II VI Inc v. Alexander Soto

1. Case Identification

• Case #: IPR2021-01495
• Patent #: 8,238,754
• Filed: September 10, 2021
• Petitioner(s): II-VI Incorporated
• Patent Owner(s): Alexander Soto and Walter Soto
• Challenged Claims: 1-31

2. Patent Overview

• Title: Network Client Optical Transceiver Module
• Brief Description: The ’754 patent describes a network client optical transceiver module for use in a passive optical network (PON). The module has a pluggable form factor, allowing it to be removably coupled to a switch or router, and is configured to process a PON protocol for managing data transmission.

3. Grounds for Unpatentability

Ground 1: Obviousness over Unitt and Aronson - Claims 1-4, 6-12, 14-21, 23-26, and 28-31 are obvious over Unitt ’026 in view of Aronson.

• Prior Art Relied Upon: Unitt ’026 (Application # 2002/0146026) and Aronson (Application # 2002/0149821).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Unitt ’026 disclosed a complete PON system with a headend and multiple optical network units (ONUs), which function as optical transceivers. Unitt ’026 taught all elements of the challenged claims except for an explicitly pluggable form factor. Petitioner asserted that Aronson supplied this missing element by disclosing a small form-factor pluggable (SFP) optical transceiver, a well-known standard at the time. The combination of Unitt ’026's PON system with Aronson's pluggable SFP transceiver rendered the apparatus claims (e.g., claim 1) and method claims (e.g., claim 18) obvious.
  • Motivation to Combine: A POSITA would combine these references for several reasons. First, Unitt ’026 itself expressed a desire for a miniaturized, "plug and play" ONU system that would not require reconfiguration when a new unit is added. Second, a POSITA seeking to implement this pluggable functionality would have naturally looked to established industry standards like the SFP technology taught by Aronson to create a miniature, pluggable ONU.
  • Expectation of Success: A POSITA would have had a high expectation of success because combining a known PON transceiver architecture (Unitt ’026) with a standard pluggable module technology (Aronson) involved applying predictable and well-understood design choices.

Ground 2: Obviousness over Unitt and Tan - Claims 1-12, 14-26, and 28-31 are obvious over Unitt ’026 in view of Tan.

• Prior Art Relied Upon: Unitt ’026 (Application # 2002/0146026) and Tan (Application # 2004/0208601).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative to Ground 1, using Tan instead of Aronson to teach the pluggable form factor. Petitioner contended that Unitt ’026 provided the foundational PON system, while Tan disclosed a bi-directional, "hot pluggable" optical transceiver module. Tan's disclosure included a printed circuit board with an edge connector, explicitly teaching how to make a transceiver module pluggable into a host system. Petitioner asserted that combining Unitt ’026's ONU with Tan's hot-pluggable design rendered the claims obvious.
  • Motivation to Combine: The motivation was similar to Ground 1: Unitt ’026's explicit guidance to create a miniaturized, "plug and play" system would lead a POSITA to known pluggable transceiver designs. Tan provided a clear example of such a design and further stated that its transceiver could have application as an ONU on customer premises, directly linking its technology to the system in Unitt ’026.
  • Expectation of Success: A POSITA would expect success in implementing Unitt '026's ONU functions within the hot-pluggable module structure taught by Tan, as it represented the integration of known functionalities into a standard form factor.

Ground 3: Obviousness over Unitt, Aronson, and Block - Claims 6 and 23 are obvious over Unitt ’026 in view of Aronson and Block.

• Prior Art Relied Upon: Unitt ’026 (Application # 2002/0146026), Aronson (Application # 2002/0149821), and Block (Patent 5,039,194).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the Unitt/Aronson combination from Ground 1 to address the specific optical fiber connector types recited in dependent claims 6 and 23. While the primary combination taught a pluggable transceiver, these claims required a connector selected from a specific list (e.g., SC, LC, FC). Petitioner argued that Block disclosed an optical fiber communication module with an FC-type optical fiber connector, which was one of the listed types.
  • Motivation to Combine: A POSITA, having created the pluggable Unitt/Aronson transceiver, would have needed to select a standard optical fiber connector. It would have been a simple and obvious design choice to use one of the finite number of well-known, commercially available connector types from that era, such as the FC-type connector taught by Block.
  • Expectation of Success: Incorporating a standard connector like that shown in Block into the combined Unitt/Aronson device would be a routine and predictable task for a POSITA.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Xu (to teach adjusting optical power levels, for claims 13 and 27) and Dudziak (to teach 8/10 bit encoding, for claims 17 and 31). These grounds added specific prior art to the primary Unitt/Aronson and Unitt/Tan combinations to address limitations in other dependent claims.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate because the prior art references asserted in the petition (e.g., Unitt ’026, Aronson) were substantively different from the art considered by the examiner during the original prosecution.
• Petitioner also argued against discretionary denial under Fintiv, stating that the parallel district court litigation was in its infancy with no trial date set, minimal discovery had occurred, and the invalidity contentions in court were expected to focus on different, product-based prior art, resulting in little overlap of issues with the IPR.

5. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-31 of the ’754 patent as unpatentable under 35 U.S.C. §103.