PTAB

IPR2025-00839

NKT Photonics Inc v. Omni Continuum LLC

Key Events

Petition

petition

Title: Infrared Light Source
Brief Description: The ’116 patent discloses an infrared light source that shifts the wavelength of an optical signal using the Raman effect. The system combines signals from at least two pump lasers into a wavelength shifter, which comprises multiple distinct waveguide structures to achieve cascaded wavelength shifts.

Prior Art Relied Upon: Shaw (Application # 2003/0012491).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Shaw discloses every element of the challenged claims. Shaw describes an infrared optical device using stimulated Raman scattering. Its embodiment in FIG. 8 uses a 2x2 coupler to combine two different laser sources: a first pump laser (Continuum Mirage OPO) generating a signal at 1.5 µm and a second pump laser (diode laser) generating a signal at 1.56 µm. The 60 nm difference in wavelength is argued to be "substantially different." The combined signal is fed into a first waveguide structure (As-Se fiber 210) which acts as a wavelength shifter. Shaw further discloses cascading multiple Fabry-Perot cavities or using different fiber materials to create a second, substantially different waveguide structure for achieving successive Stokes shifts to longer wavelengths, thus teaching all key limitations of independent claims 1 and 25.

Prior Art Relied Upon: Shaw (Application # 2003/0012491).
Core Argument for this Ground:
- Prior Art Mapping: This ground was asserted as an alternative to Ground 1. To the extent the Patent Owner argues for minor differences between the claims and Shaw’s disclosure, Petitioner contended such differences would have been obvious.
- Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would have been motivated to combine the various teachings and embodiments within Shaw (e.g., from FIGS. 4, 6, and 8) to achieve the claimed configuration. The motivation stemmed from the well-known goal of creating longer wavelength infrared light sources for applications like surgery and remote sensing, which Shaw explicitly mentions.
- Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success as it involved combining known elements for their intended purposes.

Prior Art Relied Upon: Shaw (Application # 2003/0012491) and Islam (Patent 6,239,903).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Shaw provides the primary framework for the claimed invention. Islam was cited to supplement Shaw's teachings, particularly regarding the use of wavelength-division multiplexing (WDM) couplers to combine pump signals and its explicit disclosure of a cascaded system using two distinct optical fibers spliced together to achieve multiple Raman shifts. Islam's FIG. 9b shows a first fiber for a first cascade order and a second, distinct fiber for a second cascade order, directly teaching the use of two "substantially different" waveguide structures for sequential shifting.
- Motivation to Combine (for §103 grounds): A POSITA would combine Islam’s explicit two-fiber configuration with Shaw’s system to provide "successively longer wavelengths," a goal discussed in both references. Since both Shaw and Islam address optical amplification for telecommunications and other applications, a POSITA would have readily looked to Islam to enhance the cascaded shifting capabilities of the system disclosed in Shaw.
- Expectation of Success (for §103 grounds): A POSITA would have reasonably expected success because combining standard components like WDM couplers and using multiple, distinct fibers for cascaded Raman shifting was a well-known and predictable technique for achieving longer wavelengths.

"substantially different" (wavelengths): Petitioner argued this term is indefinite in parallel litigation but asserted for this IPR that the 60 nm wavelength difference disclosed in Shaw (1.5 µm vs. 1.56 µm) meets the limitation. This is based on the ’116 patent distinguishing between wavelengths only 10 nm apart, making a 60 nm difference substantial.
"substantially different" (waveguide structures): Petitioner contended a POSITA would understand this to include differences in material composition or operating wavelength optimization. Shaw’s disclosure of using cascaded Fabry-Perot cavities (which are tailored to specific wavelengths) or different fiber materials (e.g., As-Se vs. As-S) satisfies this limitation.

Priority Date Challenge: Petitioner contended the ’116 patent is not entitled to its claimed priority date from the ’025 provisional application (filed September 3, 2002). The argument was that the provisional is devoid of any discussion related to wavelength shifting using the Raman effect, a central element of the independent claims. Therefore, the patent's effective priority date is at best August 29, 2003, making Shaw, published in January 2003, available as prior art under §102(e).

Petitioner argued that discretionary denial under §314(a) and §325(d) would be inappropriate based on the Advanced Bionics framework. The core reason provided was that the asserted prior art references, Shaw and Islam, are substantively new and were never presented to or considered by the USPTO during the original examination of the ’116 patent.

Petitioner requests institution of an inter partes review and cancellation of claims 1-4, 9, 11-14, 16-25, and 30-35 of the ’116 patent as unpatentable.