OpTicis Co Ltd v. InNeos LLC

1. Case Identification

• Case #: IPR2023-01256
• Patent #: 7,198,416
• Filed: July 28, 2023
• Petitioner(s): Opticis Co., Ltd.
• Patent Owner(s): Inneos LLC
• Challenged Claims: 1, 2, 6, 7, and 9

2. Patent Overview

• Title: Optical combiner device
• Brief Description: The ’416 patent discloses an optical multiplexing device that combines light from multiple lasers, each with a different wavelength, into a single optical fiber. The patent's stated point of novelty is the use of a focusing lens with separate conceptual radial sectors to focus each distinct collimated laser beam onto a single spot.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kurita - Claims 1, 2, 6, 7, and 9 are obvious over Kurita.

• Prior Art Relied Upon: Kurita (Japanese Patent No. 2848279).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kurita teaches every element of the challenged claims. Kurita discloses an "optical combiner" for data communications that uses a 2x2 array of lasers with different wavelengths, a corresponding 2x2 array of collimating lenses, and a single focusing lens to converge the collimated beams into an optical fiber. Petitioner asserted that the radial arrangement of collimating lenses shown in Kurita's figures inherently results in the collimated light passing through separate radial sectors of the focusing lens, as this configuration would be understood by a Person of Ordinary Skill in the Art (POSITA) to improve coupling efficiency. The dependent claims' limitations, such as n=4 lasers in a 2x2 array (claim 2) and the absence of dielectric filters (claims 6 and 9), were also alleged to be explicitly or implicitly taught by Kurita.

Ground 2: Obviousness over Kurita in view of LaMarche and/or Lemoff - Claims 1, 2, 6, 7, and 9 are obvious over Kurita in view of LaMarche and/or Lemoff.

• Prior Art Relied Upon: Kurita (Japanese Patent No. 2848279), LaMarche (Patent 5,078,499), and Lemoff (Patent 6,870,195).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that to the extent Kurita alone does not render the claims obvious, its teachings can be combined with LaMarche and/or Lemoff. Kurita provides the base system of lasers, collimating lenses, and a focusing lens. LaMarche was cited for its express teaching of using a radial arrangement of collimating lenses to improve coupling efficiency, reduce complexity, and achieve high-bandwidth connections, thereby explicitly suggesting the "separate radial sectors" limitation. Lemoff was cited for its disclosure of a receptacle and ferrule connector for securing an optical fiber, which Petitioner argued provides a clear teaching for implementing the "stopped single optical fiber" limitation.
  • Motivation to Combine: A POSITA would combine Kurita with LaMarche's radial lens arrangement to achieve the known benefits of improved coupling efficiency and reduced complexity. A POSITA would also be motivated to incorporate Lemoff's standardized fiber-securing mechanism into Kurita's device to improve alignment stability and ensure predictable performance.
  • Expectation of Success: The combination involved applying known optical design principles (radial arrangement) and standard mechanical components (fiber connectors) to a known type of device to achieve predictable improvements in performance and reliability.

Ground 5: Obviousness over Bhandarkar - Claims 1, 2, 6, 7, and 9 are obvious over Bhandarkar.

• Prior Art Relied Upon: Bhandarkar (Application # 2005/0069013).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Bhandarkar, a reference the Patent Owner swore behind during original prosecution, discloses all elements of the challenged claims. Bhandarkar teaches a WDM multiplexer with a 2x2 array of lasers, a corresponding array of collimating lenses, and a focusing lens to couple the light into a single fiber. Similar to the argument against Kurita, Petitioner contended this radial component layout inherently satisfies the limitation of beams passing through separate radial sectors of the focusing lens.
  • Key Aspects: The central thrust of this ground was the legal and technical argument that Bhandarkar is valid prior art. Petitioner asserted the examiner materially erred by accepting uncorroborated inventor declarations to antedate Bhandarkar during prosecution, rendering the "swear-behind" legally improper.

• Additional Grounds: Petitioner asserted additional obviousness challenges over Lemoff alone (Ground 3) and Lemoff in view of LaMarche (Ground 4), arguing that Lemoff's optical signal emitter with a radial array of lasers could be obviously modified to include collimating lenses as taught by general knowledge or by LaMarche.

4. Key Claim Construction Positions

• "focusing means": Petitioner argued this term is a means-plus-function limitation under 35 U.S.C. §112, ¶6. The claimed function is "focusing said n collimated output beams onto a single spot," and the only corresponding structure disclosed in the ’416 patent's specification is a "focusing lens" and its equivalents.
• "stopped": Petitioner contended that a POSITA would understand the term "stopped single optical fiber" to mean "fixed," such that its movement is substantially limited. This construction was based on the specification's description of a fiber stop and ferrule, a common arrangement for fixing an optical fiber in place to ensure stable light coupling.

5. Key Technical Contentions (Beyond Claim Construction)

• Improper Priority Claim: A central contention underlying Ground 5 was that the ’416 patent is not entitled to the July 17, 2003 conception date asserted during prosecution. Petitioner argued the inventor declarations used to antedate Bhandarkar were legally insufficient due to a lack of independent corroboration. Further, Petitioner contended the patent's provisional application fails to provide adequate written description for the "separate radial sectors" limitation, independently defeating the claim to the earlier priority date and making Bhandarkar (with a September 2003 provisional filing date) valid prior art.

6. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both §314(a) (Fintiv) and §325(d).
• §314(a) / Fintiv: Petitioner asserted that the parallel district court litigation was in a very early stage, with minimal investment by the parties and the court. It was argued that the petition presents strong, compelling challenges based on prior art not considered during prosecution, and thus the Fintiv factors weigh strongly in favor of institution.
• §325(d): Petitioner argued that the primary references for Grounds 1-4 were never before the examiner. For Ground 5, which relies on the previously considered Bhandarkar reference, Petitioner contended that the examiner committed a material error by accepting the legally deficient "swear-behind" declarations. This error, Petitioner argued, means the office did not substantively consider Bhandarkar's teachings, making review appropriate.

7. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 6, 7, and 9 of the ’416 patent as unpatentable.