PTAB

IPR2023-00960

Nokia Of America Corp v. Soto Alexander

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Pluggable Optical Transceiver Module for Passive Optical Networks
  • Brief Description: The ’754 patent discloses a network client optical transceiver module for use in a Passive Optical Network (PON). The module has a pluggable form-factor and contains a control module that receives timing allocations (start times) from the network's head-end to manage upstream data transmissions and avoid collisions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Shraga in view of Togami - Claims 1-16 and 18-30 are obvious over Shraga in view of Togami.

  • Prior Art Relied Upon: Shraga (Patent 6,697,374) and Togami (Patent 6,439,918).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Shraga taught a complete PON system, including a central head-end (OLT) that communicates with multiple end-point clients (ONTs) and allocates specific upstream transmission timeslots to each client to manage data flow. However, Shraga did not explicitly disclose that its transceiver modules were pluggable. Togami was argued to remedy this by teaching a compact, hot-pluggable opto-electronic transceiver module (specifically a Small Form-factor Pluggable or SFP) designed for use in optical networks and compliant with industry standards. The combination was asserted to teach all elements of the independent claims, including the pluggable form-factor, the control module receiving start times, and the electrical interface for coupling to a switch or router.
    • Motivation to Combine: A POSITA would combine Shraga’s PON system with Togami’s pluggable transceiver for several reasons that represented well-known industry goals. The motivations included: greater flexibility in system configuration, elimination of system downtime during maintenance (as taught by Togami’s hot-pluggable nature), miniaturization to increase port density, and cost-effectiveness. Petitioner asserted that using small form-factor pluggable transceivers in PONs was already a known and implemented practice in the art at the time.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because combining the references involved implementing a known component (a pluggable transceiver) into a standard network architecture (a PON) to achieve predictable benefits like improved serviceability and compactness, which were stated goals in the art.

Ground 2: Obviousness over Shraga, Togami, and ITU-T Standards - Claims 1-16 and 18-30 are obvious over Shraga and Togami in view of The G.984.3 Draft Recommendation and/or Contribution 104.

  • Prior Art Relied Upon: Shraga (Patent 6,697,374), Togami (Patent 6,439,918), and two related ITU-T standards documents, referred to collectively as "the G.984.3 Recommendation/Contribution 104."
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination in Ground 1, adding the G.984.3 Recommendation/Contribution 104 to provide more specific, standardized details for the PON functionalities generally described in Shraga. Petitioner argued these ITU-T documents, which describe the Transmission Convergence (TC) layer for Gigabit-capable PONs (GPONs), disclosed specific claim limitations with greater clarity. For instance, the documents explicitly described a framing structure containing a "StartTime field" and a "StopTime field" for allocating transmission windows, directly corresponding to the "start times" and "end times" of claims 1 and 3. Further, they detailed standard procedures for discovering new clients, compensating for transmission delays through "ranging," and optical power control, which Petitioner mapped to dependent claims 10, 11, and 13, respectively.
    • Motivation to Combine: Petitioner contended that a POSITA seeking to implement the PON system of Shraga using the pluggable hardware of Togami would have been naturally motivated to consult industry standards like The G.984.3 Draft Recommendation and/or Contribution 104. Adherence to such standards was crucial for ensuring interoperability of equipment from different vendors. These documents provided the necessary in-depth, standardized implementation details for concepts like framing, ranging, and media access control (MAC) that were foundational to operating a functional PON.
    • Expectation of Success: A POSITA would have had a high expectation of success, as this combination involved applying a specific industry standard (the G.984.3 Recommendation/Contribution 104) to its intended environment: a PON (Shraga) utilizing standard hardware components (Togami).

4. Arguments Regarding Discretionary Denial

  • §325(d) - Same or Similar Art: Petitioner argued that denial under 35 U.S.C. §325(d) is unwarranted because none of the asserted prior art references (Shraga, Togami, G.984.3 Recommendation/Contribution 104) were considered during the original prosecution. It was argued the asserted art is materially different from the art of record, which the examiner characterized as being limited to a Wide Area Network (WAN), whereas the asserted art applies more broadly to PONs.
  • §314(a) - Fintiv Factors: Petitioner argued against discretionary denial under Fintiv based on a parallel district court case, asserting that the litigation is in a very early stage, with the trial date scheduled far in the future (May 2024) and claim construction not yet completed. Petitioner further stipulated that it would not pursue invalidity in the district court using the specific prior art combinations presented in the IPR petition, thereby reducing overlap and favoring institution.
  • Serial Petitions: Petitioner contended that this is its first IPR petition against the ’754 patent. A previously filed IPR by an unrelated party was voluntarily terminated prior to an institution decision and relied on different prior art.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-16 and 18-30 of the ’754 patent as unpatentable.