Fujitsu Network Communications, Inc. v. Capella Photonics, Inc

1. Case Identification

• Case #: IPR2015-00726
• Patent #: RE42,368
• Filed: February 12, 2015
• Petitioner(s): Fujitsu Network Communications, Inc.
• Patent Owner(s): Capella Photonics, Inc.
• Challenged Claims: 1-6, 9-12, 15-22

2. Patent Overview

• Title: Optical Add-Drop Apparatus
• Brief Description: The ’368 patent describes an optical add-drop apparatus, such as a reconfigurable optical add-drop multiplexer (ROADM), for use in wavelength division multiplexing (WDM) fiber-optic networks. The technology uses an array of beam-deflecting elements, such as Micro-Electro-Mechanical Systems (MEMS) mirrors, to selectively route individual wavelength channels to different output ports (e.g., to pass through, add, or drop a channel) and to control the power of each channel.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-6, 9-12, and 15-22 under 35 U.S.C. §102

• Prior Art Relied Upon: Smith (Patent 6,798,941).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Smith, which was not considered during prosecution, discloses every element of the challenged claims. Specifically, Smith teaches an optical add-drop multiplexer using a MEMS mirror array where each mirror is individually and continuously controllable in two dimensions. Petitioner argued that Smith explicitly describes using this two-dimensional control to both reflect a spectral channel to a selected port and to control the power of that channel, which are the key limitations added during the reissue prosecution that led to the ’368 patent. Smith is also alleged to disclose a servo-control assembly with a power monitor and feedback loop for controlling the mirrors, anticipating claims 3 and 4.
  • Key Aspects: Petitioner emphasized that Smith discloses the very features—two-dimensional control and power control via that movement—that the Patent Owner added to the claims during reissue to distinguish over other prior art.

Ground 2: Obviousness of Claims 1, 2, 5, 6, 9-12, and 15-21 over Bouevitch in view of Carr

• Prior Art Relied Upon: Bouevitch (Patent 6,498,872) and Carr (Patent 6,442,307).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Bouevitch discloses a configurable optical add-drop multiplexer (COADM) that forms the basic framework of the challenged claims but uses MEMS mirrors with only one axis of rotation. Carr, however, discloses a MEMS mirror device for optical signal processing that features a two-dimensional array of double-gimbaled mirrors capable of tilting about two perpendicular axes to any desired orientation. Crucially, Carr teaches using this two-axis tilt for power control by intentionally misaligning the mirrors so only a portion of the reflected signal enters an output fiber. The combination, therefore, allegedly supplies the key missing elements of Bouevitch: two-dimensional control and power attenuation via that control.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Bouevitch and Carr because both references address optical switching in WDM communications. A POSITA would have recognized that incorporating Carr’s known two-axis mirrors into Bouevitch’s system was a simple substitution to improve the device. This modification would enable better compensation for system alignment errors and provide a known, integrated method for power control, which Carr explicitly teaches is useful for add/drop multiplexers.
  • Expectation of Success: A POSITA would have a high expectation of success, as combining a known component (Carr's two-axis mirrors) into a known system (Bouevitch's COADM) to achieve a known function (improved routing and power control) was a predictable application of known technologies.

Ground 3: Obviousness of Claims 1-4, 17, and 22 over Bouevitch in view of Sparks

• Prior Art Relied Upon: Bouevitch (Patent 6,498,872) and Sparks (Patent 6,625,340).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented an alternative to Ground 2. Like Carr, Sparks discloses an optical switch with MEMS mirrors capable of two-axis movement. Sparks further teaches a closed-loop servo control system that measures optical power and controls the two-axis mirrors to intentionally misalign reflected beams, thereby achieving a predetermined output power for each channel. Petitioner argued that combining Sparks with Bouevitch’s foundational COADM system renders claims 1-4, 17, and 22 obvious. The servo-control system in Sparks directly maps to the limitations of claims 3 and 4.
  • Motivation to Combine: A POSITA would be motivated to integrate Sparks's teachings into Bouevitch’s system to achieve precise, automated power attenuation without needing separate components. Sparks teaches that its internal feedback system eliminates the need for external feedback, an improvement a POSITA would seek to apply to Bouevitch's system.
  • Expectation of Success: Success would be highly expected, as this combination involves implementing a known control strategy (Sparks's servo-controlled power attenuation) using known components (two-axis mirrors) in a conventional optical switch architecture (Bouevitch).

• Additional Grounds: Petitioner asserted additional obviousness challenges, including: (1) combining Smith with Tew (Application # 2002/0081070) to supply any missing disclosure of "continuously controllable" mirrors; (2) adding Tew to the Bouevitch/Carr combination; and (3) adding Tew to the Bouevitch/Sparks combination for the same reason.

4. Key Claim Construction Positions

Petitioner argued for the following constructions, which it contended were critical to the invalidity arguments:

• "In two dimensions": Proposed construction is "in two axes." Petitioner argued the ’368 patent consistently describes the beam-deflecting mirrors as pivoting or rotating about two axes to direct light beams.
• "Continuously controllable": Proposed construction is "under analog control." The specification is cited as explicitly distinguishing the invention from prior art by stating the mirror motion is "under analog control" so its pivoting angle can be "continuously adjusted."
• "Beam-deflecting elements": Proposed construction is "moveable mirrors." Petitioner asserted the specification identifies these elements as "micromachined mirrors" and "reflective ribbons (or membranes)."
• "Servo-control assembly" (Claims 3 & 4): Proposed construction is "assembly that uses automatic feedback to control a device in response to a control signal." Petitioner linked the term to the patent’s description of using a spectral monitor to provide "feedback" control for the mirrors.

5. Arguments Regarding Discretionary Denial

• Petitioner noted that while a related inter partes review (IPR2014-01166) was pending against the same ’368 patent, this petition should not be denied because it "presents different grounds and prior art references than those addressed in that challenge." This argument addresses potential denial under §325(d).

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 9-12, and 15-22 of Patent RE42,368 as unpatentable.