JDS Uniphase Corp v. Fiber LLC

Prosecution History analysis

Examiner Search analysis

Invalidity Framework analysis

Petition

Petition Analysis

## 1. Case Identification
- Patent #: [7,095,917](https://ai-lab.exparte.com/patent/7095917)
- Filed: June 4, 2013
- Petitioner(s): [JDS Uniphase Corporation](https://ai-lab.exparte.com/party/jds-uniphase-corp)
- Patent Owner(s): [Fiber, LLC](https://ai-lab.exparte.com/party/fiber-llc)
- Challenged Claims: 1, 27, and 53-74

## 2. Patent Overview
- Title: Optical Switching Apparatus
- Brief Description: The ’917 patent relates to an optical beam switching system for transmitting a beam from a source to one of a plurality of optical receptors. The system utilizes at least one beam directing device (e.g., a movable mirror), a controller for positioning the device, and a data gathering and transmission element that provides feedback on the beam's current orientation or location to the controller for precise adjustment.

## 3. Grounds for Unpatentability

#### Ground 1: Anticipation by Wilde - Claims 1, 27, 53-55, 57, and dependents are anticipated under 35 U.S.C. §102(b) by Wilde.
  - **Prior Art Relied Upon:** [Wilde](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1004) (Patent 6,246,657)
  - **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner argued that [Wilde](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1004) discloses every element of the challenged independent claims. [Wilde](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1004) describes an optical switch with a laser source (131), movable first and second mirrors (451a, 451b) acting as beam directing devices, and a plurality of output fibers (182) as optical receptors. Critically, [Wilde](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1004) discloses first and second position sensing detectors (PSDs 474, 475) that provide an output signal corresponding to the laser beam's position. This signal is used by a control system to adjust the mirrors, thereby teaching the claimed "data gathering and transmission element" that provides an indication of the beam's location for control purposes.

#### Ground 2: Obviousness over Wilde in view of Hurst - Claims 56 and various dependents are obvious over Wilde in view of Hurst.
  - **Prior Art Relied Upon:** [Wilde](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1004) (Patent 6,246,657), [Hurst](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1005) (Patent 6,798,729)
  - **Core Argument for this Ground:**
    - **Prior Art Mapping:** This ground built upon the teachings of [Wilde](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1004) as the base system. The challenge focused on claims requiring an "optical lens for focusing the optical beam," such as claim 56 (dependent on 53) and claim 57. Petitioner asserted that while [Wilde](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1004) provides the complete switching system with feedback, [Hurst](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1005) explicitly discloses a focusing GRIN lens (329) positioned to focus a laser beam onto a micro-mirror in a comparable optical switch.
    - **Motivation to Combine:** A person of ordinary skill in the art (POSITA) would combine the focusing lens from [Hurst](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1005) with Wilde's system. The motivation was to improve the performance of Wilde's switch by using a known technique (a focusing lens) to achieve a known benefit (ensuring the beam reflects off the center of the mirror for better accuracy). This combination was presented as a predictable design choice to optimize a known device.
    - **Expectation of Success:** A POSITA would have a high expectation of success, as incorporating a standard optical component like a focusing lens into a free-space optical switch was a well-understood and routine modification that would yield predictable results.

#### Ground 3: Obviousness over Young in view of Buchin and/or Hurst - Claims 1, 27, 53-57, and various dependents are obvious over Young in view of Buchin and/or Hurst.
  - **Prior Art Relied Upon:** [Young](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1006) (Patent 5,903,687), [Buchin](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1007) (Patent 5,748,812), and [Hurst](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1005) (Patent 6,798,729)
  - **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner argued that [Young](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1006) discloses a base optical switching system with multiple input/output ports, sources, and movable mirrors (120-1 to 120-M) controlled by actuators, but lacks the specific "data gathering and transmission element" for feedback. [Buchin](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1007) and [Hurst](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1005) were introduced to supply this missing element. [Buchin](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1007) teaches an optical switch using a galvanometer motor with a positional feedback signal (166) to control the mirror's angle. Similarly, [Hurst](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1005) teaches a closed-loop feedback system that measures the amplitude of a reflected laser beam to provide fine alignment signals.
    - **Motivation to Combine:** A POSITA would be motivated to add the explicit positional feedback systems of [Buchin](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1007) or [Hurst](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1005) to Young's switching architecture. The motivation was the simple and compelling goal of improving the pointing accuracy and control of Young's mirrors, which is a fundamental objective in optical switching. Both secondary references were presented as being from the same field of endeavor and addressing the same technical problem.
    - **Expectation of Success:** Combining a known feedback mechanism with a known switching system was argued to be a predictable and straightforward engineering step. The addition would be an application of a known technique to a similar device to achieve an expected improvement in performance.
- **Additional Grounds:** Petitioner asserted additional anticipation challenges against various claims based on [Hurst](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1005) (Patent 6,798,729), [Tsai](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1008) (Patent 5,420,946), and [Chande](https://ai-lab.exparte.com/case/ptab/IPR2013-00123/doc/1009) (Patent 4,838,631). Each reference was argued to independently disclose all elements of the claimed optical switching system, including a form of feedback control.

## 4. Key Technical Contentions (Beyond Claim Construction)
- **Priority Date Entitlement:** Petitioner contended that the challenged claims are not entitled to the June 5, 1998 priority date of the provisional application. The argument was based on the assertion that the provisional application failed to provide adequate written description for the "data gathering and transmission element," a limitation present in all independent claims. This lack of disclosure, per Petitioner, means the patent's effective filing date is its actual filing date of July 17, 2002, making several cited references unambiguously prior art under §102.

## 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.

Optical beam switching patent challenged on 24 claims: Wilde & Hurst prior art cited for anticipation and obviousness over its feedback control system.

IPR2013-00318

JDS Uniphase Corp v. Fiber LLC