PTAB

IPR2015-00731

JDS Uniphase Corp v. Capella Photonics Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Reconfigurable Optical Add-Drop Multiplexers With Servo Control and Dynamic Spectral Power Management Capabilities
  • Brief Description: The ’368 patent discloses reconfigurable optical add-drop multiplexers (ROADMs) for use in wavelength division multiplexing (WDM) fiber-optic networks. The technology uses a spatial array of beam-deflecting elements, such as micromirrors, to selectively route individual light channels to different ports and to control the power of those channels.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bouevitch and Sparks - Claims 1-6, 9-13, and 15-22 are obvious 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: Petitioner argued that Patent Owner, during reissue prosecution of the ’368 patent, effectively admitted that Bouevitch disclosed all elements of the independent claims except for two limitations added to overcome Bouevitch: (1) beam-deflecting elements controllable “in two dimensions,” and (2) their use “to control the power” of the spectral channel. Petitioner asserted that Bouevitch teaches a complete ROADM system with MEMS mirrors that are controllable in one axis for both switching and power control. Sparks, which addresses the same technical field, allegedly supplies the missing elements by explicitly disclosing a MEMS-based optical switch with movable micromirrors “capable of two axis movement” that are used for power control via “controlled misalignment of the optical beam path.”
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine Bouevitch and Sparks for several reasons. The combination represents a simple substitution of one known element (Bouevitch’s 1-axis mirrors) for another known, closely related element (Sparks’ 2-axis mirrors) to achieve the predictable result of more precise control. Both references are analogous art in the field of MEMS-based WDM optical switches. Furthermore, Sparks explicitly addresses a problem identified in Bouevitch—the desirability of equalizing power across all channels—providing a direct motivation to incorporate Sparks’ 2-axis power control method into Bouevitch’s system.
    • Expectation of Success: A POSITA would have a high expectation of success, as 2-axis mirrors were one of a small number of predictable solutions for mirror actuation and power control in optical switches at the time.

Ground 2: Obviousness over Bouevitch, Sparks, and Lin - Claims 1-6, 9-13, and 15-22 are obvious over Bouevitch and Sparks, further in view of Lin.

  • Prior Art Relied Upon: Bouevitch (Patent 6,498,872), Sparks (Patent 6,625,340), and Lin (Patent 5,661,591).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground was presented as an alternative in the event the Board found that Bouevitch and Sparks did not sufficiently teach the “continuously controllable” limitation of the claims. Petitioner argued that Lin remedies any potential deficiency by explicitly teaching continuous, analog control of MEMS mirrors. Lin describes how a continuous deflection angle can be achieved as a function of an applied voltage, contrasting this with less precise binary (discrete) control methods.
    • Motivation to Combine: A POSITA would combine Lin's teachings because analog control was a known alternative to discrete control for improving the precision of mirror positioning. Lin specifically teaches that its analog control method would be useful in optical switching applications like those described in Bouevitch and Sparks. Given that continuous and discrete control were two well-known primary options, it would have been obvious to try incorporating Lin’s analog control into the Bouevitch/Sparks system to achieve more precise power coupling and control.

  • Additional Grounds: Petitioner asserted further obviousness challenges for claim 12 based on the primary combination of Bouevitch and Sparks, further in view of Dueck (Patent 6,011,884). This combination was intended to show that the specific types of wavelength-selective devices recited in claim 12’s Markush group (e.g., “ruled diffraction gratings”) were well-known and obvious to use, as taught by Dueck.

4. Key Claim Construction Positions

  • "in two dimensions": Petitioner argued this term should be construed as "in two axes." This construction was critical to the core obviousness argument, as it directly maps to the explicit teaching of “two axis movement” for the micromirrors in the Sparks reference, which Petitioner alleged was the key element missing from Bouevitch.
  • "servo-control assembly": Petitioner proposed construing this term as a "feedback-based control assembly." This interpretation was based on the ’368 patent’s specification, which equates servo control with using a feedback loop. This construction was central to mapping the claim limitation to Sparks, which discloses a “closed-loop servo control system” that uses feedback from a power monitor to control its mirrors.

6. Arguments Regarding Discretionary Denial

  • Petitioner argued that the petition should not be denied as redundant in view of a related proceeding, IPR2014-01166, which challenged the same patent. Petitioner contended that the present petition was substantially different because it relied on Sparks as the key secondary reference, whereas the earlier IPR relied on a different patent (Smith). Petitioner asserted that Sparks was a stronger reference because it has an earlier priority date than Smith and its disclosures are not identical, thus presenting a distinct and more robust challenge to the patentability of the challenged claims.

7. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-6, 9-13, and 15-22 of Patent RE42,368 as unpatentable.