PTAB

IPR2014-01191

ARRIS Group Inc v. Cirrex Systems LLC

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1. Case Identification

2. Patent Overview

  • Title: Optical Fiber Filter Assembly
  • Brief Description: The ’970 patent relates to an optical filter assembly for use with optical fibers. The core of the alleged invention is an integral, multi-layer thin-film filter with a packing density of at least 95% that adheres directly to an end face of an optical fiber segment.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fulton and Patent Owner Admissions - Claim 59 is obvious over Fulton in view of admissions in the ’970 patent.

  • Prior Art Relied Upon: Fulton ("Application of ion-assisted-deposition using a gridless end-Hall ion source for volume manufacturing of thin-film optical filters," a 1994 SPIE publication) and admissions within the specification of the ’970 patent.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Fulton taught using ion-assisted deposition (IAD) to deposit high-performance optical coatings directly onto the "ends of fiber optical bundles." Fulton explicitly disclosed that IAD improves "packing density" by achieving "densification of the film" to overcome problems like film porosity found in conventional deposition methods. The final element, the specific 95% packing density, was supplied by the ’970 patent's own specification, which admitted that IAD processes "typically" produce films with densities "in the 95% range."
    • Motivation to Combine: The motivation was inherent in Fulton's teachings. Fulton explained that IAD was researched and used specifically to enhance the performance of thin-film properties for optical filter applications. A person of ordinary skill in the art (POSA) would thus be motivated to apply Fulton's process to create a high-density, high-performance filter on a fiber end face to achieve these known benefits.
    • Expectation of Success: A POSA would have had a high expectation of success, as Fulton taught the benefits and application of IAD, and the ’970 patent conceded that a 95% density was a typical and expected result of using such processes. Petitioner contended that achieving this density was merely routine optimization.

Ground 2: Obviousness over Stone and Takashashi - Claims 59 and 78 are obvious over Stone in view of Takashashi.

  • Prior Art Relied Upon: Stone (Patent 5,037,180) and Takashashi ("Temperature stability of thin-film narrow-bandpass filters produced by ion-assisted deposition," a 1995 Applied Optics article).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Stone, which was admitted prior art in the ’970 patent, disclosed all elements of independent claim 59 except for the specific packing density limitation. Stone taught an inexpensive, multilayer thin-film filter deposited directly onto the end of an optical fiber. Takashashi was argued to supply the missing element, teaching that modern evaporation techniques like reactive-ion-plasma processes (including IAD) make it possible to "grow dense films of near-unity packing densities" (quantified as ranging from 0.9 to 1.0, or 90-100%). For dependent claim 78, Stone was alleged to teach a fiber end face "polished normal to the fiber axes," meeting the limitation of the end face being perpendicular to the fiber's longitudinal axis.
    • Motivation to Combine: A POSA would combine Stone's filter-on-fiber structure with Takashashi's high-density deposition method to produce a higher-quality, more environmentally stable filter. The explicit motivation, as taught by Takashashi, was to create filters that are "little affected by ambient moisture," a known problem that higher packing densities solved.
    • Expectation of Success: The combination represented a predictable substitution of one known deposition technique (Stone's electron-beam deposition) for a superior, known alternative (Takashashi's process) to achieve a predictable improvement in film density and stability.

Ground 3: Obviousness over Stone, Takashashi, and Shioda - Claims 61 and 87 are obvious over Stone in view of Takashashi and further in view of Shioda.

  • Prior Art Relied Upon: Stone (Patent 5,037,180), Takashashi (a 1995 article), and Shioda (Japan Patent No. JPH03118503).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Stone and Takashashi to address dependent claims 61 and 87, which further required butt-coupling the filtered fiber segment to a second optical fiber segment. Petitioner argued that the Stone/Takashashi combination taught the base assembly, and Shioda supplied the teaching of connecting fiber segments. Shioda disclosed an optical device where optical fibers were connected end-to-end via "fusion splicing," a process Petitioner equated with butt-coupling as it involves joining two media by "butting them" together.
    • Motivation to Combine: A POSA would have been motivated to add the butt-coupling taught by Shioda to the Stone/Takashashi assembly for the well-known and simple purpose of extending the fiber length or connecting the filtered segment into a larger optical communication system.
    • Expectation of Success: Butt-coupling was a conventional and well-understood technique in fiber optics. Therefore, incorporating it into the base assembly would have been a straightforward design choice with a high expectation of success.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on the Stone and Takashashi combination, supplemented by other references to meet further dependent claim limitations. These included adding Ohmi (Patent 5,981,075) for a specific range of stacked layers (claim 74) and Garmon (Patent 4,946,239) for a specific fiber segment length (claim 76), arguing each added feature was a matter of routine optimization or design choice.

4. Key Claim Construction Positions

  • Petitioner proposed that the term "an integral filter ... adhering to an end face of the optical fiber segment" should be construed as "a filter coating deposited on a substrate comprising an end face of the optical fiber segment."
  • This construction was argued to be critical for distinguishing the claimed invention from prior art methods where a filter was deposited on a separate, thin wafer that was then placed between two fiber ends. Petitioner highlighted that the ’970 patent specification actively discouraged this separate-wafer technique, supporting a construction that requires direct deposition onto the fiber itself.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and cancellation of claims 59, 61, 74, 76, 78, and 87 of the ’970 patent as unpatentable under 35 U.S.C. §103.