JDS Uniphase Corp v. Fiber LLC

1. Case Identification

• Case #: IPR2013-00318
• Patent #: 7,095,917
• Filed: June 4, 2013
• Petitioner(s): JDS Uniphase Corporation
• Patent Owner(s): Fiber, LLC
• Challenged Claims: 1, 27, 53-74

2. Patent Overview

• Title: Optical Switching Apparatus
• Brief Description: The ’917 patent describes an optical beam switching system for transmitting a light beam from a source to one of a plurality of optical receptors. The system requires at least one beam directing device, a plurality of receptors, a control for positioning the device, and a "data gathering and transmission element" that provides feedback on the device's orientation or beam location to the control.

3. Grounds for Unpatentability

Ground 1: Anticipation over Wilde - Claims 1, 27, 53-55, 57-65, 69, 71-74, and related dependent claims are anticipated by Wilde under 35 U.S.C. § 102(b).

• Prior Art Relied Upon: Wilde (Patent 6,246,657).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wilde, which teaches an optical switch for routing light between ports, discloses every limitation of the independent claims. Wilde's system includes a laser source (131), mirrors (451a, 451b) serving as beam directing devices, and output ports (182) as optical receptors. Critically, Petitioner asserted that Wilde’s position sensing detectors (PSDs 474, 475) meet the "data gathering and transmission element" limitation. These PSDs generate an output signal corresponding to the laser beam's position, which is used to control the mirrors to direct the beam to a specific output fiber, thus providing the feedback function central to the ’917 patent claims.
  • Key Aspects: Petitioner contended this ground was particularly strong because the key limitation added during prosecution to overcome prior art—the data gathering and feedback element—is expressly disclosed in Wilde for the same purpose of controlling the switch.

Ground 2: Obviousness over Wilde and Hurst - Claims 56, and its dependent claims, are obvious over Wilde in view of Hurst under 35 U.S.C. § 103.

• Prior Art Relied Upon: Wilde (Patent 6,246,657) and Hurst (Patent 6,798,729).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addresses claims requiring an optical lens for focusing the beam onto a beam directing device. Petitioner established Wilde as the base reference disclosing the primary optical switching system. Hurst was introduced for its teaching of a focusing GRIN lens (329) positioned to focus a laser beam onto a micro-mirror in a comparable optical switching apparatus.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Hurst's focusing lens with Wilde's system to improve its performance. The motivation would be to use a known technique (a focusing lens) to solve a known problem (ensuring a light beam accurately strikes the center of a reflecting surface for precise switching). This combination would have been a simple and beneficial modification.
  • Expectation of Success: A POSITA would have had a high expectation of success because both Wilde and Hurst relate to optical switching technology and the integration of a lens into a free-space optical path is a well-known and predictable design choice.

Ground 3: Obviousness over Young, Buchin, and/or Hurst - Claims 1, 27, 53-74 are obvious over Young in view of Buchin and/or Hurst under §103.

• Prior Art Relied Upon: Young (Patent 5,903,687), Buchin (Patent 5,748,812), and Hurst (Patent 6,798,729).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner presented Young as a primary reference that discloses a multi-port optical switch with sources (105), movable mirrors (120, 11) as beam directing devices, and output ports (15) as receptors, all controlled by actuators (125). However, Young does not explicitly disclose the claimed feedback element. Buchin was cited for its teaching of an optical switch that uses positional feedback (signal 166) from a galvanometer motor to provide precise control over a mirror's rotational angle. Alternatively, Hurst was cited for teaching a closed-loop feedback system that measures the amplitude of a reflected laser beam to provide fine alignment signals.
  • Motivation to Combine: Petitioner asserted a POSITA would combine Young with the feedback systems of Buchin or Hurst to improve the accuracy and reliability of Young's switch. Adding positional feedback is a known engineering solution to ensure reflective mirrors in an optical switch are properly controlled and aligned, a common objective in the field.
  • Expectation of Success: Success would be predictable, as this combination merely involves applying a known control technique (feedback) from analogous art (Buchin/Hurst) to a known optical switch design (Young) to achieve the expected benefit of improved alignment precision.

• Additional Grounds: Petitioner asserted additional anticipation challenges against various claims based on Hurst (Ground 4), Tsai (Patent 5,420,946) (Ground 5), and Chande (Patent 4,838,631) (Ground 6), each of which was argued to disclose all elements of an optical switch with a feedback control mechanism.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner argued that the challenged claims of the ’917 patent are not entitled to the June 5, 1998 priority date of their provisional application. The argument was based on a lack of written description, asserting that the provisional application failed to disclose the key "data gathering and transmission element" limitation. This contention, if successful, establishes an earlier effective prior art date for several references cited in the petition.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 27, and 53-74 of the ’917 patent as unpatentable.