DCT
1:20-cv-00702
Capella Photonics Inc v. Ciena Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Capella Photonics, Inc. (Delaware)
- Defendant: Ciena Corp (Delaware)
- Plaintiff’s Counsel: Manatt, Phelps & Phillips, LLP
- Case Identification: 1:20-cv-00702, D. Md., 03/17/2020
- Venue Allegations: Venue is based on Defendant Ciena having a regular and established principal place of business in the district and allegedly committing acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s Dense Wavelength Division Multiplexing (DWDM) optical transport platforms infringe two recently reissued patents related to reconfigurable optical add-drop multiplexers (ROADMs).
- Technical Context: The technology concerns components for fiber-optic networks that can dynamically route, add, or drop individual wavelengths of light (data channels) on an all-optical basis, a critical function for modern telecommunications and data networks.
- Key Procedural History: The complaint alleges a long history between the parties, including a 2014 lawsuit filed by Capella against Ciena for infringement of the predecessor patents to those now in suit. The complaint states Ciena participated in post-grant proceedings for those predecessor patents and was aware of the reissue proceedings that resulted in the asserted '905 and '906 patents.
Case Timeline
| Date | Event |
|---|---|
| 2001-03-19 | Priority Date for '905 and '906 Patents |
| 2014-01-01 | Prior litigation filed against Ciena on predecessor patents |
| 2020-03-17 | U.S. Patent RE47,905 E Issues |
| 2020-03-17 | U.S. Patent RE47,906 E Issues |
| 2020-03-17 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Reissue Patent No. RE 47,905 E - "Reconfigurable Optical Add-Drop Multiplexers with Servo Control and Dynamic Spectral Power Management Capabilities"
- Issued: March 17, 2020
The Invention Explained
- Problem Addressed: The patent describes prior art Optical Add-Drop Multiplexers (OADMs) as being static, costly, and inefficient. These earlier systems were difficult to reconfigure dynamically, suffered from significant optical signal loss, and required complex arrangements of components that were susceptible to misalignment from environmental effects like temperature changes. (’905 Patent, col. 3:36-55).
- The Patented Solution: The invention discloses a Wavelength-Separating-Routing (WSR) apparatus that uses free-space optics to manage optical signals. A multi-wavelength signal enters the device and is separated into its constituent spectral channels by a wavelength-separator, such as a diffraction grating. These separated channels are then focused onto a corresponding array of channel micromirrors. Each micromirror can be individually and continuously pivoted to reflect its specific light channel to any one of a plurality of output ports, enabling dynamic, channel-by-channel routing. (’905 Patent, Abstract; col. 4:1-27). A servo-control system can be used to monitor output power and actively adjust the mirrors to maintain optimal alignment and signal strength. (’905 Patent, col. 4:57-67).
- Technical Importance: This architecture allowed for flexible, software-controlled management of optical network traffic without requiring the signal to be converted from optical to electrical and back, which was a slow and expensive process in prior systems. (Compl. ¶¶ 14-15).
Key Claims at a Glance
- The complaint asserts independent claim 23. (Compl. ¶ 39).
- Essential elements of claim 23 include:
- An optical add-drop apparatus with fiber collimator input, output, and other ports.
- A wavelength-selective device for spatially separating spectral channels.
- A spatial array of beam-deflecting elements, each receiving a corresponding spectral channel.
- Each element is "individually and continuously controllable in two dimensions."
- This control allows each element to reflect its spectral channel to a selected port and to control the power of that reflected channel.
- The complaint reserves the right to assert other patent claims. (Compl. ¶ 48).
U.S. Reissue Patent No. RE 47,906 E - "Reconfigurable Optical Add-Drop Multiplexers with Servo Control and Dynamic Spectral Power Management Capabilities"
- Issued: March 17, 2020
The Invention Explained
- Problem Addressed: This patent shares a specification with the ’905 Patent and addresses the same technical problems: the high cost, signal loss, and static nature of conventional OADMs used in wavelength division multiplexing (WDM) networks. (’906 Patent, col. 3:40-59).
- The Patented Solution: The solution is substantively identical to that of the ’905 patent, describing a WSR apparatus that uses a wavelength-separator (e.g., diffraction grating), a beam-focuser, and an array of micromirrors to route optical channels. The key innovation is the use of individually controllable micromirrors to direct specific wavelengths to desired output ports dynamically. (’906 Patent, Abstract; col. 4:10-24).
- Technical Importance: This approach provided a scalable and robust method for all-optical switching, which was a significant advance for building more flexible and cost-effective fiber-optic networks. (Compl. ¶¶ 14-15).
Key Claims at a Glance
- The complaint asserts independent claim 68. (Compl. ¶ 68).
- Essential elements of claim 68 include:
- A wavelength-separating-routing apparatus with multiple fiber collimators serving as input and output ports.
- A wavelength-separator for separating the multi-wavelength signal.
- A beam-focuser for focusing the separated channels into spectral spots.
- A spatial array of channel micromirrors, where each micromirror receives one spectral channel.
- The channel micromirrors are "pivotal about two axes and being individually and continuously controllable."
- This control allows the micromirrors to reflect channels to selected output ports and to control the power of those channels.
- The complaint reserves the right to assert other patent claims. (Compl. ¶ 77).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Ciena’s Common Photonic Layer (CPL) DWDM transport platform, the 4200 Advanced Services Platform, the 6500 Packet-Optical Platform, and related modules. (Compl. ¶¶ 30, 41, 70).
Functionality and Market Context
- The accused products are modular platforms used in metro, regional, and long-haul optical networks. (Compl. ¶¶ 41, 70). Their ROADM functionality is allegedly delivered by Wavelength Selective Switch (WSS) modules, which enable "dynamic ‘on the fly’ optical branching to multiple different optical paths" and the adding/dropping of individual wavelengths. (Compl. ¶¶ 42, 71). The complaint alleges that these WSS modules utilize an array of channel micromirrors to perform the optical switching. (Compl. ¶¶ 44-45, 73-74). Ciena is alleged to be a "dominant" player in the optical transport platform market. (Compl. ¶ 29).
IV. Analysis of Infringement Allegations
RE47,905 E Infringement Allegations
| Claim Element (from Independent Claim 23) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an optical add-drop apparatus comprising: an output port and fiber collimators serving as an input port and one or more other ports... | Ciena’s CPL is an optical add-drop apparatus, and its ROADM includes multiple in/out ports, each comprising a fiber collimator. | ¶41-42 | col. 4:1-3 |
| a wavelength-selective device for spatially separating said spectral channels; | The accused WSS includes a wavelength selective device that separates a multi-wavelength signal into multiple spectral channels. | ¶43 | col. 4:1-3 |
| a spatial array of beam-deflecting elements positioned such that each element receives a corresponding one of said spectral channels... | The accused WSS modules allegedly include a spatial array of beam-deflecting elements, described as a micromirror array. A diagram in the complaint, sourced from Ciena's materials, depicts this arrangement. | ¶44, ¶47 | col. 4:3-4 |
| ...each of said elements being individually and continuously controllable in two dimensions to reflect its corresponding spectral channel to a selected one of said output port or the fiber collimator ports... | The micromirror array allegedly enables dynamic "on the fly" optical branching to multiple different optical paths/output ports. | ¶45 | col. 4:11-15 |
| ...and to control the power of the spectral channel reflected to said output port or the fiber collimator selected port. | The elements are allegedly controllable to control the power of the reflected spectral channel, and the accused platform's software performs optical output power optimization. | ¶44, ¶46 | col. 4:20-27 |
- Identified Points of Contention:
- Technical Questions: A primary factual question will be whether Ciena's WSS modules actually contain a "spatial array of beam-deflecting elements" that operate as claimed. The complaint alleges the use of micromirrors (Compl. ¶45), but alternative technologies like Liquid Crystal on Silicon (LCoS) can also perform beam steering. The case may turn on evidence of the specific components inside the accused products.
- Scope Questions: Claim 23 requires the elements to be "controllable in two dimensions." The court will have to determine what technical capability this requires and whether the accused products meet that standard. The evidence presented regarding the operation of the accused WSS will be critical to resolving this question.
RE47,906 E Infringement Allegations
| Claim Element (from Independent Claim 68) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a wavelength-separating-routing apparatus, comprising: a) multiple fiber collimators, providing and serving as an input port for a multi-wavelength optical signal and a plurality of output ports; | The accused CPL platform uses a flexible ROADM architecture with multiple in/out ports, each comprising a fiber collimator serving as input and output ports. | ¶70-71 | col. 4:10-13 |
| b) a wavelength-separator, for separating said multi-wavelength optical signal... | The WSS includes a wavelength selective device that separates the signal into multiple wavelengths for optical branching. | ¶72 | col. 4:13-15 |
| c) a beam-focuser, for focusing said spectral channels into corresponding spectral spots; | This functionality is inherent in the alleged operation where separated channels are directed to specific micromirrors. The complaint’s provided diagram shows focused light paths. | ¶76 | col. 4:15-17 |
| d) a spatial array of channel micromirrors positioned such that each channel micromirror receives one of said spectral channels... | The accused WSS modules allegedly include a spatial array of channel micromirrors. | ¶73 | col. 4:17-19 |
| ...said channel micromirrors being pivotal about two axes and being individually and continuously controllable... | The complaint alleges the elements are controllable in two dimensions to reflect the spectral channels. | ¶73 | col. 4:41-44 |
| ...to reflect corresponding received spectral channels into any selected ones of said fiber collimator output ports and to control the power of said received spectral channels... | The WSS channel micromirror array allegedly enables dynamic branching to multiple output ports and facilitates control over the signal power. | ¶74-75 | col. 4:19-24 |
- Identified Points of Contention:
- Technical Questions: As with the ’905 patent, a key factual dispute will be whether the accused WSS modules use "channel micromirrors" as claimed. The complaint provides a Ciena diagram illustrating a "2-D array of channel micromirrors" (Compl. ¶76), which may serve as strong evidence for the plaintiff's theory.
- Scope Questions: Claim 68 requires the micromirrors to be "pivotal about two axes." This language is more mechanically specific than the "controllable in two dimensions" language of the ’905 patent. A central legal dispute may be whether the beam-steering mechanism in Ciena's products, even if it achieves 2D control, does so by being "pivotal about two axes." This distinction could become a critical point of non-infringement argument for the defendant.
V. Key Claim Terms for Construction
The Term: "beam-deflecting elements" (’905 Patent) / "channel micromirrors" (’906 Patent)
Context and Importance: These terms define the core switching mechanism. Infringement will depend on whether the technology inside Ciena’s WSS modules (e.g., MEMS-based mirrors vs. LCoS phase modulators) falls within the scope of these terms as construed by the court.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that "beam-deflecting elements" may be "silicon micromachined mirrors, reflective ribbons (or membranes), or other types of beam-deflecting means known in the art." (’905 Patent, col. 4:33-36). Plaintiff may argue this language was intended to cover a broad class of light-steering technologies.
- Evidence for a Narrower Interpretation: The repeated description of the elements as being "pivotable" or "rotatable" (’905 Patent, col. 4:12-13, 4:22-24) and the more specific term "micromirrors" in the ’906 patent suggest a physical, mechanical mirror. A defendant could argue this language excludes non-mechanical beam-steering technologies that operate on different principles.
The Term: "continuously controllable in two dimensions" (’905 Patent) vs. "pivotal about two axes" (’906 Patent)
Context and Importance: These limitations define the required motion and control of the switching elements. Practitioners may focus on the difference between these phrases, as the more specific language in the ’906 patent could provide a stronger basis for a non-infringement defense if the accused devices do not use a mechanical two-axis pivot.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff might argue that "pivotal about two axes" should be functionally interpreted to mean any mechanism that allows steering to any point in a 2D field, consistent with the "controllable in two dimensions" language of the sister patent.
- Evidence for a Narrower Interpretation: A defendant will likely argue that "pivotal about two axes" carries its plain mechanical meaning, requiring a structure that physically rotates on two distinct axes. The specification explicitly contemplates this structure, stating "each channel micromirror may be pivotable about one or two axes" and that for a 2D array of output ports, "the channel micromirrors must be pivotable biaxially." (’906 Patent, col. 4:40-44).
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. Inducement is based on Ciena’s alleged knowledge of the patents from prior litigation and its actions encouraging infringement through marketing, user manuals, and technical support. (Compl. ¶¶ 28, 50-56). Contributory infringement is based on the allegation that the accused products are especially made for infringement and are not staple articles of commerce. (Compl. ¶¶ 57-59).
- Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge of the patent family dating back to litigation filed in 2014. The complaint alleges that Ciena knew of the predecessor patents, participated in related post-grant proceedings, knew of the reissue applications, and continued its allegedly infringing conduct after the reissued patents issued, reflecting a deliberate or reckless disregard of Capella’s patent rights. (Compl. ¶¶ 27-28, 61-62).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of technical evidence: Does the beam-steering technology within Ciena’s accused WSS modules actually consist of an array of pivoting micromirrors as described in the patents, or does it employ a different, non-infringing technology? The outcome may depend heavily on discovery into the precise design and operation of the accused products.
- A key legal question will be one of claim construction and scope: Can the term "pivotal about two axes" in the ’906 patent be distinguished from the broader "controllable in two dimensions" in the ’905 patent? The court's interpretation will determine whether a functional 2D steering capability is sufficient for infringement, or if a specific mechanical implementation is required.
- The case will also focus on willfulness and intent: Given the extensive litigation history alleged in the complaint, a critical question for the court will be whether Ciena's continued conduct, with knowledge of the asserted patent family, rises to the level of egregious behavior that would justify an award of enhanced damages.