PTAB

IPR2025-01567

Accelight Technologies Inc v. Applied Optoelectronics Inc

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Multi-Channel Parallel Optical Receiving Device
  • Brief Description: The ’301 patent discloses a multi-channel receiver optical sub-assembly (ROSA) for optoelectronic devices. The invention focuses on a compact design wherein an arrayed waveguide grating (AWG) demultiplexer is mounted on a carrier, and an angled output surface of the AWG directly reflects separated optical signals onto an array of optoelectronic diodes and a light receiving chip, which are co-located on the same end surface of the carrier.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 are obvious over Kim.

  • Prior Art Relied Upon: Kim (Application # 2014/0169389).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kim, a single prior art reference, discloses every limitation of the challenged claims. Kim describes an optical receiver module comprising a supporting part (the claimed “carrier”) upon which an AWG demultiplexer, photodetectors (the claimed “optoelectronic diodes”), and a pre-amplifier (the claimed “light receiving chip”) are mounted. Crucially, Petitioner asserted that Kim shows the photodetectors and pre-amplifier disposed directly on the same top surface of an end of the carrier, addressing the key limitation that led to the ’301 patent’s allowance. Furthermore, Kim teaches using an output end of its optical device cut at a 45-degree angle to reflect demultiplexed signals to the photodetectors. This disclosure, Petitioner contended, renders the claimed angle range of 41-46 degrees (claim 1) and the specific 42-degree angle (claim 4) obvious as a minor, predictable design modification.
    • Motivation to Combine (for §103 grounds): Not applicable as this is a single-reference obviousness ground.
    • Expectation of Success (for §103 grounds): Not applicable.

Ground 2: Claims 1-4 are obvious over Ho in view of Lee.

  • Prior Art Relied Upon: Ho (Application # 2014/0341578) and Lee (Application # 2014/0183344).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Ho discloses the foundational system: a multi-channel ROSA that includes an AWG demultiplexer, photodiodes, and transimpedance amplifiers (TIAs) mounted within a housing on a base portion, which serves as the claimed "carrier." While Ho teaches direct optical coupling, Petitioner argued a person of ordinary skill in the art (POSITA) would look to Lee for a superior implementation. Lee discloses a hybrid optical coupling module that uses a planar lightwave circuit (PLC), which can function as an AWG, with an inclined surface cut at 45 degrees to vertically reflect light onto underlying photodiodes. Petitioner argued that modifying Ho’s ROSA to incorporate Lee’s more reliable and efficient direct coupling mechanism would result in the claimed invention.
    • Motivation to Combine (for §103 grounds): A POSITA would combine the references to improve Ho’s design. Petitioner argued Lee’s angled reflection method is a simpler, more reliable, and more efficient alternative to the passive alignment technique described in Ho. A POSITA would be motivated to substitute Lee's known coupling technique into Ho's established ROSA framework to simplify manufacturing, reduce alignment tolerances, and improve overall device performance.
    • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success because both Ho and Lee operate in the same field of optical transceivers and utilize compatible single-mode optical components. The combination represents the application of a known technique (Lee's coupling) to a known device (Ho's ROSA) to yield the predictable result of an efficient optical receiver.

4. Key Claim Construction Positions

  • Petitioner argued that the term "carrier" should be construed to mean “the supporting structure that is contained within the multichannel parallel optical receiving device.” This construction is based on the ’301 patent’s figures and description, which show the carrier as an internal component of the ROSA. Petitioner asserted this construction is critical to properly map the prior art, which discloses such internal support structures, and to counter Patent Owner’s allegedly overbroad interpretation in parallel litigation where it seeks to define the "carrier" as an external circuit board on which the entire device is mounted.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors would be inappropriate. To support this, Petitioner provided a stipulation that, if the Board institutes this inter partes review (IPR), it will not pursue in the parallel district court litigation (Case No. 4:24-cv-09041-HSG, N.D. Cal.) (i) the specific grounds raised in this Petition, or (ii) any other grounds that reasonably could have been raised in an IPR. This stipulation is intended to mitigate concerns about parallel proceedings and weighs strongly against discretionary denial.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-4 of Patent 10,379,301 as unpatentable under 35 U.S.C. §103.