PTAB

IPR2021-01359

II VI Inc v. Soto Alexander

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Pluggable Optical Transceiver Module
  • Brief Description: The ’723 patent describes a pluggable optical transceiver module for processing optical and electrical signals using various m-ary modulation techniques. The module contains components for encoding, modulating, transmitting, receiving, demodulating, and decoding signals for high-speed fiber optic communication.

3. Grounds for Unpatentability

Ground 1: Claims 1-11, 13-16, and 18-23 are obvious over Raghavan in view of Richard.

  • Prior Art Relied Upon: Raghavan (WO 03/007564) and Richard (Application # 2003/0118273).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Raghavan discloses a high-data-rate, multi-channel transceiver chip that teaches all the core functional elements of independent claim 1. This includes an encoder for error correction, an m-ary modulator (specifically QAM), a digital-to-analog converter, an optical driver/transmitter on the transmit side, and an optical detector, amplifier, clock data recovery unit, adaptive equalizer, m-ary demodulator, and decoder on the receive side. Richard was cited for its teaching of implementing optical transceivers in standardized, pluggable form factors (e.g., SFP, XFP) for use in "hot pluggable" environments.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Raghavan’s advanced signal processing functionality with Richard's pluggable form factor to achieve well-known industry benefits. These benefits included easier installation, adherence to industry standards driven by Multi-Source Agreements (MSAs), reduced pin counts, and improved port density, which were critical for Datacom and Telecom markets.
    • Expectation of Success: The combination was presented as a predictable integration of known electronic functions into a standard, well-characterized physical package, a common design choice in the industry at the time.

Ground 2: Claims 1-11, 13-15, 18-19, and 21-23 are obvious over Agazzi in view of Richard.

  • Prior Art Relied Upon: Agazzi (Application # 2002/0012152) and Richard (Application # 2003/0118273).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Agazzi teaches an optical transceiver system that performs the key functions of the challenged claims. Agazzi describes using modulation schemes like 4-level Pulse Amplitude Modulation (PAM-4), error correction codes (e.g., convolutional), DSP-based equalization to overcome intersymbol interference (ISI), and timing recovery. As in Ground 1, Richard was relied upon for its disclosure of standardized pluggable form factors that provide convenience and modularity.
    • Motivation to Combine: The motivation was identical to Ground 1. A POSITA would have been motivated to incorporate the optical processing techniques of Agazzi into the industry-standard pluggable modules described by Richard to create a more practical, commercially viable, and easily deployable product.
    • Expectation of Success: Integrating Agazzi’s known signal processing architecture into a standard mechanical form factor from Richard would have been a straightforward design choice with a high expectation of success.

Ground 3: Claims 1-3, 5-8, 13-15, and 19-23 are obvious over Brede in view of Halgren.

  • Prior Art Relied Upon: Brede (Patent 6,603,822) and Halgren (Application # 2004/0052528).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that Brede discloses an optical data transmission system with the necessary functional components, including m-ary modulation (QAM and QPSK), Reed-Solomon error correction, equalization, and clock recovery. Halgren was introduced to teach an electro-optical interface structure implemented in a universal, pluggable form factor, specifically disclosing Small Form-factor Pluggable (SFP) transceivers. Petitioner emphasized that the "pluggable" limitation was the key feature added during prosecution to overcome a rejection based on Brede in a parent application.
    • Motivation to Combine: A POSITA would combine Brede’s system with Halgren’s SFP form factor to create a pluggable module. Halgren explicitly teaches that SFP-type transceivers are preferable for managing different optical interface protocols, providing a clear reason to implement the functionality of a system like Brede’s in such a standardized form factor.
    • Expectation of Success: The combination was presented as an obvious design choice to package a known optical communication system into a known, preferred pluggable interface.

  • Additional Grounds: Petitioner asserted additional obviousness challenges. Grounds 4 and 5 added Koh (Patent 7,103,279) to the primary combinations to explicitly teach QPSK modulation for claim 7. Grounds 6, 7, and 8 added Feher (Patent 6,757,334) to the primary combinations to teach blind equalization for claim 17.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under both 35 U.S.C. §325(d) and the Fintiv factors.
  • §325(d): The petition asserted that the prior art combinations presented are new and address the specific "pluggable" limitation that the Applicant relied upon to overcome prior art during prosecution. It was argued that the Examiner misapprehended the well-known nature of pluggable transceivers, a deficiency this petition corrects.
  • Fintiv (§314(a)): Petitioner argued that the parallel district court litigation was in its infancy with no trial date set. It was also asserted that there would be little overlap of issues, as the district court case was expected to focus on product-based prior art, and that the merits of the petition strongly favored institution.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-11 and 13-23 of the ’723 patent as unpatentable.