PTAB

IPR2025-00434

Cambridge Industries USA Inc v. Applied Optoelectronics Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Multi-Channel Parallel Optical Receiving Module
  • Brief Description: The ’301 patent discloses a multi-channel optical receiving module that includes a carrier, a light receiving chip, and an array of optoelectronic diodes. An arrayed waveguide grating (AWG) on the carrier separates a multiwavelength optical signal into multiple channels and reflects them from an angled output surface onto the diodes for conversion into electrical signals.

3. Grounds for Unpatentability

Ground 1: Claims 1-7 are anticipated under 35 U.S.C. §102 by Shen

  • Prior Art Relied Upon: Shen (Application # 2016/0349451) and its underlying provisional application (U.S. Provisional Patent App. 62/166,015).
  • Core Argument:
    • Prior Art Mapping: Petitioner argued that Shen discloses every element of the challenged claims. Shen teaches a multi-channel optical connection module with a carrier (substrate 100 and PCB 600), a light receiving chip (TIA IC 700), and an optical detector with a plurality of optoelectronic diodes (detector 300). Shen’s AWG is disposed on the carrier, separates an input signal into multiple channels, and reflects them from an angled output surface (40°-50° reflector) to the detector. Petitioner contended the examiner erred during prosecution by overlooking that Shen’s disclosure of spaced-apart output waveguides inherently requires discrete photodiodes to prevent crosstalk. For dependent claims, Shen was argued to disclose placing components on a circuit board (claim 2), having diodes equal to optical paths (claim 3), an angle range encompassing 42 degrees (claim 4), and the use of a lens for coupling (claims 5-6).

Ground 2: Claims 1-7 are anticipated under 35 U.S.C. §102 by Soldano

  • Prior Art Relied Upon: Soldano (Patent 9,768,901).
  • Core Argument:
    • Prior Art Mapping: Petitioner asserted that Soldano, which was cited but not applied during prosecution, anticipates all challenged claims. Soldano describes a multi-channel optical receiving device with a silicon photonics chip (301) that functions as the claimed "carrier." This carrier supports a light receiving chip, an AWG (302), and a plurality of optoelectronic diodes (photodiodes 505). Petitioner contended that Soldano’s AWG divides a multiwavelength signal and redirects it via an angled, polished end (409) to the photodiodes, which are located on the same top surface of the carrier. Petitioner argued a POSITA would understand that redirecting optical signals from horizontal to vertical beams as taught by Soldano would require an angle within the claimed range of 41 to 46 degrees. Soldano was also argued to teach the limitations of dependent claims, including placement on a circuit board, a corresponding number of diodes, and the use of a lens for coupling.

4. Key Claim Construction Positions

  • "carrier": Petitioner argued that while a POSITA would construe "carrier" as "a ceramic or silicon substrate," for the purposes of the petition, it adopted the Patent Owner's proposed construction from co-pending litigation: "one or more components for supporting ROSA components such as an AWG." Petitioner asserted that under this construction, the prior art carriers (e.g., Shen's substrate and PCB) meet the limitation.
  • "the same top surface of the end of the carrier": Petitioner proposed this phrase be construed to mean "the topmost surface of the carrier," clarifying that this does not require a single planar surface. This construction is based on the ’301 patent’s figures and prosecution history, where the carrier’s top surface was described as having distinct elevations.

5. Arguments Regarding Discretionary Denial

  • §325(d) (Same or Substantially the Same Art): Petitioner argued against discretionary denial under §325(d), asserting that the grounds are not cumulative to art considered during prosecution. Although Shen was cited, it was only in combination with another reference (Pezeshki), and the examiner’s alleged error regarding Shen's teaching of discrete diodes was never addressed. Further, Shen’s provisional application was not cited or considered. Soldano was listed on a Notice of References but was never applied in a rejection or substantively discussed by the examiner.
  • §314(a) (Fintiv Factors): Petitioner argued against discretionary denial under Fintiv based on the early stage of a parallel district court case. Petitioner highlighted that the trial date is set for June 2026, well after the statutory deadline for a Final Written Decision. It was argued that minimal investment has occurred in the court case, with claim construction not scheduled until April 2025. Petitioner also stipulated that, if IPR is instituted, it will not pursue the same invalidity grounds in the district court, favoring institution under Fintiv factor 4.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-7 of the ’301 patent as unpatentable.