PTAB

IPR2021-01494

II VI Inc v. Alexander Soto

Key Events

Petition

petition

Title: Integrated Pluggable Passive Optical Network (PON) Optical Transceiver
Brief Description: The ’697 patent discloses an integrated, pluggable Passive Optical Network (PON) optical transceiver module. The module incorporates a PON protocol processor and an Ethernet Media Access Control (MAC) device to process and manage data link layer communications between a network head-end and a client-side device.

Prior Art Relied Upon: Unitt (Application # 2002/0146026) and Aronson (Patent 7,079,775).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Unitt taught a PON system with an optical network unit (ONU) that performs the core data link layer functions of the claimed transceiver, including having a PON protocol processor and Ethernet MAC. However, Unitt's ONU was not explicitly "pluggable." Petitioner asserted that Aronson supplied this missing element by disclosing a standard, pluggable optoelectronic transceiver, specifically in a Small Form-factor Pluggable (SFP) format.
- Motivation to Combine: Petitioner contended a POSITA would combine these references because Unitt itself motivated miniaturization and a "plug and play" system for its ONUs to reduce size, complexity, and cost. Aronson provided a well-known, standardized solution (SFP) for creating miniature, pluggable optical transceivers that would directly satisfy Unitt's stated design goals.
- Expectation of Success: Petitioner argued success was expected because combining Unitt's PON functionality with Aronson's standard SFP form factor involved applying a known, predictable technology to improve a known device for foreseeable benefits.

Prior Art Relied Upon: Unitt (Application # 2002/0146026) and Tan (Application # 2004/0208601).
Core Argument for this Ground:
- Prior Art Mapping: This ground presented a similar argument to Ground 1, with Unitt providing the base PON ONU system. Tan was used as an alternative to Aronson to teach a "hot pluggable" bi-directional optical transceiver. Petitioner argued Tan's transceiver, which was shown in a form factor consistent with an SFP module, disclosed the claimed pluggability.
- Motivation to Combine: The motivation was analogous to Ground 1. Unitt's express goals of miniaturization and "plug and play" capability would lead a POSITA to known pluggable transceiver designs. Tan provided an example of such a "hot pluggable" module and explicitly stated its transceiver could be used as an ONU on customer premises, making the combination logical.
- Expectation of Success: Petitioner asserted success would be expected because it involved incorporating a known feature (hot-pluggability from Tan) into a known system (the ONU from Unitt) to achieve the predictable improvements of smaller size and easier installation.

Prior Art Relied Upon: Li (Application # 2009/0304384).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Li, by itself, disclosed all elements of these claims. Li was asserted to teach a "pluggable optical transceiver" for use in PONs that can have a standard form factor (e.g., SFP), is configured for removable coupling to a host device (e.g., switch or router), and performs system-layer functions including media access control (MAC) and "operation administration management (OAM) message process," corresponding to the claimed PON protocol processor functions.
- Motivation to Combine: Not applicable for this single-reference ground.
- Expectation of Success: Not applicable for this single-reference ground.
Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Unitt and Aronson with Block (Patent 5,039,194) for specific connector types (claims 9, 21), and combining Unitt and Tan with Aronson for diagnostic features (claims 13, 20, 25).

Petitioner argued that no specific technical claim terms required construction beyond their plain and ordinary meaning. However, Petitioner contended that phrases in the claims such as "one or more of the following functions" and "selected from the group" should be interpreted as Markush-style alternatives. This interpretation was critical to their argument that the prior art need only disclose one of the listed alternatives to render the claim obvious.

A central contention was that apparatus claims 1-3, 9-10, and 13 were only entitled to a priority date of July 8, 2012. Petitioner argued these claims recited new matter not supported by the parent applications, specifically the function of "operation administration and maintenance (OAM) message processing." This later priority date was asserted to allow references published after 2003, such as Li, to be applied as prior art against these claims.

Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court case was in its infancy with no trial date set, discovery was minimal, and the invalidity contentions in court would focus on different, product-based prior art, resulting in little overlap. Petitioner also argued against denial under §325(d), asserting that the specific prior art combinations relied upon in the petition were not considered during the original prosecution of the ’697 patent.

Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3, 9-10, 13, 15-17, 20-21, and 24-25 of the ’697 patent as unpatentable.