Panduit Corp v. Corning Optical Communications LLC

1. Case Identification

• Case #: IPR2017-01375
• Patent #: 6,869,227
• Filed: May 5, 2017
• Petitioner(s): Panduit Corp.
• Patent Owner(s): CCS Technology, Inc.
• Challenged Claims: 6, 7, and 11

2. Patent Overview

• Title: Optical Polarity Modules and Systems
• Brief Description: The ’227 patent discloses optical breakout harnesses and modules that use a specific fiber routing scheme to manage signal polarity. The technology centers on "reverse-ribbon positioning," where fibers in a multi-fiber ribbon are connected in sequential order on one end and reverse-sequential order on the other, allowing identical modules to be interconnected while maintaining correct transmit-to-receive pathways.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claim 6 over Toyooka, Eichenberger, and Giebel

• Prior Art Relied Upon: Toyooka (Japanese Publication # H11-160542), Eichenberger (Patent 7,021,837), and Giebel (Patent 6,149,313).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Toyooka taught the core method of claim 6: a "reverse-ribbon positioning" method, which is functionally equivalent to Toyooka’s straight-through wiring in its module 110 (assigning sequential numbers, installing one end in sequential order, and the other end in reverse order). Eichenberger taught using keyed multi-pin optical (MPO) connectors, with all keys oriented in the same direction (“key-up”) to ensure proper alignment and polarity. Giebel taught standardized, keyed multi-fiber MT RJ connectors that could replace the single-core connectors in Toyooka.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Toyooka’s wiring method with Eichenberger’s keyed MPO connectors to ensure proper orientation and prevent polarity issues, a known industry problem. A POSITA would be further motivated to replace Toyooka’s single-core connectors with Giebel’s industry-standard MT RJ connectors to enable connection to common networks, reduce the number of components and manufacturing complexity, and lessen the burden of installation.
  • Expectation of Success: Combining these known elements for their intended purposes—a wiring scheme for polarity, keyed connectors for alignment, and standard interfaces for compatibility—would predictably result in the claimed method with no unexpected results.

Ground 2: Obviousness of Claim 7 over Toyooka and Eichenberger

• Prior Art Relied Upon: Toyooka (Japanese Publication # H11-160542) and Eichenberger (Patent 7,021,837).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that claim 7 recites a method of connecting two transition modules using the reverse-ribbon positioning method. Toyooka’s Figure 5 disclosed a transition module (module 110) with the necessary straight-through wiring. Eichenberger explicitly taught a method of interconnecting two identical, straight-through wired modules with a “straight” ribbon cable where all connector keys are oriented in the same direction to guarantee correct polarity (transmit-to-receive).
  • Motivation to Combine: A POSITA would be motivated to modify Toyooka's system to incorporate Eichenberger's teaching of using two identical modules. Both the ’227 patent and Toyooka acknowledged the well-known problems of using different module types on opposite ends of a cable. Using identical modules, as taught by Eichenberger, was a known solution to reduce connection errors, inventory complexity, and stocking issues.
  • Expectation of Success: A POSITA would have a high expectation of success in applying Eichenberger’s method of using identical, keyed modules to Toyooka’s base module design to create a predictable, polarity-managed system.

Ground 3: Obviousness of Claim 11 over Toyooka and Giebel

• Prior Art Relied Upon: Toyooka (Japanese Publication # H11-160542) and Giebel (Patent 6,149,313).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that claim 11 recites a breakout harness where optical fibers from non-adjacent paths in a multi-fiber connector are routed to form pairs at an opposite set of connectors. Toyooka’s Figure 1 explicitly disclosed this symmetrical wiring scheme, where, for example, the outermost fibers of a multicore connector are paired together at a connector pair on the other side. Giebel taught a multi-fiber MT RJ connector that could serve as the "at least one multi-fiber connector" required by the claim.
  • Motivation to Combine: A POSITA would be motivated to modify Toyooka’s harness by replacing its plurality of single-core connectors with a smaller number of Giebel’s multi-fiber MT RJ connectors. The motivation was to connect the harness to networks using the popular MT RJ industry standard, reduce the total number of ferrules and connectors (thereby lowering cost and complexity), and simplify installation by bundling transmit/receive pairs into a single connector.
  • Expectation of Success: Replacing one type of connector with another well-known, standardized connector to gain the benefits of that standard was a routine design choice for a POSITA, with a predictable and successful outcome.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §325(d). While a prior petition (IPR2016-01648) challenged claims of the ’227 patent, the Board denied institution on claims 6 and 11 in that proceeding because a prior art reference was found to be not publicly accessible. Petitioner contended that because the Board never previously reached the substantive merits of the obviousness grounds against claims 6 and 11, denial under §325(d) would be inappropriate.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 6, 7, and 11 of the ’227 patent as unpatentable under 35 U.S.C. §103.