PTAB
IPR2025-00433
Cambridge Industries USA Inc v. Applied Optoelectronics Inc
Key Events
Petition
Table of Contents
petition
1. Case Identification
- Case #: IPR2025-00433
- Patent #: 9,523,826
- Filed: January 17, 2025
- Petitioner(s): Cambridge Industries USA, Inc.
- Patent Owner(s): Applied Optoelectronics, Inc.
- Challenged Claims: 1-7
2. Patent Overview
- Title: Pluggable Optical Transceiver Module
- Brief Description: The ’826 patent discloses a pluggable optical transceiver module for insertion into an optical communication system. The module features a main body with sliding slots and a sliding component with extending arms that move between a fastening and a releasing position, secured by an elastic component confined within the module.
3. Grounds for Unpatentability
Ground 1: Anticipation of Claims 1-7 by Wu under §102
- Prior Art Relied Upon: Wu (China Patent No. CN201820017).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Wu, which teaches a hot-pluggable optical transceiver module, discloses every limitation of the challenged claims. Independent claims 1 and 7 are allegedly met by Wu's disclosure of a main body with side surfaces and sliding slots, and a sliding component with a linkage arm (handle) and two extending arms. Petitioner asserted that Wu’s extending arms are slidably disposed in the slots to move between fastening and releasing positions. Crucially, Petitioner contended that Wu discloses an elastic component (spring) located in a limiting space between a first limiting surface and a limited part of the extending arm, and that this elastic component is covered by the extending arm and thus confined by the main body and sliding component, as required by the claims.
- Key Aspects: Petitioner mapped the limitations of dependent claims 2-6 to specific features in Wu, arguing that Wu’s main body includes a head part and an inserted part (claim 2), its fastening part has a specific fastening surface geometry (claim 3), its head part includes slots for optical fibers (claim 4), it includes two elastic components (claim 5), and it includes a pull handle pivoted on the linkage arm (claim 6).
Ground 2: Anticipation of Claims 1-7 by Mizue under §102
- Prior Art Relied Upon: Mizue (Patent 7,201,520).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Mizue, which was cited during prosecution but only in an obviousness combination, anticipates all challenged claims. Petitioner asserted that Mizue discloses a pluggable optical module with every element recited in independent claims 1 and 7. This includes a main body with side surfaces and sliding slots, and a sliding component (actuator 20) with a linkage arm and two extending arms. Petitioner mapped Mizue's elastic component (spring 30) to the claimed elastic component, arguing it is located in a limiting space (groove 26p) between a first limiting surface (26q) and a limited part (flange 20g).
- Key Aspects: A central contention for this ground is that the Patent Owner mischaracterized Mizue during prosecution by arguing its spring was exposed and not "covered by the extending arm." Petitioner countered that the relative dimensions in Mizue’s figures show the spring is much longer than any opening and is therefore confined. Furthermore, Petitioner argued that even if a "defect" existed, it would have been an obvious design choice for a POSITA to alter the cut in the arm to fully cover the spring. Petitioner also systematically mapped each feature of dependent claims 2-6 to corresponding structures disclosed in Mizue.
4. Arguments Regarding Discretionary Denial
- Petitioner presented arguments that discretionary denial under both §325(d) and §314(a) would be inappropriate.
- §325(d) (Same or Substantially the Same Art or Arguments): Petitioner argued that its challenges are not cumulative of art considered during prosecution. Wu was never presented to the examiner. Although Mizue was of record, it was only used as a secondary reference in an obviousness rejection, not as a primary anticipatory reference as argued in this petition. Petitioner contended that the examiner never considered the specific anticipation arguments presented, particularly regarding the confinement of Mizue's spring element, which Petitioner alleged was mischaracterized by the Patent Owner during prosecution.
- §314(a) (Fintiv Factors): Petitioner argued that the Fintiv factors weigh against discretionary denial. The parallel district court litigation is in its very early stages, with a trial date set for June 2026, well after the statutory deadline for a Final Written Decision (FWD). Petitioner noted that discovery is preliminary and a claim construction hearing is not scheduled until April 2025, making it unlikely a substantive order will issue before the Board's institution decision. To further prevent overlap, Petitioner stipulated that it will not pursue invalidity in the district court using the specific grounds presented in this petition. Finally, Petitioner asserted the merits of the petition are strong, which weighs in favor of institution.
5. Relief Requested
- Petitioner requests institution of an inter partes review and cancellation of claims 1-7 of the ’826 patent as unpatentable.
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