Panduit Corp v. Corning Optical Communications LLC

1. Case Identification

• Case #: IPR2022-00743
• Patent #: 10,120,153
• Filed: March 22, 2022
• Petitioner(s): Panduit Corp.
• Patent Owner(s): Corning Optical Communications, LLC
• Challenged Claims: 1-29

2. Patent Overview

• Title: Fiber Optic Equipment and Apparatuses
• Brief Description: The ’153 patent discloses high-density fiber optic equipment, such as a chassis containing multiple translatable trays, which in turn hold fiber optic modules. The system is designed to allow modules with both front and rear connections to be installed or removed from either the front or rear of the chassis.

3. Grounds for Unpatentability

Ground 1: Claims 1-29 are obvious over Smrha, Henson, Niazi, Yamaguchi, and Sanchez

• Prior Art Relied Upon: Smrha (Patent 7,570,861), Henson (Patent 5,420,958), Niazi (Application # 2008/0037209), Yamaguchi (Japanese Application # 2005-181600), and Sanchez (Patent 6,086,415).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the primary reference, Smrha, taught a fiber optic chassis with a translatable drawer and independently movable modules, meeting many core limitations of independent claims 1 and 23. To meet the remaining limitations, Petitioner combined Smrha with other references. Niazi was cited for its teaching of stacking multiple trays in a single chassis to increase density. Henson was used to teach a chassis with both front and rear doors, allowing for the installation and removal of modules from either end. Yamaguchi was introduced for its disclosure of cassette-style modules with front and rear adapters, internal fiber connections, and a user-actuatable latching mechanism for releasable removal. Finally, Sanchez was cited to teach a fiber optic routing element with a U-shaped flange extending "frontward, upward, and rearward" to guide cables, allegedly meeting the specific "Front End Term" limitation in the independent claims.
  • Motivation to Combine: A POSITA would combine these references to achieve predictable benefits. Combining Smrha with Henson's front/rear access would improve serviceability, a known goal in the field. Incorporating Niazi’s stacking design was a straightforward way to increase component density. Modifying Smrha's system to use Yamaguchi's superior cassette-style modules would provide plug-and-play interchangeability, better fiber protection, and secure latching. Adding a routing flange like that in Sanchez was a well-known technique to improve cable management, organization, and labeling.
  • Expectation of Success: Petitioner contended a POSITA would have a high expectation of success, as the combination involved applying known solutions from analogous art to solve common problems in rack-mounted equipment, resulting in a predictable aggregation of features.

Ground 2: Claims 1-29 are obvious over Smrha, Henson, Niazi, and Yamaguchi

• Prior Art Relied Upon: Smrha (Patent 7,570,861), Henson (Patent 5,420,958), Niazi (Application # 2008/0037209), and Yamaguchi (Japanese Application # 2005-181600).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative to Ground 1, contingent on a broader construction of the "Front End Term." Petitioner argued that if the term is not limited to the specific flange structure of Sanchez, then Smrha's own D-ring retaining rings would satisfy the limitation. Petitioner showed that by simply rotating Smrha's disclosed D-ring by 90 degrees—a simple design choice—it would form a structure with successive sections extending frontward, upward, and rearward for routing cables. Under this construction, Sanchez becomes unnecessary, and the combination of Smrha, Henson, Niazi, and Yamaguchi would render all challenged claims obvious for the same reasons articulated in Ground 1.
  • Motivation to Combine: The motivation to combine Smrha, Henson, Niazi, and Yamaguchi remained identical to that of Ground 1. The core motivation was to create a high-density, modular, and easily accessible fiber optic management system by integrating known components and features.

4. Key Claim Construction Positions

• Term: "Front End Term" (recited in independent claims 1 and 23 as "a front end with at least one fiber optic routing element that comprises successive material sections extending frontward, upward, and rearward, respectively...")
• Petitioner's Position: Petitioner argued that the correct construction was the "Original Construction" from a prior USITC investigation, which defined a specific flange structure. Under this construction, Ground 1 is operative, as Sanchez disclosed such a flange. However, Petitioner noted that if the Board adopted a broader construction that encompasses D-ring shaped elements (as the USITC ALJ ultimately applied), then Ground 2 would be operative because Smrha's own D-rings would meet the limitation. This dual-pronged argument based on claim construction was central to the petition's structure.

5. Arguments Regarding Discretionary Denial

• Against §325(d) Denial (Advanced Bionics): Petitioner argued institution was proper because the prior art and arguments were not substantively considered by the Examiner during prosecution. The petition’s primary combination, centered on Smrha, was never before the Examiner, who relied on different art. Petitioner contended the Examiner erred, in part because Patent Owner’s voluminous prior art disclosures during prosecution (totaling thousands of pages) obscured the significance of key references like Smrha and Yamaguchi, which Patent Owner knew were material from prior IPRs on related patents.
• Against §314(a) Denial (Fintiv): Petitioner argued against denial based on a parallel USITC proceeding. The arguments centered on Fintiv factors 4 (issue overlap) and 6 (merits). Petitioner asserted minimal overlap because the USITC case involved only 4 of the 29 challenged claims, and the prior art and invalidity theories in the IPR petition were not presented to the USITC. Furthermore, Petitioner argued that the USITC ALJ’s findings contradicted the Board's own prior decisions on related patents (sharing the same specification), weighing heavily in favor of institution.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-29 of the ’153 patent as unpatentable.