Panduit Corp v. Corning Optical Communications LLC

1. Case Identification

• Case #: IPR2021-01562
• Patent #: 10,444,456
• Filed: October 18, 2021
• Petitioner(s): Panduit Corp.
• Patent Owner(s): Corning Optical Communications, LLC
• Challenged Claims: 1-30

2. Patent Overview

• Title: High Density and Bandwidth Fiber Optic Apparatuses and Related Equipment and Methods
• Brief Description: The ’456 patent describes a fiber optic apparatus designed to achieve high connection densities. The apparatus comprises a chassis for an equipment rack, which supports a plurality of extendable equipment trays that hold multiple fiber optic modules. The asserted novelty centers on achieving a specific fiber optic connection density within a standard rack unit (U space).

3. Grounds for Unpatentability

Ground 1: Obviousness over Smrha, Coburn, and Corning Adapters - Claims 1-8, 10-20, 22-25, and 27-29 are obvious over Smrha in view of Coburn and the Corning Fiber Optic Adapters catalog.

• Prior Art Relied Upon: Smrha (Patent 7,570,861), Coburn (Application # 2008/0175550), and Corning Fiber Optic Adapters (a 2005 product catalog).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Smrha disclosed the core structural elements of the challenged claims, including a rack-mountable chassis with extendable equipment trays configured to receive multiple fiber optic modules (which Smrha calls "adapter blocks"). However, Smrha’s simple adapter blocks did not expressly teach an "internal chamber" with optical fibers connecting front and rear components. To supply this missing element, Petitioner pointed to Coburn, which taught well-known cassette-style fiber optic modules containing an internal chamber, optical fibers, front-side adapters (e.g., LC duplex), and rear-side adapters (e.g., MPO). For the key density limitations (e.g., claim 1[e]), Petitioner used the dimensions for standard LC-type duplex adapters from the Corning Fiber Optic Adapters catalog to demonstrate that a POSITA could arrange these known components within Smrha’s chassis to meet the claimed density of at least 98 fiber optic connections per U space.
  • Motivation to Combine: A POSITA would combine Coburn’s cassette-style modules with Smrha’s chassis as a simple substitution of one known component for another. The motivation would be to gain the known benefits of cassette-style modules, such as improved fiber protection, modularity, and plug-and-play interchangeability, which were advantages over Smrha's simpler design. Further, a POSITA would be motivated to increase connection density to meet the known industry demand for space efficiency in data centers. Modifying Smrha’s module configuration using the known module designs from Coburn and standard adapter dimensions from the Corning catalog was presented as a predictable design choice to achieve this goal.
  • Expectation of Success: Petitioner asserted a POSITA would have a reasonable expectation of success because the combination involved applying known design principles (increasing component density) and substituting interchangeable, well-understood components (Coburn's modules for Smrha's adapter blocks) to achieve a predictable improvement in density and functionality.

Ground 2: Obviousness over Smrha, Coburn, Corning Adapters, and Yamaguchi - Claims 9, 21, 26, and 30 are obvious over the combination of Smrha, Coburn, and Corning Fiber Optic Adapters in view of Yamaguchi.

• Prior Art Relied Upon: Smrha (Patent 7,570,861), Coburn (Application # 2008/0175550), Corning Fiber Optic Adapters (a 2005 product catalog), and Yamaguchi (Japanese Patent No. 2005-181600A).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination in Ground 1 to address additional dependent claims reciting specific locking features. Petitioner argued that the base combination of Smrha, Coburn, and the Corning catalog rendered most limitations obvious, as detailed above. Yamaguchi was introduced to teach the specific limitation of a locking feature on module guide members that cooperates with a module to prevent movement, including a "stop feature." Yamaguchi disclosed a fiber optic module that locked into place using an "engaging hook" that fit into an "engaging hole" on a module guide, which also included a stopper, thereby teaching the claimed functionality.
  • Motivation to Combine: A POSITA would be motivated to incorporate Yamaguchi’s locking mechanism into the proposed Smrha/Coburn module design to achieve a simpler and more efficient locking system. Petitioner argued that Yamaguchi’s design was less complex than other known locking mechanisms and that incorporating it would be a simple substitution of one known locking configuration for another. This modification would provide the benefit of a simplified module design while maintaining secure placement within the equipment tray.
  • Expectation of Success: The integration of a well-known locking mechanism (Yamaguchi) into the structure of a fiber optic chassis (Smrha/Coburn) was asserted to be a routine design task for a POSITA, with a high expectation of success.

4. Key Claim Construction Positions

• For the purposes of the IPR, Petitioner adopted Patent Owner's proposed constructions from a related ITC investigation for two key terms:
  • "width of the front side of at least one fiber optic module": Construed as "the width of the side of the module that when inserted faces the front of the chassis, excluding any module rail guides or protrusions that are used to insert the module into the chassis or remove it from the chassis."
  • "U space": Construed by its plain and ordinary meaning, such as "a rack unit, which is a standardized measurement of 1.75 inches... in height within a standardized 19-inch rack or 23-inch rack."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under either §314(a) or §325(d).
  • §314(a) (Fintiv Factors): Petitioner contended that denial based on parallel litigation was unwarranted. It argued that the parallel district court case was stayed and did not assert the ’456 patent. Regarding a parallel ITC investigation involving the ’456 patent, Petitioner argued for institution because the IPR petition challenged a different scope of claims and relied on prior art (notably Smrha) that was not considered by the ITC.
  • §325(d): Petitioner argued that denial was inappropriate because the primary references and arguments were not previously presented to and considered by the USPTO. The patent was allowed without any office actions or substantive discussion of prior art during prosecution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-30 of Patent 10,444,456 as unpatentable.