimode waveguide, which intentionally excites both symmetric and antisymmetric modes ('354 Patent, col. 2:43-49). The interference between this mixed set of modes produces an asymmetric intensity distribution at the output, allowing for the creation of multiple beams with a range of different power levels ('354 Patent, col. 8:46-49).
  • Asserted Claims: The complaint does not specify asserted claims. Independent claims 1 and 4 are representative.
  • Accused Features: The complaint accuses the "LMC10ZEG," "LMC10NEG," and "LMC10NEJ" optical components and modules of infringing this patent (Compl. ¶24).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are Oclaro’s "LMC10ZEG," "LMC10NEG," and "LMC10NEJ" products, which are described as "optical components and modules" and "multi-mode interference (MMI) devices" (Compl. ¶¶ 2, 8, 16, 24).
  • Functionality and Market Context: The complaint alleges these products are used in high-performance fiber optics communications networks to "generate, detect, amplify, combine and separate light signals" (Compl. ¶3). The complaint alleges the optical chips are manufactured in the United Kingdom and assembled into modules in China for sale to major network equipment providers, including Cisco, Ciena, and Alcatel-Lucent, suggesting significant commercial use in the telecommunications sector (Compl. ¶8). The complaint does not provide further technical detail on the specific operation of the accused products.

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint makes only general allegations of infringement and does not contain claim charts or a detailed explanation of its infringement theories. It states, for example, that the accused products "are covered by one or more claims of the ’625 patent" without mapping specific product features to claim elements (Compl. ¶8). Therefore, a detailed claim chart analysis based on the complaint is not possible. The analysis below identifies key questions based on the patent claims and the general nature of the accused MMI devices.

  • '625 Patent Infringement Allegations

    • Identified Points of Contention:
      • Scope Questions: A central issue will be whether the accused MMI devices meet the claim 1 requirement to "excite only symmetric modes" of the multimode waveguide. The patent distinguishes itself by this limitation. The case may turn on whether Oclaro's devices operate by intentionally excluding antisymmetric modes or if they leverage both mode types, which could suggest a design-around or non-infringement.
      • Technical Questions: What evidence will show that the accused products feature the distinct "first coupling waveguide," "multimode waveguide," and "at least two second coupling waveguides" as structurally and functionally claimed? The physical architecture and porting arrangement of the Oclaro chips will be a primary area of factual dispute.

  • '698 Patent Infringement Allegations

    • Identified Points of Contention:
      • Scope Questions: Does the term "signal routing device for selectably routing a signal" read on the accused products? Infringement will depend on whether the Oclaro devices are merely static splitters or if they incorporate an active, controllable mechanism, such as the claimed "phase shifting means," that allows the path of a signal to be chosen or changed.
      • Technical Questions: Can Plaintiff prove that the accused products contain the claimed architecture of a beamsplitter, relay waveguides with phase shifters, and a recombiner? Evidence of a mechanism for applying variable phase shifts to actively redirect signals, rather than just passively splitting them, will be critical to proving infringement of the '698 patent.

V. Key Claim Terms for Construction

  • Term from '625 Patent: "excite only symmetric modes"

    • Context and Importance: This limitation is the technological core of the '625 patent, distinguishing it from prior art and the related '354 patent that use both symmetric and antisymmetric modes. The entire infringement theory for the '625 patent rests on whether the accused devices operate under this constraint.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party could argue that "only" should be interpreted as "substantially only," and that negligible or unintentional excitation of other modes does not escape infringement. The specification notes that in a related device, "Very little of the laser radiation appears in higher order modes" ('354 Patent, col. 8:9-11), suggesting an allowance for minor imperfections.
      • Evidence for a Narrower Interpretation: A party could argue "only" carries its plain and ordinary meaning of "exclusively." The patent explicitly states that with its coaxial, fundamental mode input, "Anti-symmetric modes ... are not excited" ('625 Patent, col. 7:17-19), and the advantage of a more compact device is directly attributed to this restriction ('625 Patent, col. 4:30-34).

  • Term from '698 Patent: "selectably routing"

    • Context and Importance: This term defines the primary function of the claimed device. Its construction will determine whether the patent covers static optical splitters or is limited to active, configurable optical switches. Practitioners may focus on this term because it distinguishes a simple component from a more complex, controllable system.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: A party might argue that any device that directs a signal to a predetermined output performs "routing," and the "selectable" nature could be argued to be inherent in the design choice, even if not dynamically changeable in the final product.
      • Evidence for a Narrower Interpretation: The patent’s abstract and detailed description link the routing function directly to the use of controllable "phase shifters" to direct the output ('698 Patent, Abstract; col. 2:50-56). This suggests that "selectably" implies an active, controlled choice, not a fixed, passive distribution of a signal.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Oclaro actively induced and contributed to the infringement of all three patents by others (Compl. ¶¶ 9, 17, 25). However, it provides no specific factual basis, such as referencing user manuals or instructions provided to customers, to support these claims.
  • Willful Infringement: The complaint alleges that Oclaro's infringement has been "willful, wanton, and deliberate" for all three asserted patents. This allegation is based on the claim that Oclaro had "actual knowledge of QinetiQ's patent rights" since "at least as early as August 1, 2007," which is a date of alleged pre-suit knowledge (Compl. ¶¶ 10-11, 18-19, 26-27).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central technical question will be one of mode excitation: do the accused Oclaro MMI devices operate by exciting only the symmetric modes of a multimode region, as required by the '625 patent, or do they rely on the interaction of both symmetric and antisymmetric modes, potentially aligning them with the technology of the '354 patent or placing them outside the scope of the '625 patent entirely?
  • A core issue will be one of functional scope: can the accused products, described as optical components that "combine and separate light signals," be proven to perform the "selectable routing" claimed by the '698 patent? This will likely require evidence that the devices incorporate a controllable mechanism, like phase shifters, to actively direct a signal to a chosen output, as opposed to being static splitters that lack this dynamic capability.
  • An overarching evidentiary question will be one of proof: given the complaint's conclusory allegations, a key challenge for the plaintiff will be to develop sufficient factual evidence through discovery to demonstrate how the accused devices meet the nuanced technical requirements of the claims, such as the specific mode excitation and selectable routing functionalities.