PTAB

IPR2015-01958

Ciena Corporation v. Capella Photonics, Inc

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1. Case Identification

2. Patent Overview

  • Title: Optical Add-Drop Apparatus for Wavelength Division Multiplexing Systems
  • 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 a spatial array of beam-deflecting elements, such as Micro-Electro-Mechanical Systems (MEMS) mirrors, to selectively route individual wavelength channels to different output ports and to control the power of those channels. The patent was reissued from Patent 6,879,750 to add limitations requiring that the beam-deflecting elements be controllable in two dimensions and used for power control, which the Patent Owner had admitted were lacking in the original claims.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 5, 6, 9-12, and 15-21 are obvious 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 argued that Bouevitch discloses a base configurable optical add/drop multiplexer (COADM) using MEMS mirrors with only a single axis of rotation. The Patent Owner had admitted during reissue that its original claims were invalid over Bouevitch. Petitioner asserted that Carr cures this deficiency by disclosing a MEMS mirror device featuring two-dimensional, double-gimbaled mirrors that are explicitly used for optical signal processing. Carr further teaches power control (attenuation) by intentionally misaligning the mirrors. The combination of Bouevitch's COADM architecture with Carr's two-axis, power-controlling mirrors allegedly meets all limitations of the challenged claims, including those added during reissue.
    • Motivation to Combine (for §103 grounds): A POSITA would combine the references because they address highly related subject matter—optical switching in WDM systems using MEMS. Petitioner asserted that substituting Carr's known two-axis mirrors into Bouevitch's system was an obvious design choice to improve performance, such as by better compensating for system alignment errors arising from assembly or temperature changes. This combination was presented as a simple application of a known technique (two-axis control) to a similar device (Bouevitch's COADM) to achieve predictable results.
    • Expectation of Success (for §103 grounds): Because tilting MEMS mirrors in one or two axes were the only two predictable solutions available, and Carr already disclosed the use and benefits of two-axis mirrors, a POSITA would have a high expectation of success when implementing this known solution in Bouevitch's system.

Ground 2: Claims 1-4, 17, and 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: This ground presented a similar argument, with Bouevitch providing the foundational COADM. Sparks, like Carr, was asserted to disclose an optical switch using two-axis MEMS mirrors for power attenuation via intentional beam misalignment. Critically for dependent claims 3 and 4, Sparks also disclosed a closed-loop servo-control system. This system measures optical signals and controls the mirror orientation to achieve a predetermined output power, thus eliminating the need for external feedback.
    • Motivation to Combine (for §103 grounds): The motivation to combine was based on the same reasoning as in Ground 1—substituting a known element (Sparks's two-axis mirrors) to yield predictable results in a similar system. Additionally, Petitioner argued a POSITA would be motivated to incorporate Sparks's internal servo-control system into Bouevitch's device as a known, alternative method for achieving gain equalization and ensuring the desired degree of attenuation for each channel without needing external feedback components.

4. Key Claim Construction Positions

  • The petition argued for specific constructions for key terms under the broadest reasonable interpretation standard.
    • “in two dimensions”: Petitioner proposed this term be construed as “in two axes.” This construction was argued to be consistent with the specification, which describes mirrors pivoting or rotating around two axes to direct light beams.
    • “continuously controllable”: Petitioner proposed the construction “under analog control.” The petition asserted the specification repeatedly equates continuous control with analog control for adjusting the pivoting angle of the micromirrors.
    • “beam-deflecting elements”: Petitioner proposed the construction “moveable mirrors.” This was based on the specification’s exemplary embodiments, which describe the elements as silicon micromachined mirrors or reflective ribbons.
    • “servo-control assembly” (Claims 3 & 4): Petitioner proposed construing this as an “assembly that uses automatic feedback to control a device in response to a control signal.” This construction was based on the patent’s description of a spectral monitor providing feedback to a processing unit to control the micromirrors.

5. Arguments Regarding Discretionary Denial

  • The petition was filed with a motion seeking to join inter partes review (IPR) No. IPR2015-00726. Petitioner stated that the grounds presented in this petition are the same as those on which the Board had already instituted review in the '726 IPR. Petitioner argued this prior institution demonstrates a reasonable likelihood of success on the merits and weighs against any potential discretionary denial of the current petition.

6. Relief Requested

  • Petitioner requested the institution of an IPR and the cancellation of claims 1-6, 9-12, and 15-22 of the ’368 patent as unpatentable under 35 U.S.C. §103.