PTAB

IPR2015-01728

PRECISEley Microtechnology Corp v. DICON FiberOpTics Inc

Log In
Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: Electrostatic Control of Microoptical Components
  • Brief Description: The ’738 patent discloses microelectromechanical systems (MEMS) featuring electrostatic comb drive actuators. These actuators use interdigitated stationary (stator) and movable (rotor) fingers to control micro-optical components, such as mirrors, by generating vertical forces that cause rotation.

3. Grounds for Unpatentability

Ground 1: Obviousness over Behin ’677 and Miller - Claims 1-4, 6, 7, 11, 14, 35-37, 39, 43, 44, and 50 are obvious over Behin ’677 in view of Miller.

  • Prior Art Relied Upon: Behin ’677 (Patent 6,593,677) and Miller (Patent 6,000,280).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Behin ’677 discloses the core elements of independent claims 1 and 35, including an electrostatic comb drive actuator with interdigitated stator and rotor fingers fabricated from a single layer to cause rotation of a micro-optical component. However, Petitioner asserted Behin ’677 does not explicitly disclose a conducting plane beneath the fingers or that the fingers have different heights. Miller was introduced to supply these missing elements. Miller explicitly teaches using a conducting plane (substrate) to generate a "levitation force" and fabricating fingers with different heights to create an asymmetric electric field, thereby producing the vertical force required by the claims.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references because both describe electrostatic comb drive actuators and Miller’s techniques for generating vertical force were well-known methods to improve actuator performance. Petitioner noted that a POSITA would have viewed the combination as an interchangeable design choice to enhance the actuator of Behin ’677.
    • Expectation of Success: The combination relied on predictable principles of electrostatics and mechanics common in MEMS design, ensuring a high expectation of success.

Ground 2: Obviousness over Behin ’677, Miller, and Conant - Claims 5 and 38 are obvious over Behin ’677 in view of Miller and Conant.

  • Prior Art Relied Upon: Behin ’677 (Patent 6,593,677), Miller (Patent 6,000,280), and Conant (Patent 7,079,299).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the actuator structure established by Behin ’677 and Miller. It addressed dependent claims 5 and 38, which further require the micro-optical component to include a "filter element." Petitioner relied on Conant to teach that a filter is a known type of micro-optical component that can be actuated by a comb drive actuator to create a tunable optical filter.
    • Motivation to Combine: Petitioner argued that MEMS design is often modular. A POSITA would have been motivated to use the versatile actuator design from Behin ’677 and Miller to manipulate a known component, such as the optical filter disclosed in Conant. This combination represented a simple substitution of one known optical component (a mirror) for another (a filter).

Ground 3: Anticipation/Obviousness over Behin ’173 - Claims 19-23, 25, and 26-30 are anticipated and/or obvious in view of Behin ’173.

  • Prior Art Relied Upon: Behin ’173 (Patent 6,744,173).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground targeted a different set of claims, including independent claims 19 and 26, which recite an actuator formed from multiple layers (e.g., a first conductive layer, a second conductive layer, and an insulating layer between them). Petitioner asserted that Behin ’173—a co-pending application from the same inventors as Behin ’677 and the ’738 patent—explicitly discloses these multi-layer structures. Behin ’173 described stationary and movable fingers comprising conducting (silicon) and insulating (silicon oxide) layers, formed via etching, which are subjected to a vertical force to cause rotation, allegedly anticipating or rendering obvious all limitations of the challenged claims.
    • Motivation to Combine (for obviousness): To the extent any claim element was not explicitly disclosed, Petitioner argued it would have been obvious for a POSITA to combine the various embodiments within Behin ’173. These represented mere design choices driven by desired functionality or available fabrication processes.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Behin ’677, Miller, Hagelin, and Yeh for claims related to bidirectional force application and spring elements, and combinations of Behin ’173, Suzuki, and Conant for claims directed to rotors made of insulating material and formed in different wafers.

4. Key Claim Construction Positions

  • Petitioner proposed a construction for the term "formed in," arguing it means "the described structure was created at least partially within the wafer and/or layer being discussed." This construction was asserted to be consistent with the specification and crucial for mapping the multi-layer fabrication processes described in the prior art to the claim limitations.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-50 of the ’738 patent as unpatentable.