JDS Uniphase Corporation v. FIBER, LLC

1. Case Identification

• Patent #: 6,430,332
• Filed: June 7, 2013
• Petitioner(s): JDS Uniphase Corporation
• Patent Owner(s): Fiber, LLC
• Challenged Claims: 101, 112, and 123-134

2. Patent Overview

• Title: Optical Switching Apparatus
• Brief Description: The ’332 patent describes an optical switching system for directing an optical beam from one of multiple sources to one of multiple optical receptors. The system uses a plurality of movable mirrors, a control mechanism, and a feedback element to ensure accurate beam alignment and minimize transmission loss.

3. Grounds for Unpatentability

Ground 1: Obviousness over Young in view of Buchin - Claims 101, 112, 123-134

• Prior Art Relied Upon: Young (Patent 5,903,687) and Buchin (Patent 5,748,812).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Young disclosed the foundational M-input by N-output optical switching system, including a plurality of movable mirrors (e.g., mirrors 120-1 to 120-M) mounted in free space between sources and receptors and controlled by actuators. However, Young allegedly lacked the specific feedback control elements recited in the challenged claims. Petitioner asserted that Buchin supplied these missing elements, teaching an optical switch that uses a closed-loop feedback system for precise mirror control. Specifically, Buchin disclosed using a galvanometer motor with a feedback signal (166) to report the mirror’s rotational angle, as well as a sensor (162) to provide feedback on light intensity for fine alignment, which collectively teach the claimed "radiation emitters" or "servo control element."
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would have been motivated to incorporate Buchin's advanced feedback and alignment control system into Young's foundational switching architecture. The motivation was to solve the known problem of optimizing the alignment of the output laser beam to prevent signal-to-noise degradation, a common goal in the field of optical switching.
  • Expectation of Success: Petitioner contended that combining these elements would have been a predictable application of a known technique (feedback control) to improve a known device (an optical switch). A POSA would have had a reasonable expectation of success because both references operate within the same field, address analogous problems of coupling laser light, and the integration involved combining known components to achieve their expected functions.

Ground 2: Obviousness over Chande in view of Buchin - Claims 112, 123-134

• Prior Art Relied Upon: Chande (Patent 4,838,631) and Buchin (Patent 5,748,812).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chande disclosed a laser beam directing system using two movable mirrors on galvanometers (326, 330) to steer a light beam to a plurality of optical fibers. Chande taught using a digital computer (332) and feedback signals from the galvanometers to control the mirror positions. While Chande taught a complete system with feedback, Petitioner asserted it did not explicitly disclose switching between multiple sources. Buchin was introduced to teach this feature, as it disclosed an optical switch with multiple input paths (207-1 to 207-3) directed to a mirror, thereby teaching the claimed "complete set of sources."
  • Motivation to Combine: A POSA would have been motivated to modify Chande's system to incorporate the multi-source switching capability taught by Buchin. This combination would create a more versatile and powerful optical switch, allowing a user to select from different types of lasers (e.g., for welding vs. marking, as contemplated in Chande) and direct them to any of the target workstations, which is a logical and desirable improvement.
  • Expectation of Success: The combination was presented as predictable. Since both references relate to optical switching using movable mirrors, a POSA would have understood how to integrate Buchin's multi-source input into Chande's beam-steering system using known engineering methods, yielding the predictable result of a multi-source, multi-output switch.

Ground 3: Obviousness over Young in view of Hurst - Claims 101, 112, 123-134

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

• Core Argument for this Ground:

  • Prior Art Mapping: This ground again used Young as the primary reference for the basic M x N optical switch architecture. The feedback and alignment elements were supplied by Hurst. Petitioner asserted Hurst taught a sophisticated closed-loop feedback system for fine alignment of a laser beam. Hurst's system used a beam splitter (232) to route a reflected portion of the beam to a detector, determined the mirror's angular position based on the electric potential applied to its motor (321), and used a look-up table of pre-calibrated values to generate fine alignment signals. This disclosure was argued to meet the limitations for a "servo control element" and "data gathering and transmitting element."
  • Motivation to Combine: The motivation to combine Hurst with Young was the same as in Ground 1: to improve the performance of Young's basic switch by adding a robust, closed-loop feedback system. This would ensure the output laser is optimally positioned, thereby minimizing signal loss and improving overall system reliability, a well-understood goal in the art.
  • Expectation of Success: Petitioner asserted success would have been reasonably expected. The proposed modification was the addition of a known alignment technique from Hurst to a standard optical switch from Young. A POSA would have found it straightforward to implement Hurst's feedback loop to control the actuators in Young's system, leading to the predictable improvement of enhanced alignment accuracy.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 101, 112, and 123-134 based on the combination of Young in view of Kittrell (Patent 5,290,275), relying on a similar design modification theory where Kittrell provided the teachings for a continuous monitoring feedback system.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner argued that the challenged claims of the ’332 patent were not entitled to the priority date of the provisional application filed on June 5, 1998. The argument was based on the assertion that the provisional application failed to provide adequate written description for key claim limitations, including the "radiation emitters," "servo control element," and "data gathering and transmission element" used for providing a feedback signal. Because these allegedly novel elements were not disclosed in the provisional, Petitioner contended the patent's effective filing date was its actual filing date of May 12, 1999, which is relevant for determining the scope of available prior art.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 101, 112, and 123-134 of the ’332 patent as unpatentable.