II VI Inc v. Alexander Soto

1. Case Identification

• Case #: IPR2022-00085
• Patent #: 10,763,958
• Filed: October 29, 2021
• Petitioner(s): II-VI Incorporated
• Patent Owner(s): Alexander Soto and Walter Soto
• Challenged Claims: 1-20

2. Patent Overview

• Title: Optical Transceiver with OTDR/OFDR Function
• Brief Description: The ’958 patent discloses a method for monitoring an optical fiber using an optical transceiver with optical time domain reflectometry (OTDR) and/or optical frequency domain reflectometry (OFDR) capabilities. The invention purports to allow for in-service fault detection using the same wavelength for both fault detection and data communication, aiming to provide more efficient testing and repair.

3. Grounds for Unpatentability

Ground 1: Claims 1-20 are obvious over Soto

• Prior Art Relied Upon: Soto (Application # 2009/0016714).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Soto, by itself, rendered all challenged claims obvious. Soto taught a system and method for in-service OTDR (ISOTDR) that used the same "data wavelength" for both network communications and fault detection, addressing a stated need to perform maintenance without separate wavelengths or costly downtime. Petitioner asserted that Soto disclosed all elements of independent claim 1, including connecting a transceiver with OTDR functionality to a network terminal, performing data communications and OTDR functions on the same wavelength responsive to a disruption, and gathering, storing, and reporting fault measurements. Petitioner systematically mapped each limitation of dependent claims 2-20 to explicit teachings or obvious modifications of Soto’s system, covering aspects like visualizing reports, initiating tests via network request (e.g., SNMP), using specific interfaces (e.g., serial gigabit media independent interface), and performing tests in synchrony with network protocol frames.
  • Motivation to Combine (for §103 grounds): Not applicable as this ground relied on a single reference. Petitioner argued that all claimed features were either expressly taught by Soto or would have been obvious variations to a person of ordinary skill in the art (POSITA).
  • Expectation of Success (for §103 grounds): Not applicable.

Ground 2: Claims 1-7, 9-10, and 12-20 are obvious over Saunders in view of Liu

• Prior Art Relied Upon: Saunders (Application # 2004/0208501) and Liu (Patent 6,005,694).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that the combination of Saunders and Liu disclosed all limitations of the challenged claims. Saunders taught a network diagnostic system using OTDR, and Liu taught a system for detecting optical signal degradation using an OTDR module connected via an optical cross-connect switch (OCCS). Petitioner argued that the combined teachings disclosed an optical transceiver with OTDR functionality (Liu) connected to a network terminal (Saunders, Liu), performing OTDR tests on the same wavelength as data communications (Liu), responsive to a disruption in data communications (motivated by Saunders' teaching of initiating diagnostics upon sensing increased bit error rates). The combination also allegedly taught storing fault data in the transceiver and reporting it for analysis, consistent with both references.
  • Motivation to Combine (for §103 grounds): Petitioner argued a POSITA would combine these references to create a more robust diagnostic system. Saunders disclosed performing OTDR over a dedicated optical supervisory channel but noted that this was the "preferable" method, suggesting other methods were known. Saunders also taught that faults could be wavelength-dependent. This would have motivated a POSITA to seek out the switched OTDR connection method taught by Liu, which allowed for OTDR testing at the actual data wavelength, providing a more accurate fault diagnosis than testing on a separate supervisory wavelength.
  • Expectation of Success (for §103 grounds): Petitioner asserted a POSITA would have a reasonable expectation of success because both references described similar, compatible networking architectures and addressed the common problem of in-service fiber optic fault detection.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claims 1-3 and 7-16 based on Bartur’118 (Application # 2003/0113118) alone, and alternatively over Bartur’761 (Application # 2005/0201761), which incorporated Bartur’118 by reference.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: A central contention of the petition was that the ’958 patent was not entitled to its claimed 2003 priority date, but rather to a priority date no earlier than March 23, 2011. Petitioner argued that the original 2003 provisional application and subsequent applications in the chain failed to provide written description support for the claimed "and/or OFDR" functionality, as OFDR was not mentioned until the 2011 application. This later priority date was critical for establishing that references like Soto (published 2009) qualify as prior art under 35 U.S.C. §102(b).

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under Fintiv. The primary reasons asserted were that the parties in the parallel district court litigation (NDCA Action) had stipulated to a stay pending the outcome of the inter partes review (IPR). Furthermore, Petitioner had agreed not to pursue in the district court any invalidity ground that was raised or could have been reasonably raised in the IPR, thereby preventing duplicative efforts and conserving judicial resources. Petitioner also noted that no trial date was set in the litigation.

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-20 of the ’958 patent as unpatentable.