JDS Uniphase Corporationv.Fiber, LLC

Patent Trial and Appeal Board

Dec 5, 2014

10197636 (P.T.A.B. Dec. 5, 2014)

Trials@uspto.gov Paper 45
Tel: 571-272-7822 Entered: December 5, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

JDS UNIPHASE CORPORATION,
Petitioner,

v.

FIBER, LLC,
Patent Owner.
_______________

Case IPR2013-00318
Patent 7,095,917 B2
_______________

Before HOWARD B. BLANKENSHIP, JACQUELINE WRIGHT BONILLA, and
JENNIFER S. BISK, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

IPR2013-00318
Patent 7,095,917 B2

2

I. INTRODUCTION
A. Background
JDS Uniphase Corporation (“Petitioner”) filed a Petition (Paper 4, “Pet.”)
requesting inter partes review of claims 1, 27, and 53–74 of U.S. Patent No.
7,095,917 B2 (Ex. 1001, “the  ’917 patent”). Fiber, LLC (“Patent Owner”) filed a
Preliminary Response (Paper 11, “Prelim. Resp.”). We determined that the
information presented in the Petition demonstrated that there was a reasonable
likelihood that Petitioner would prevail in challenging claims 1 and 53–74, but not
claim 27, as unpatentable under 35 U.S.C. § 102 or § 103, or both. Pursuant to 35
U.S.C. § 314, we instituted this proceeding on December 6, 2013, on the basis that
claims 1 and 53–74 are unpatentable on the following grounds.
Reference(s) Basis Claims challenged
1

Wilde (Ex. 1004)
2
§ 102 1, 53–55, 57–66, 69, and 71–74
Wilde and Hurst (Ex. 1005)
3
§ 103 56, 58–66, 69, and 71–74
Young (Ex. 1006)
4
and Hurst § 103 1, 53, 56–59, 62–65, and 67–74
Tsai (Ex. 1008)
5
§ 102 53–64, 66, 67, and 71–74
Chande (Ex. 1009)
6
§ 102 1, 53, 54, 57–64, 66, 69, 71, 73, and 74
Paper 12 (“Dec.”), 3, 33–34.

1
We interpret Petitioner as challenging all claims that depend on the challenged
independent claims, i.e., multiple dependencies, via a “[##]/[##]” designation in
the Petition. Pet. 6, 9–10.
2
U.S. Pat. No. 6,246,657 B1 (Ex. 1004) (“Wilde”).
3
U.S. Pat. No. 6,798,729 B1 (Ex. 1005) (“Hurst”).
4
U.S. Pat. No. 5,903,687 (Ex. 1006) (“Young”).
5
U.S. Pat. No. 5,420,946 (Ex. 1008) (“Tsai”).
6
U.S. Pat. No. 4,838,631 (Ex. 1009) (“Chande”).
IPR2013-00318
Patent 7,095,917 B2

3

After institution of trial, Patent Owner filed a Patent Owner Response (Paper
27, “PO Resp.”), and filed a Contingent Motion to Amend (Paper 28, “Motion”).
Petitioner subsequently filed a Reply to the Response (Paper 33, “Reply”) and an
Opposition to Patent Owner’s Contingent Motion to Amend (Paper 34, “Opp.”).
Patent Owner then filed a Reply in support of its Contingent Motion to Amend
(Paper 38, “Reply to Opp.”). An oral hearing was held on September 9, 2014. A
transcript of the hearing has been entered into the record. Paper 44.
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is
issued pursuant to 35 U.S.C. § 318(a). Petitioner has shown by a preponderance of
the evidence that claims 1, 53–66, 69, and 71–74 of the ’917 patent are
unpatentable. Petitioner has failed to show that claims 67, 68, and 70 are
unpatentable. Patent Owner’s Contingent Motion to Amend is denied.
B. Related Proceedings
Petitioner lists three cases in the U.S. District Court for the District of
Colorado that may affect, or be affected by, the decision in this proceeding. Pet. 4.
Those cases are Fiber, LLC v. Ciena Corp., Docket No. 13-cv-0840 (D. Colo.)
(stayed); Fiber, LLC v. Ciena Corp., Docket No. 12-cv-01914 (D. Colo.)
(dismissed November 2012); and Fiber, LLC v. NEC Corp., Docket No. 12-cv-
01346 (D. Colo.) (dismissed September 2012). In each of those cases, Patent
Owner asserted the ’917 patent and U.S. Patent No. 6,430,332 (a related patent,
involved in IPR2013-00336) against a third party. See id.; Paper 7, 1. The district
court ordered a stay of the first case pending resolution of this IPR proceeding.
Docket No. 13-cv-00840, Doc. 33 (D. Colo. July 18, 2013).
C. The ’917 Patent (Ex. 1001)
The ’917 patent relates to an optical beam switching system. Ex. 1001,
1:43–53, claims 1, 53. Optical light signals are transmitted along optical fibers and
IPR2013-00318
Patent 7,095,917 B2

4

switched from one fiber to another by an optical switch. Id. at 1:18–21. For
example, as depicted in Figures 1 and 2 of the patent, an optical beam light source,
such as cable/fiber 17, transmits light beam 13 toward mirror 25, which reflects the
beam in a different direction toward movable mirror 29, which then reflects the
light toward an optical receptor, such as another fiber (cable 7) (shown in Fig. 1).
See also id. at 5:4–8, 19–26. The ’917 patent states that the “light signal is
optimized to minimize transmission losses by the optical units.” Id. at 5:19–20.
Figures 2 and 7a of the ’917 patent are reproduced below.

IPR2013-00318
Patent 7,095,917 B2

5

Figure 2 depicts a schematic view of a switching unit comprising movable mirror
29 that directs light beam 13. Id. at 4:14–17; 5:20–26. Figure 7a depicts a cross-
section of an optical switch package including mirror 29, as well as LEDs 71a –
71d “positioned so that they can be used to direct the light beam 13 using the optic
unit’s sensing control system 100.” Id. at 4:38–41; 7:50–53; see also id. at Fig. 7a
(depicting LEDs 71a –71d).
The ’917 patent further discloses:
[LEDs] mounted in an array adjacent a first movable mirror 29 . . .
provide radiation which is detected by detector 16. Radiation from
the [LEDs] in the array associated with the first movable mirror is
received in a radiation guide of another, selected fiber and
individually measured by control 100 (FIG. 7a). The position of the
IPR2013-00318
Patent 7,095,917 B2

6

associated movable mirror of the selected fiber is adjusted until
radiation received from each LED from the first mirror is substantially
equal . . . .
Id. 5:37–46.
Independent claims 1 and 53, reproduced below, are illustrative of the
claimed subject matter:
1. An optical beam switching system for transmitting an optical beam
from at least one source to at least one of a plurality of optical
receptors comprising:
at least one source of an optical beam;
at least one first beam directing device mounted across a first area of free
space from the source;
at least one second beam directing device mounted across a second area
of free space from the first beam directing device;
a plurality of optical receptors;
a control operative for at least one of 1) positioning a first beam directing
device to direct the optical beam from at least one source to a second
beam directing device, and 2) positioning said second beam directing
device to direct the optical beam from said second beam directing
device to a selected one of said plurality of optical receptors; and
at least one data gathering and transmission element to provide an
indication regarding the current orientation of the controlled beam
directing device or the current location of the optical beam to the
control for adjusting at least one of the beam directing devices.
53. An optical beam switching system for transmitting an optical
beam from at least one source to at least one of a plurality of optical
receptors comprising:
at least one source of an optical beam;
at least one first beam directing device mounted across a first area of free
space from the source;
a plurality of optical receptors mounted across a second area of free
space from the first beam directing device;
IPR2013-00318
Patent 7,095,917 B2

7

a control so that a first beam directing device will be positioned to direct
the optical beam from at least one source to a selected one of said
plurality of optical receptors; and
at least one data gathering and transmission element to provide an
indication regarding the current orientation of the controlled beam
directing device or the current location of the optical beam to the
control for adjusting at least one of the beam directing devices.
Ex. 1001, 8:54–9:9; 12:19–37 (indentation and emphasis added).
II. ANALYSIS
For the challenged claims, Petitioner must prove unpatentability by a
preponderance of the evidence. 35 U.S.C. § 316(e). In patent law, “the name of
the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998).
Thus, we begin our analysis with claim construction.
A. Claim Construction
We construe claims in an unexpired patent by applying the broadest
reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b).
Under the broadest reasonable construction standard, claim terms are given their
ordinary and customary meaning, as would be understood by one of ordinary skill
in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007). On the other hand, a “claim term will not
receive its ordinary meaning if the patentee acted as his own lexicographer and
clearly set forth a definition of the disputed claim term in either the specification or
prosecution history.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
(Fed. Cir. 2002).
1. “Optical Beam”
Patent Owner contends that the claim term “optical beam” in the challenged
claims should be construed as an “optical beam used in communications” or
“communications optical beam.” PO Resp. 7–15. Patent Owner argues that the
IPR2013-00318
Patent 7,095,917 B2

8

’917 patent teaches one of ordinary skill in the art that claims 1 and 53 are directed
to optical switches used in the field of communications, and not, for example,
switches for YAG lasers used in industrial applications, as described in Chande
(Ex. 1009). PO Resp. 8.
Patent Owner relies on a general purpose dictionary definition of the word
“transmit” as relevant to the term “transmitting” in the claims, and states it
“connotes the transmission of information: ‘1. To send or forward, as to a
recipient or destination; dispatch; convey. 2. To communicate, as information or
news.’” Id. (citing Ex. 2018, 6). Patent Owner also contends that the claim term
“receptor” is “related to the term ‘receiver’ which has a definition in the electronics
field as ‘a device or apparatus that receives electrical signals, waves, or the like,
and renders them perceptible to the senses, as the part of a telephone held to the
ear, a radio receiving set, or a television receiving set.’” Id. at 8–9 (citing Ex.
2018, 5), see also id. at 13–14 (citing Ex. 2017, 29–30).
In addition, Patent Owner points us to where the Specification of the ’917
patent states that “[t]his invention relates generally to optical switching and more
particularly to non-electrical switching of laser communication signals.” Id. at 9–
10 (citing Ex. 1001, 1:12–14). Patent Owner provides a definition of “particular,”
and contends that “more particularly” means that the ’917 patent “pertains
particularly to non-electrical switching of laser communication signals, rather than
to all types of optical switching in general.” Id. at 10–11 (citing Ex. 2018, 3–4).
Patent Owner also refers us to an article in PC Magazine, which Patent Owner
contends defines “optical switching” as “[a]n all-optical fiber-optic switching
device that maintains the signal as light from input to output.” Id. at 10 (citing Ex.
2019). Patent Owner points us to where the Specification uses the phrase “optical
signal” or “light signal,” arguing that such language conveys a light beam
IPR2013-00318
Patent 7,095,917 B2

9

consisting of communications information, as reflected in a dictionary definition of
the word “signal.” Id. at 12–13 (citing Ex. 2005, 3). Patent Owner also contends
that during prosecution of the ’917 patent, the Examiner “only sought and
reviewed art in the field of fiber optic switching devices used in the
communications field,” which “suggests” that the Examiner thought the claims
“related to optical devices in the communications field, not every conceivable
switch involving light beams.” Id. at 14–15.
As discussed on our Decision to Institute (Dec. 7–8), we conclude that
Patent Owner’s proposed definition of “optical beam” imports improperly a
limitation into the claims. The claims themselves do not recite “communications.”
Likewise, the ’917 patent Specification does not indicate that “optical beam” is
limited to a communications beam, such that it would exclude a YAG laser beam,
for example. As noted by Patent Owner, the Specification states that the
“invention relates generally to optical switching and more particularly to non-
electrical switching of laser communication signals.” Ex. 1001, 1:12–14. In other
words, the Specification indicates that communication signals may be a preferred
embodiment of the recited “optical beam,” but the claim phrase is not limited to
that particular embodiment. See also Ex. 1011, 95:23–96:4 (testimony of Patent
Owner’s witness, Dr. David A. Smith, stating that the Specification describes a
system that “could switch [a] non-communication beam”); Reply 4.
Patent Owner’s proposed dictionary meanings of the terms “transmit,” as
relevant to “transmitting” in the claims, as well as “receptor,” do not persuade us
otherwise. For example, a dictionary definition of the term “transmit” indicates
that it means, more generally, to “send or forward, as to a recipient or destination”
or “convey,” even if “[t]o communicate” is another alternative definition. Ex.
2018, 6. Patent Owner does not persuade us that switches for YAG lasers, for
IPR2013-00318
Patent 7,095,917 B2

10

example, do not “send or forward” a laser beam. In fact, Patent Owner’s own
proposed definition of “transmit” is not limited to sending or forwarding
information used in the field of communications, where communications,
according to Patent Owner, excludes YAG laser beams.
Likewise, as Patent Owner acknowledges (PO Resp. 8–9), the term “optical
receptor” is not limited to an element that receives electronic signals, and the
Specification, which does not mention the term “receptor” except in the claims,
likewise does not limit this term as such. See also Dec. 7 (discussing “optical
receptor”); see also infra. Moreover, use of the phrases “optical signal” and “light
signal” in a similar context as “optical beam” in the Specification does not mean
that “optical beam” is limited to “a light beam consisting of communications
information.” PO Resp. 12–13. Similarly, even assuming the Examiner relied
exclusively on prior art relating to communications during prosecution of the ’917
patent, that fact would not dictate how we apply our claim construction standard,
i.e., the broadest reasonable interpretation in light of the Specification.
2. Other Claim Terms Construed in the Decision to Institute
In our Decision to Institute, we construed other terms in the challenged
claims—namely, “control,” “optical receptors,” and “data gathering and
transmission element,” as recited in independent claims 1 and 53, as well as
“adjacent,” as recited in dependent claims 54 and 55. Dec. 8–10. Patent Owner
does not propose alternative claim constructions for those claim phrases in its
Patent Owner Response, nor did Petitioner challenge our constructions in its Reply.
We discern no reason to alter our claim constructions for this Final Written
Decision. For convenience, our claim constructions are reproduced in the table
below.

IPR2013-00318
Patent 7,095,917 B2

11

Claim(s) Claim Phrase Claim Construction
1 and 53 “control” “an element that controls and adjusts
one or more beam directing devices
(e.g., mirrors), which in turn control
transmission of an optical beam from a
source and/or mirror(s) to an optical
receptor”
1 and 53 “optical receptor” “an element that receives an optical
beam after it has been directed by a
beam directing device (e.g., mirror),”
such as “another optic fiber (cable 7) or
optical switch (optical switch 5), as
depicted in Figure 1 of the ’917 patent”
1 and 53 “data gathering and
transmission
element”
“an element that gathers ‘data,’ such as
information or measurements regarding
orientation of a beam directing device
(e.g., mirror) or location of the beam,
and transmits an ‘indication’ (e.g., data
or signal indicative of such information
or measurement) to the control,” and
may include “LEDs, a ‘detector,’ and
‘radiation guide of another, selected
fiber’ that receives data”
54 and 55 “adjacent” “to lie close or near”
Dec. 8–10.
B. Prior Art Status
1. Priority Date for the ’917 Patent Claims
Claims are entitled to the benefit of the filing date of an earlier filed
application only if the disclosure of the earlier application provides written support
for those claims, as required by 35 U.S.C. § 112. In re Chu, 66 F.3d 292, 297
(Fed. Cir. 1995). To satisfy the written description requirement, the prior
application must convey with reasonable clarity to those skilled in the art that, as of
the earlier filing date, the inventor was in possession of the invention. Vas-Cath
IPR2013-00318
Patent 7,095,917 B2

12

Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). In addition,
“[e]ntitlement to a filing date does not extend to subject matter which is not
disclosed, but would be obvious over what is expressly disclosed.” In re Huston,
308 F.3d 1267, 1277 (Fed. Cir. 2002) (quoting Lockwood v. Am. Airlines Inc., 107
F.3d 1565, 1571–72 (Fed. Cir. 1997)).
Petitioner argues that the effective filing date of the challenged claims of the
’917 patent should be no earlier than May 12, 1999, which is the filing date of the
continuation parent non-provisional application that matured into U.S. Pat. No.
6,430,332. Pet. 6–8. Petitioner submits that, contrary to Patent Owner’s
contentions, the challenged claims of the ’917 patent are not entitled to a priority
date based on an earlier-filed provisional patent application, App. No. 60/088,239
(Ex. 1003, Ex. 2006) (“the provisional application”), which was filed on June 5,
1998. Pet. 6–8. Petitioner asserts that the provisional application fails to describe
sufficiently the “data gathering and transmission element” recited in the challenged
claims. Id. at 7–8.
Patent Owner, on the other hand, argues that the provisional application
discloses this element when it describes the use of a “servo control.” PO Resp. 16–
24. Specifically, Patent Owner contends that the provisional application discloses
movable mirrors coupled with the use of a “servo control.” PO Resp. 17–18
(citing Ex. 2006, 5, 7–9). Patent Owner relies on a Declaration by its expert
witness, Dr. David A. Smith, to support its contention that such disclosure
indicates the described device includes an element providing “an indication
concerning the current orientation of the controlled mirror or current location of
the optical beam for adjusting the device and ensuring that the device is aligned
properly—in other words, a closed-loop, feedback system.” PO Resp. 17, 19–20
(citing Ex. 2017, 40–45).
IPR2013-00318
Patent 7,095,917 B2

13

In further support of its contention that the provisional application provides
adequate support for this limitation, Patent Owner refers to Figure 16 in the
provisional application, and what occurs at time t0 (mirror rotates via push and
pull), time t1 (mirror reaches maximum and position angle is zero), and time t2
(currents are reversed to stop mirror). Id. at 18 (citing Ex 2006, 7). Patent Owner
highlights that the provisional application then states, “[a]t that point the currents
are adjusted to hold it in place.” Id.; Ex 2006, 7. Patent Owner contends that “Dr.
Smith concludes that this inherently communicates use of feedback as to mirror or
beam position for purposes of controlling the beam directing device.” PO Resp.
19. Patent Owner quotes Dr. Smith as testifying that “[h]olding the mirror in place
means stabilizing its position by using current variations responsive to mirror
movements that would otherwise change the mirror alignment,” and therefore, “an
error signal must be present which is used in order to correct the angular changes
so as to reduce that error signal.” Id. at 19–20 (quoting Ex. 2017, 44).
Based on our reading of the provisional application, we conclude that its use
of the phrase “servo control” refers to a “control” element, as opposed to a “data
gathering and transmission element,” as recited in challenged claims, where the
“servo control” in the provisional application controls movement of a mirror using
a “push+pull magnetic force,” for example. Ex. 2006, 7. Consistently, the
provisional application states that “[i]t may be desirable to add damping
mechanism for better servo control,” i.e., to control movement of the mirrors, and
that “resulting push+pull magnetic force is more linear and also larger than the pull
only design, and allows for better servo control,” i.e., control of the position of the
mirrors. Id. at 5, 7; see also PO Resp. 18.
Patent Owner’s position relies on an inherency argument in relation to one
sentence in the provisional application, as discussed above, which indicates that
IPR2013-00318
Patent 7,095,917 B2

14

after velocity of the mirror is “zeroed,” “currents are adjusted to hold it in place.”
Ex. 2006, 7. We are not persuaded that this one sentence describing the adjustment
of currents to hold a mirror in place necessarily describes a closed-loop, feedback
system, or “an error signal” that is “used in order to correct the angular changes so
as to reduce that error signal,” as stated by Dr. Smith. PO Resp. 19–12 (citing Ex.
2017, 44). We do not see how this sentence, expressly or inherently, describes a
separate “data gathering and transmission element” (i.e., something different from
the “control” element of claims 1 and 53, which corresponds to the “servo control”
in the provisional application), where that element provides an indication regarding
current orientation of the mirror or current location of the optical beam.
As discussed in our Decision to Institute (Dec. 11), two references cited by
Patent Owner, i.e., Servomechanism Fundamentals (Ex. 2007)
7
and the Scientific
American article (Ex. 2008),
8
at best indicate it might have been obvious to an
ordinary artisan to include a data gathering and transmission element as a
component of a servo control system. Even assuming that to be the case, the
doctrine of obviousness does not dictate that the provisional application describes a
“servo control” that inherently, i.e., necessarily, includes a “differential error
detecting device,” or involves a particular type of “servomechanism,” as described
in those references, as argued by Patent Owner. PO Resp. 20–23. See Tronzo v.
Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998) (stating that “[i]n order for a
disclosure to be inherent, [] the missing descriptive matter must necessarily be
present in the parent application’s specification”).

7
Henri Lauer, et al., SERVOMECHANISM FUNDAMENTALS, 13–16 (2d ed. 1960).
8
Jearl Walker, The Amateur Scientist, 248(1) SCIENTIFIC AMERICAN 130–137
(1983).
IPR2013-00318
Patent 7,095,917 B2

15

Patent Owner also points us to a reference, MALMSTADT & ENKE,
ELECTRONICS FOR SCIENTISTS 291 (W. A. Benjamin, 1962), not of record in this
proceeding, but quoted by Dr. Smith in his Declaration (Ex. 2017 ¶ 115). Patent
Owner relies on Dr. Smith’s testimony in this regard to support its contention that
one would have understood the phrase “servo control” to refer necessarily to
“feedback control.” PO Resp. 23–24. Again, such teachings, at best, indicate that
it might have been obvious to include a data gathering and transmission element as
a component of a servo control system, but the provisional application itself does
not disclose, expressly or inherently, that element.
Thus, we are persuaded that the challenged claims of the ’917 patent are not
entitled to the June 5, 1998, filing date of the provisional application, and have an
effective filing date of no earlier than May 12, 1999.
2. Antedating Wilde, Hurst, and Young
Regardless of the priority date of the ’917 patent, Patent Owner also
contends that it can show the invention predates certain patent references at issue
in grounds upon which we instituted inter partes review. PO Resp. 25–30. Patent
Owner contends that it establishes a conception date as early as June 18, 1996, and
reasonable diligence from that date through the filings of the provisional and non-
provisional applications. Id. at 25. In support, Patent Owner relies on a
Declaration by Mr. Aron Katz (Ex. 2016), evidence attached to his Declaration
(Ex. 2016, Exs. A–T), as well as Dr. Smith’s Declaration (Ex. 2017). Id. at 25–30
(citing Exs. 2016, 2017).
The following table presents a summary of the five references at issue in
instituted grounds. The table indicates the prior art status, under 35 U.S.C.
§ 102(b) or § 102(e), of each reference, depending on whether the Declarations and
IPR2013-00318
Patent 7,095,917 B2

16

cited evidence establish conception by June 18, 1996, and reasonable diligence
through a constructive or actual reduction to practice (“RTP”).
Reference

If Patent Owner cannot
antedate reference
If conception by June 18,
1996, diligence, and RTP
Wilde (Ex. 1004)
9
§ 102(e) art Not prior art
Hurst (Ex. 1005)
10
§ 102(e) art Not prior art
Young (Ex. 1006)
11
§ 102(e) art Not prior art
Tsai (Ex. 1008)
12
§ 102(b) art § 102(b) art
Chande (Ex. 1009)
13
§ 102(b) art § 102(b) art
See PO Resp. 30–32; Dec. 13.
Patent Owner contends that it can show that inventors of the ’917 patent
invented the claimed subject matter before the filing dates of three patent
references at issue, i.e., Wilde, Hurst, and Young. PO Resp. 25–30. Patent Owner
states that because it can establish a priority and invention date of the ’917 patent
as early as June 18, 1996, those references do not qualify as prior art under
35 U.S.C. § 102(e). Id. at 30–32.

9
Wilde (Ex. 1004) issued on June 12, 2001, based on a U.S. non-provisional
application filed on Apr. 16, 1998, and a provisional application filed on Sept. 22,
1997.
10
Hurst (Ex. 1005), which issued on Sept. 28, 2004, has a priority filing date of
Mar. 24, 1997, based on a divisional application, and also a priority filing date of
July 30, 1996, based on a provisional application.
11
Young (Ex. 1006), which issued on May 11, 1999, was filed on May 2, 1997.
12
Tsai (Ex. 1008) issued on May 30, 1995.
13
Chande (Ex. 1009) issued on June 13, 1989.
IPR2013-00318
Patent 7,095,917 B2

17

When arguing conception, Patent Owner relies on the Declaration by Mr.
Katz, the founder, principal investor, and Chairman of the Board of Astarte Fibre
Networks, Inc. (“Astarte”), a predecessor company to Fiber, LLC (“Fiber”), as
well as the founder in 2002 and now president of Patent Owner, Fiber. PO Resp.
26; Ex. 2016 ¶¶ 1, 3–6. Mr. Katz testifies that, as a result of his role as Chairman
of the Board of Astarte from 1990 through 2000, he has had “ongoing access to
and custody over Astarte’s business records,” as well as “first-hand knowledge of
Astarte’s product development efforts,” and is “familiar with its joint efforts with
industry partners.” Ex. 2016 ¶¶ 8, 3. Mr. Katz also testifies that in 2000, Astarte
merged with Tellium, Inc. (“Tellium”) and signed an agreement with Corning Inc.
for a license and an option to purchase Astarte’s intellectual property. Id. ¶ 5. In
addition, “AFN, LLC became the primary custodian of the documents and records
of Astarte,” as well as assignee of the application that became the ’917 patent. Id.
Thereafter, in 2002, Fiber became the successor of AFN, LLC, and custodian of its
documents and records. Id. ¶ 6.
Mr. Katz states that “[b]ecause of the merger with Tellium in 2000, a vast
majority of Astarte’s employees departed to unknown locations and occupations,”
and therefore, it was “not possible to produce a declaration from the three
inventors of the ‘917 Patent.” Id. ¶ 7. Mr. Katz testifies that since 2000, he has
had little to no contact with any of the three inventors, and is not aware of their
current location or contact information. Id. Thus, instead of relying on a
declaration by an inventor to establish conception, Patent Owner relies on
testimony by Mr. Katz based on his knowledge of Astarte’s business records,
product development efforts, and joint efforts with industry partners. Id. ¶ 8.
As an initial matter, we note that the record does not reflect that Patent
Owner made any diligent attempt to contact or obtain a declaration from an
IPR2013-00318
Patent 7,095,917 B2

18

inventor with personal knowledge of conception of the subject matter of the
challenged claims. That Mr. Katz has had no contact with an inventor since 2002,
and may not know their current location or contact information, does not lead to a
conclusion that the inventors are unreachable. To the contrary, as remarked by
Patent Owner’s counsel during the oral hearing, Patent Owner did not engage in
any effort to find or reach out to the inventors, but rather assumed “it would be
impossible to get them to submit to a deposition because they no longer have an
interest in what is going on.” Paper 44, 43:13–44:19. This lack of diligence in
obtaining the evidence raises questions about how much weight we should accord
Mr. Katz’s testimony in relation to conception and reasonable diligence by the
named inventors.
Even if we assume that Mr. Katz’s Declaration is the best available
evidence, however, we conclude that the Declaration, and evidence cited therein,
fail to establish adequately conception or reasonable diligence. First, as case law
clarifies, conception is the “‘formation in the mind of the inventor, of a definite
and permanent idea of the complete and operative invention, as it is hereafter to be
applied in practice.’” Dawson v. Dawson, 710 F.3d 1347, 1352 (Fed. Cir. 2013)
(quoting Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed.
Cir. 1986)). Here, we must consider what happened in the mind of an inventor, but
without testimony from any inventor himself. See Dawson, 710 F.3d at 1352–53.
Instead, Patent Owner relies on what normally would serve as corroborating
evidence, i.e., testimony by a non-inventor witness (Mr. Katz), regarding what he
understood to be in the minds of inventors, and contemporaneous disclosure
documents in Mr. Katz’s possession to support his testimony.
In this regard, Mr. Katz discusses Exhibits A–T attached to his Declaration.
Ex. 2016 ¶¶ 9–37. In particular, Mr. Katz and Patent Owner rely on Exhibits A–E
IPR2013-00318
Patent 7,095,917 B2

19

to establish conception as early as June 18, 1996, and Exhibits F–T to establish a
reasonably diligent reduction to practice through 1999. PO Resp. 26–30; Ex. 2016
¶¶ 15–22.
Mr. Katz testifies that Exhibit A is a copy of a November 28, 1995,
Memorandum he sent to Mr. Laor (a co-inventor), attaching an article about a
Texas Instruments Inc. (“TI”) micromirror chip. Ex. 2016 ¶ 15. In the
Memorandum, Mr. Katz asked whether TI’s micromirrors had “any ramifications
for the next generation” of Astarte’s optical switching technology
(“STAR*SWITCH”).
14
Id; Ex. A.
According to Patent Owner, the “genesis of the invention actually began”
thereafter, during a meeting between Mr. Katz and Mr. Laor on December 8, 1995.
PO Resp. 27. Patent Owner contends that, at the time of that meeting, Mr. Laor
had invented the fiber optic communications switches of U.S. Patent No. 5,177,348
(Ex. 2009) and U.S. Patent No. 5,524,153 (Ex. 2019), which, according to Patent
Owner, taught “the need for servo control to ensure precise movement of an optical
switch using piezoelectric mechanisms for fiber bending and alignment.” Id.
(citing generally Ex. 2016, 5–7).
Mr. Katz testifies that Exhibit B is a copy of a December 8, 1995,
Memorandum that he drafted, documenting the meeting he had with Mr. Laor “to
discuss in person the concept of using movable mirrors in an optical switch for
transmitting communications signals.” Ex. 2016 ¶ 16. That Memorandum refers
to “the substitution of [the TI] mirrors for pizeo-electric [sic] elements, with the

14
Patent Owner does not point us to evidence explaining or defining
“STAR*SWITCH,” but during the oral hearing, counsel for Patent Owner indicated
the term refers to the “piezoelectric switch that Astarte had been working on.”
Paper 44, 68:9–19.
IPR2013-00318
Patent 7,095,917 B2

20

mirrors controlled by a chip identical or similar to the TI chip, with the chip
controlled by the microprocessor, and with the microprocessor controlled by the
sensor.” Id. (quoting Ex. B).
Mr. Katz also discusses a joint venture between Astarte and TI that began in
early 1996. Id. ¶ 17. According to Mr. Katz, as part of that joint venture, a team of
engineers, including Mr. Laor and his co-inventors, Mr. Krozier and Mr. Plouffe,
conducted in-person meetings to advance the project. Id. ¶ 18. Mr. Katz points to
Exhibit C as a copy of correspondence from Mr. Krozier, dated March 25, 1996,
documenting the first of such meetings on March 19, 1996. Id.; Ex. C (referring to
“the first official program meeting” on March 19, 1996, of a group of people
including all three inventors).
Mr. Katz also relies on Exhibit D, a copy of correspondence from Mr.
Krozier dated July 1, 1996, documenting another meeting that took place on June
18, 1996, “regarding development of the new optical switch.” Ex. 2016 ¶ 19. In
addition, Mr. Katz refers to Exhibit E as a document prepared thereafter by Mr.
Krozier “summarizing the historical conception and development of the technology
at issue.” Id. ¶ 21. Mr. Katz and Patent Owner contend that Exhibits D and E, in
particular, provide evidence that the inventors conceived of the invention disclosed
in the ’917 patent at least as early as the date of that meeting on June 18, 1996. Id.
¶¶ 20–21; PO Resp. 28–29.
In relation to Exhibit D, Mr. Katz testifies that Mr. Laor disclosed to the
engineering team “his concept of using an array of micromirrors to replace the
piezoelectric devices in Astarte’s existing fiber optics switch technology.”
Ex. 2016 ¶ 19. According to Mr. Katz, “the Astarte/TI team resolved to fabricate
micromirror ‘test wafers’ to provide data to assess application of the concept of
‘position feedback’ to micromirrors.” Id. (citing Ex. D, C 012118).
IPR2013-00318
Patent 7,095,917 B2

21

Our review of Exhibit D, however, uncovers that it states, under the heading
“Matrix Switch Concepts (Discussion)”:
Herzel [Laor] brought up the idea of using a large array of
micromirrors to replace the piezo devices in his current design with a
much faster device. Our goal however is still to take advantage of an
array of mirrors to build an optical matrix switch. Unfortunately, we
still do not have a reasonable concept for this.
Ex. 2016, Ex. D, C 012117–18 (emphasis added). Similarly, in relation to “Action
Items,” the document states: “Fabricate test wafers. Provide data on parametric
measur[e]ments on wafers. Characterize micro-mirror capacitance. This will
provide data to determine if position feedback is realistic.” Id. at C 012118
(emphasis added).
Thus, although Exhibit D may provide evidence of a research plan to
substitute piezoelectric devices with an array of micromirrors in a “current design,”
the document itself clarifies that the inventors, at that time, did not have “a
reasonable concept” of how to do it or how to prepare an optical switching system
as recited in the challenged claims. Id. at C 012117–18. Exhibit D may indicate
that the inventors had a general idea on June 18, 1996, of how to proceed with their
research plan, but the exhibit does not show sufficiently a formation, in the mind of
the inventors, a definite and permanent idea of the complete and operative
invention, as to be applied in practice.
In relation to Exhibit E, we note that we cannot tell from that exhibit the date
of the document, who prepared it, or who provided the handwritten notes of
“David Write-Up” and “19980000 History Write-Up by David Krozier” on the
document. Ex. 2016, Ex. E; see also, e.g., Ex. 1012, 111:21–112:8 (testimony by
Mr. Katz stating he cannot tell the date of the document); Reply 9 (stating that Mr.
Katz “agreed that this document appears to be created some unknown time after
IPR2013-00318
Patent 7,095,917 B2

22

March 31, 1997”); Ex. 1012, 116:18–23. Moreover, Mr. Katz’s Declaration does
not clarify if he has any personal knowledge in this regard, or if he has seen the
document before recently. Ex. 2016 ¶ 21. Instead, he testifies that each exhibit
attached to his Declaration is “a record of regularly conducted business activity of
Astarte,” he has had “ongoing access to and custody over Astarte’s business
records,” and he has “first-hand knowledge of Astarte’s product development
efforts” generally. Id. ¶¶ 8–9. Such testimony does not persuade us that Exhibit E,
or Mr. Katz’s discussion of that exhibit, provides reliable evidence regarding
inventor conception by June 18, 1996, or conception or efforts toward a reduction
to practice by inventors on any other date.
Thus, we are not persuaded that Exhibits A–E, or Mr. Katz’s testimony
regarding those exhibits, sufficiently establish conception by the inventors of the
subject matter of the challenged claims at least as early as June 18, 1996, as
asserted by Patent Owner. PO Resp. 25–30; Reply 6–12.
We likewise are not persuaded that evidence of record establishes that
“Astarte exercised reasonable diligence in reducing this complex invention to
practice from 1996 through late 1999.” Id. While some of Exhibits F–T are dated
or refer to dates during that time frame, Patent Owner and Mr. Katz’s discussion of
those exhibits do not establish sufficiently that the inventors were reasonably
diligent for the entire three-year period. Creative Compounds, LLC v. Starmark
Labs., 651 F.3d 1303, 1312–13 (Fed. Cir. 2011) (stating that to establish diligence,
“a party must ‘account for the entire period during which diligence is required’”)
(quoting Gould v. Schawlow, 363 F.2d 908, 919 (CCPA 1966)).
For example, Mr. Katz refers to notes and diagrams from a meeting on
December 5, 1996 (Exhibit F), and then describes evidence of activity starting in
mid-March 1997, such as allegedly presented in Mr. Laor’s laboratory notebook
IPR2013-00318
Patent 7,095,917 B2

23

dating from March 14, 1997, to early September 1997 (Exhibit G), and
correspondence from Mr. Krozier dated March 17, 1997, documenting a meeting
held on March 13 and 14, 1997 (Exhibit H). Ex. 2016 ¶¶ 24–26. Thus, evidence
of record fails to show adequately relevant activity for over three months in the
December 1996–March 1997 time frame. See Crane v. Carlson, 125 F.2d 709,
714 (CCPA 1942) (stating that an “unexplained period of time” of two months, “in
which, so far as the record shows, nothing was done toward reducing the invention
to practice, evidences lack of diligence”).
For the reasons discussed above, evidence of record does not establish,
sufficiently, conception of the subject matter of the challenged claims, diligence
after conception, or that inventors of the ’917 patent invented the claimed subject
matter before the filing dates of the Wilde, Hurst, and Young patent references.
Thus, those three references qualify as prior art under 35 U.S.C. § 102(e).
C. Anticipation by Wilde
Petitioner argues that Wilde anticipates claims 1, 53–55, 57–66, 69, and 71–
74 of the ’917 patent. Pet. 9, 17–18, 25–34. As discussed above, Wilde constitutes
§ 102(e) prior art.
1. Wilde (Ex. 1004)
Wilde describes an optical switch that routes an outgoing laser beam
generated by a laser source toward one of a plurality of output ports. Ex. 1004,
3:14–23. Wilde also describes using the optical switch to route reflected laser
beam 192 from one of the output ports toward an input port. Id. at 3:22–25. As
taught in Wilde, the optical switch comprises at least one movable actuator
assembly (e.g., mirror) and a focusing assembly (e.g., a GRIN lens).
15
Id. at 3:30–

15
A “GRIN lens” refers to a Graded Index or a grade refractive index lens.
Ex. 1005, 3:18; Ex. 1004, 4:15–18.
IPR2013-00318
Patent 7,095,917 B2

24

41; 4:11–16. In addition, Wilde describes that “optical switch 104 further
comprises: a beam splitter 473, a third right angle reflector 471, a first position
sensing detector (PSD) 474, and a second position sensing detector (PSD) 475.”
Id. at 7:53–56.
Figure 6a of Wilde is reproduced below.

Figure 6a depicts optical paths traversed by laser beams 191, 191a, and 192. As
shown in the figure, laser source 131 generates outgoing laser beam 191, which
reflects off first mirror 451a toward second mirror 451b, which reflects the beam
toward focusing assembly 252. See also id. at Fig. 4b. Laser beam 191a results
from a displacement of first mirror 451a or second mirror 451b, or both. Id. at
8:17–20. As further stated in Wilde:
IPR2013-00318
Patent 7,095,917 B2

25

[T]he measurement surface of the first position sensing detector 474 is
disposed to detect displacement of the laser beam 191a that results
from the angular movement of the arm holding second mirror 451b,
and the measurement surface of the second position sensing detector
475 is disposed to detect displacement of the laser beam 191a that
results from the angular movement of the arm holding the first mirror
451a. The first and second position sensing detectors 474 and 475
each provide a signal that may be used to represent the angular
position of the outgoing laser beam 191 as a set of coordinates in two
dimensional free space.
Id. at 8:21–32. In addition, Wilde teaches that reflected laser beam 192 exits
focusing assembly 252 and reflects off second mirror 451b and first mirror 451a
towards beam splitters (not shown), where a portion of beam 192 is directed
toward detectors 458 and 459. Id. at 7:32–53 (referring to Figs. 4a–4d). These
detectors measure optical power of components of beam 192 and generate a
“differential signal [that] is processed by a differential amplifier (not shown) for
output.” Id. at 7:49–53.
2. Anticipation by Wilde
Petitioner contends that Wilde discloses each and every limitation of claims
1, 53–55, 57–66, 69, and 71–74. Pet. 17, 25–34. Petitioner points to disclosure in
Wilde as corresponding to certain elements in the challenged independent claims 1
and 53 as follows:
’917 patent claim element Disclosure in Wilde
“source of an optical beam” Laser source 131
a first, second, and/or additional
“beam directing device,” respectively
First mirror 451a, second mirror
451b, and first right angle reflector
455 (Ex. 1004, cols. 6–10; Fig. 4b)
a “plurality of optical receptors” Focusing assembly 252 of output
ports 182
IPR2013-00318
Patent 7,095,917 B2

26

’917 patent claim element Disclosure in Wilde
“control” Voice coil motor assemblies
(“VCMs”) 433 and 434 and
displaceable arms 469 and 470 (id. at
5:1–3, 26–35; Fig. 4b)
“at least one data gathering and
transmission element”
First and second position sensing
detectors (“PSD”) 474 and 475
Pet. 25–31. We are persuaded by Petitioner’s contentions in this regard.
For example, Wilde describes that it “relates generally to the optical
switching of light, and more particularly to the optical switching of light in an
optical data storage and retrieval system.” Ex. 1004, 1:11–14. In addition, in
relation to the “at least one data gathering and transmission element” recited in the
challenged claims, Wilde discloses an optical switch that includes two position
sensing detectors, PSD 474 and PSD 475, as shown in Figures 4b and 6a in Wilde,
for example. As described in Wilde, PSD 474 and PSD 475 are “disposed to detect
displacement of the laser beam 191a that results from the angular movement of the
arm holding second mirror 451b” and “first mirror 451a,” respectively. Id. at
8:21–28.
In addition, PSD 474 and PSD 475 “each provide a signal that may be used
to represent the angular position of the outgoing laser beam 191.” Id. at 8:28–41.
As noted by Petitioner, Wilde describes that “laser beam 191 may be selectively
directed towards any one of the optical fibers 302 by displacing the laser beam
191a until an X-Y signal . . . is detected at the outputs of the first and second
position sensing detectors 474 and 475.” Pet. 26–27; Ex. 1004, 8:67–9:9. In
addition, Wilde describes that “PSDs 474 and 475 resolve movement of the laser
IPR2013-00318
Patent 7,095,917 B2

27

beam 191a across respective measurement surfaces such that the laser beam 191
may be directed with sufficient accuracy towards” an optical fiber. Id.
Based on such disclosures in Wilde, we are persuaded that PSDs 474 and
475 each correspond to a “data gathering and transmission element” as recited in
the challenged claims. PSDs 474 and 475 each corresponds to an element that
gathers information or measurements regarding the location of an optical beam,
and then transmits a signal indicative of that information or measurement to a
control, i.e., VCMs, which control movement of mirrors and therefore the direction
of laser beam 191. See also Ex. 1004, 8:50–55 (describing that “first and second
mirrors 451a and 451b are rotated by respective VCMs”); id. at Figure 6a.
Regarding dependent claims 54 and 55, as discussed above, we construe
“adjacent” to mean “lie close or near,” and “optical receptor” to be an element
“that receives an optical beam after it has been directed by a beam directing device
(e.g., mirror),” such as another optic fiber or optical switch. Petitioner points us to
where Wilde describes first and second mirrors 451a and 451b being near PSDs
474 and 475 (id. at Fig. 4b), and focusing assembly 252 of output ports 182 being
near PSDs 474 and 475 (id. at Fig. 4d; see also Fig. 2a), respectively. Pet. 31. We
are persuaded that Wilde describes “at least one data gathering and transmission
element,” i.e., PSDs 474 and 475, that are “disposed adjacent to at least one of the
beam directing devices,” i.e., mirrors 451a and 451b, and “optical receptors,” i.e.,
focusing assembly 252, such as a GRINs lens, which receives an optical beam after
it has been directed by the mirrors. See Ex. 1004, 4:11–14; Figure 6a. Petitioner
also points us to where Wilde discloses other elements recited in dependent claims
57–66, 69, and 71–74. Pet. 31–34.
Patent Owner does not dispute Petitioner’s contentions in relation to what
Wilde discloses. Instead, Patent Owner argues that Wilde does not qualify as prior
IPR2013-00318
Patent 7,095,917 B2

28

art. PO. Resp. 33. Patent Owner also contends that “Wilde is not a fiber optical
switch and is not used for optical communications.” Id. at 45. In other words,
Patent Owner relies on its claim construction of the term “optical beam” in the
challenged claims, i.e., that this term should be construed as “optical beam used in
communications” or “communications optical beam.” Id. at 7–15, 35. Patent
Owner also contends that “Wilde does not show control of the optical beam
throughput intensity, but rather mirror position or location.” Id. at 45.
For the reasons discussed above, we conclude that Wilde qualifies as prior
art under 35 U.S.C. § 102(e). In addition, we are not persuaded by Patent Owner’s
contentions based on its claim constructions or aspects raised by Patent Owner that
the challenged claims do not require. Id. For example, as discussed above, we do
not construe the claim term “optical beam” in the challenged claims as limited to
“optical beam used in communications” or “communications optical beam” (id. at
7–15), such that it would exclude the type of optical beams involved in the switch
disclosed in Wilde. We likewise do not see how Wilde showing “control of the
optical beam” through “mirror position or location” indicates that the reference
fails to disclose an element of the challenged claims. Id. at 45.
We are persuaded that Petitioner has shown by a preponderance of the
evidence that all elements of independents claims 1 and 53 are disclosed in Wilde.
In addition, based on our review of the evidence and arguments in the Petition, we
also are persuaded that Petitioner has shown by a preponderance of the evidence
that Wilde discloses all elements of dependent claims 54, 55, 57–66, 69, and 71–
74.
D. Obviousness over Wilde and Hurst
Petitioner argues that dependent claim 56, as well as claims 58–66, 69, and
71–74 that depend on claim 56 (or ultimately, claim 53), of the ’917 patent would
IPR2013-00318
Patent 7,095,917 B2

29

have been obvious over Wilde in view of Hurst. Pet. 18–19, 34–35. As discussed
above, Wilde and Hurst both constitute § 102(e) prior art. We discuss Wilde
above.
1. Hurst (Ex. 1005)
Hurst describes directing light transmitted from an optical fiber to a
respective optical head using a “micro-machined” optical switch that uses a
steerable mirror. Ex. 1005, 3:2–18. Embodiments depicted in Figures 7 and 8 of
Hurst disclose “a linearly polarized diode laser source 231 operating in a visible or
near ultraviolet frequency region” that directs outgoing laser beam 191 to optical
switch 104. Id. at 9:52–58; 9:67–10:3. Figure 8 in Hurst is reproduced below.

Figure 8 shows laser optic assembly 101, which provides outgoing laser beam 191
to, and receives reflected laser beam 192 from, optical switch 104 (shown in Figure
7). In relation to both Figures 7 and 8, Hurst describes that reflected laser beam
192 is directed by optical switch 104 to lens 233 and routed by beam splitter 232 to
a “differential detector” (not shown in the figures), which “measures the optical
power in two orthogonal polarization components of the reflected laser beam 192.”
IPR2013-00318
Patent 7,095,917 B2

30

Id. at 10:5–17. Based on this measurement, the detector creates “a differential
signal” that “is processed by the differential amplifier 237 and is output as signal
294,” as depicted in Figure 8. Id. at 10:12–21.
Hurst also presents Figure 16, which is reproduced below.

Figure 16 depicts details of optical switch 104 (of Figure 7), which provides a
switch between laser-optics assembly 101 and optical fibers 102. Id. at 18:9–16.
Optical switch 104 comprises micro-motor 321, micro-mirror 314, and GRIN lens
329. Id. at 18:15–18, 34–38. As explained in Hurst, outgoing laser beam 191 is
directed through GRIN lens 329, and reflected by mirror 314. Id. at 18:33–41.
The angular position of micro-mirror 314 is controlled by micro-motor 321, and
outgoing laser beam 191 is focused by GRIN lens 329 to one end of fiber 102
through mirror 314. Id. at 18:42–65.
Hurst further describes that “[coarse] and/or fine alignment signals
representative of misalignment of outgoing laser beam 191 to the PM optical fiber
IPR2013-00318
Patent 7,095,917 B2

31

102 may be applied to move the micro-motor 321 and the micro-mirror 314
relative to the support portion so as to maintain fine alignment of the outgoing
laser beam 191.” Id. at 19:63–20:1. Hurst states that “fine alignment signals may
be obtained by measuring an amplitude of the reflected laser beam 192,” and such
signals may be “applied as a closed loop feedback signal so as to maintain fine
alignment.” Id. at 20:1–7.
2. Obviousness Based on Wilde and Hurst
Claim 56, which depends from independent claim 53, recites that the system
“also includes at least one optical lens for focusing the optical beam received from
at least one source and transmitting such beam to a first beam directing device.”
Petitioner argues that “Hurst discloses focusing GRIN lens 329 positioned such
that the laser beam 191 is reflected by the micro-mirror 314 after emerging from
the GRIN lens 329.” Pet. 18. Petitioner further argues that an ordinary artisan
would have found it obvious to add the focusing GRIN lens of Hurst to modify the
lens of Wilde “for the benefit of ensuring that the beam access reflects off the
center point of the reflecting surface.” Id.
In response, Patent Owner does not dispute Petitioner’s contentions in
relation to what Wilde or Hurst discloses. Instead, Patent Owner argues that Wilde
and Hurst do not qualify as prior art. PO. Resp. 33. Patent Owner also contends
that although Wilde and Hurst “are similar art,” one would not look to Wilde or
Hurst to make the system recited in the challenged claims because the systems
disclosed in those references differ (e.g., in wavelength, light source, and fibers)
from “an optical switch for coupling optical communication signals carrier on
standard communication fiber.” PO Resp. 50.
For the reasons discussed above, we conclude that Wilde and Hurst both
qualify as prior art under 35 U.S.C. § 102(e). Additionally, as also discussed
IPR2013-00318
Patent 7,095,917 B2

32

above, we do not construe the claim term “optical beam” in the challenged claims
as limited to “optical beam used in communications” or “communications optical
beam” (PO Resp. 7–15), such that it would exclude the type of optical beams
involved in the switches disclosed in Wilde and Hurst.
In addition, we are persuaded that Petitioner establishes sufficiently that one
would have had reason to substitute the GRIN lens of Hurst for the lens in the
optical switch described in Wilde. Along these lines, we note, as discussed above,
that Wilde itself describes that in a “preferred embodiment, the focusing assembly
252 comprises a GRIN lens.” Ex. 1004, 4:11-12. Petitioner also persuades us that
other elements recited in claims 58–66, 69, and 71–74 are disclosed in Wilde. Pet.
31–35.
Thus, Petitioner has shown by a preponderance of the evidence that all
elements of dependent claim 56 are disclosed in Wilde, and also suggested in view
of Hurst. In addition, based on our review of the evidence and arguments in the
Petition, we also are persuaded that Petitioner has shown by a preponderance of the
evidence that Wilde also discloses or suggests all elements of dependent claims
58–66, 69, and 71–74.
E. Obviousness over Young and Hurst
Petitioner argues that claims 1, 53, 56–59, 62–65, and 67–74 of the ’917
patent would have been obvious over Young in view of Hurst. Pet. 19–21, 35–46.
As discussed above, Young and Hurst both constitute § 102(e) prior art. We
discuss Hurst above.
1. Young (Ex. 1006)
Young describes an optical switching system with a plurality of optical input
ports. Ex. 1006, Abstract, Figs. 1, 7, and 10. The disclosed optical switch directs a
IPR2013-00318
Patent 7,095,917 B2

33

light beam traveling along an input beam path into an optical output port. Id. at
3:60–67; 6:18–36. A reproduction of Figure 10 of Young is presented below.

Figure 10 illustrates diagrammatically an embodiment of an optical switch. In this
system, a “set of controlled actuators 125 selectively displaces the mirrors 120 of
the Mx1 front end and the mirrors 11 of the 1xN rear end to provide the
input/output beam port connectivity.” Id. at 7:54–64; see also Abstract.
2. Obviousness Based on Young and Hurst
Petitioner argues that Young and Hurst are analogous art because they relate
to the same field of endeavor (i.e., optical switching) and are directed to coupling
laser light to receptors with rotational reflective elements. Pet. 21. Petitioner
further argues that Young discloses every element recited in claims 1, 53, 56–59,
62–65, and 67–74, except the “data gathering and transmission element” recited in
independent claims 1 and 53. Pet. 19–21, 36–37, 39–41. Petitioner relies on Hurst
for the teaching of this element.
Regarding the “data gathering and transmission element” recited in the
independent claims, Petitioner argues that Hurst discloses “[coarse] and fine
alignment of an outgoing laser beam and a closed loop alignment feedback
IPR2013-00318
Patent 7,095,917 B2

34

system” and “measuring amplitude of reflected laser beam 192 to provide fine
alignment signals.” Pet. 20–21, 37, 40–41. We are persuaded that the differential
detector in Hurst acts as a data gathering and transmission element by:
(1) receiving reflected laser beam 192 from optical switch 104; (2) “measur[ing]
the optical power in . . . components of the reflected laser beam 192” (Ex. 1005,
10:5-17); and (3) generating signal 294, which corresponds to “alignment signals
representative of misalignment of outgoing laser beam 191” (id. at 19:63–65;
10:13–21) (emphasis added). As noted by Petitioner (Pet. 37, 41), Hurst describes
that such alignment signals may be applied to move mirrors “so as to maintain fine
alignment of the outgoing laser beam 191 to the core of the PM optical fibers 102.”
Ex. 1005, 19:63–20:1.
In response, Patent Owner does not dispute Petitioner’s contentions in
relation to what Young or Hurst discloses, but argues that Young and Hurst do not
qualify as prior art. PO Resp. 33. As discussed above, we conclude that Young
and Hurst both qualify as prior art under 35 U.S.C. § 102(e).
Patent Owner further contends, however, that Hurst and Young are not
analogous art. Patent Owner contends that, unlike Young, “Hurst does not involve
optical switching in the fiber optic communications field,” but instead “relates to
the use of micro-machined elements in optical data storage systems.” Id. at 48
(citing Ex. 1005, Abstract). Citing Dr. Smith’s Declaration in support, Patent
Owner contends that the Hurst embodiments differ in a number of ways from the
fiber optic communications switch described in Young. Id. at 48–50 (citing
Ex. 2017, 70–74). For instance, Patent Owner contends that Hurst uses “very
short-length polarization-maintaining fibers coupled to mechanical read-write
arms,” and involves wavelengths that are “visible or near ultraviolet,” necessitating
“alignment requirements of the polarization” to maintain visible or near ultraviolet
IPR2013-00318
Patent 7,095,917 B2

35

optics. Id. at 49. Patent Owner contends, citing Dr. Smith’s testimony, that
communication switches, such as those disclosed in Young, “require a specific
optical system architecture” that “impacts mirror size and overall switch size,” and
that the “details of solving that particular optical problem are substantially different
than solving the short-wavelength optics challenges of Hurst.” Id. at 49 (citing Ex.
2017, 72–73).
Thus, according to Patent Owner, Hurst’s use of polarization-maintaining
fibers and shorter wavelengths “change substantially the optical design and the
components, such as optical coatings.” Id. at 51. Patent Owner contends that
Hurst does not teach “(1) [] a communications-grade fiber switch; (2) how to
monitor intensity of the transmitted signal; or (3) how to close a fine alignment
loop.” Id. Thus, according to Patent Owner, an ordinary artisan would not have
known how to add the feedback element (differential detector) of Hurst to the
Young switch system and get it to work, i.e., the teachings “leave[] the
combination lacking enablement.” Id.
We are not persuaded that Young and Hurst are non-analogous art because,
as Petitioner points out, both references describe optical switching and are directed
to coupling laser light to receptors with rotational reflective elements. Pet. 21.
Patent Owner’s contentions still are relevant, however, to the issue of whether one
of ordinary skill in the art would have had reason to combine the elements
disclosed in Young and Hurst when making an optical switch.
In this regard, Petitioner argues that a person having ordinary skill in the art
would have had reason to provide “the feedback” of Hurst with Young’s optical
switching system “for the benefit of ensuring that the reflective mirror is properly
controlled.” Id.. Petitioner also argues that “the addition of feedback as taught by
Hurst into Young would be a use of a known technique to improve a similar device
IPR2013-00318
Patent 7,095,917 B2

36

in the same way.” Id. According to Petitioner, “[o]ne of ordinary skill in the art
would have realized that Young provided a base device, and Hurst provided a
comparable device, and that adding the feedback of Hurst to Young would have
been predictable.” Id.
Petitioner cites no evidence, such as a declaration from an expert witness, in
support of those contentions, however, especially in relation to the differential
detector (data gathering and transmission element) in Hurst. Id. Moreover,
Petitioner does not explain sufficiently how, or show why, one would have added
that element of Hurst to the optical switch of Young, or one would have been using
a “known technique to improve a similar device in the same way,” or that “adding
the feedback of Hurst to Young would have been predictable.” By contrast, as
discussed above, Patent Owner explains, citing evidence in support, i.e., Dr.
Smith’s Declaration, that one reading the two references would have understood
that the two disclosed systems differed enough, such that it would not have been
straightforward or “predictable” to combine elements.
We conclude that Petitioner does not address adequately in its Petition, nor
respond sufficiently in its Reply to Patent Owner’s Response, contentions raised by
Patent Owner in this regard, or in cited testimony by Dr. Smith. At most,
Petitioner contends in its Reply that independent claims 1 and 53 of the ’917 patent
do not recite elements identified by Patent Owner as deficient in Hurst, and that
Patent Owner’s “attempts to read limitations from the specification into the claims
is improper.” Reply 14. We are not persuaded that Petitioner shows by a
preponderance of the evidence that an ordinary artisan would have included “at
least one data gathering and transmission element,” as recited in challenged
independent claims 1 and 53, in the optical switch disclosed in Young based on the
teachings in Hurst or Young.
IPR2013-00318
Patent 7,095,917 B2

37

For the reasons given above, and in light of the record before us, Petitioner
has not shown by a preponderance of the evidence that claims 1, 53, 56–59, 62–65,
and 67–74 of the ’917 patent would have been obvious over Young in view of
Hurst.
F. Anticipation by Tsai
Petitioner contends that Tsai anticipates claims 53–64, 66, 67, and 71–74 of
the ’917 patent. Pet. 22–23, 50–54. As discussed above, Tsai constitutes § 102(b)
prior art.
1. Tsai (Ex. 1008)
Tsai describes a multiple channel optical coupling switch. Ex. 1008, 1:40–
49, Fig. 1. Figure 2 of Tsai is reproduced below.

Figure 2 depicts a multi-channel fiber optic coupling device. Id. at 2:33–38. As
depicted in Figure 2 and/or in Figure 1 (not shown), Tsai discloses a device
comprising input fiber 12, GRIN lens 16, reflector assembly 22 including a curved
IPR2013-00318
Patent 7,095,917 B2

38

reflector 24 (e.g., a mirror), motor 26 that rotates reflector assembly 22, external
controller 50, and optical interrupter 36 that determines the angular position of
reflector assembly 22. Id. at 2:59–3:45; Figs. 1 and 2.
Figure 4 in Tsai is reproduced below.

Figure 4 depicts optical interrupter 36 and reflector assembly 22. Id. at 2:41–42.
As shown in Figure 4, optical interrupter 36 includes light source 70 and optical
detector 72. Id. at 4:29–34. As further explained in Tsai:
When the reflector assembly 22 is rotated by motor 26, it
moves zero position plate 34 in a circular arc. When the zero position
plate 34 enters the open space in optical interrupter 36, as shown in
FIG. 4, the light beam transmitted by the light source 70 is broken.
An external controller 50 is notified by the optical detector 72 that the
light beam transmitted by the light source 70 has been broken. The
external controller 50 then sets a flag which indicates that the reflector
assembly 22 is in its zero (initial) position.
Since the external controller 50 controls the movement of the
motor 26, the reflector assembly 22 can be rotated to a selected
position such that a light signal from input fiber 12 can be reflected to
a selected one of the plurality of output fibers 40 . . . n.
IPR2013-00318
Patent 7,095,917 B2

39

Id. at 4:35–49.
2. Anticipation by Tsai
Petitioner contends that Tsai discloses each and every limitation of claims
53–64, 66, and 71–74. Pet. 50–54. Patent Owner counters that Tsai does not
anticipate independent claim 53 (and therefore any of its dependent claims)
because the reference does not disclose a “data gathering and transmission
element” that provides “an indication regarding the current orientation of the
controlled beam directing device or the current location of the optical beam” to the
control element, as required in independent claim 53. PO Resp. 37 (emphasis
omitted). According to Patent Owner, “Tsai only provides the location of the
mirror once, at the zero positioning location.” Id. Patent Owner contends,
quoting certain passages from Tsai, that “there is absolutely nothing in the Tsai
reference which would indicate that the current orientation of the mirror or the
location of the beam is tracked to assist in the adjustment of the mirror itself.” Id.
at 40.
We are persuaded that Petitioner has shown by a preponderance of the
evidence that optical detector 72 in Tsai’s device corresponds to the “data
gathering and transmission element” in claim 53. Pet. 51 (citing Ex. 1008, 4:36–
44). As noted above, optical detector 72 notifies the external controller when light
source 70 is broken (Ex. 1008, 4:36–44), i.e., provides an indication regarding the
current location of the optical beam to the control. Thereafter, external controller
50 controls the rotation of reflector assembly 22 (i.e., a beam directing device)
using motor 26 “such that a light signal from input fiber 12 can be reflected to a
selected one of the plurality of output fibers 40 . . . n.” Id. at 4:45–49. In other
words, Tsai’s optical detector 72 provides an indication “to the control for
adjusting at least one of the beam directing devices,” as recited in claim 53.
IPR2013-00318
Patent 7,095,917 B2

40

We also are persuaded that Petitioner has shown by a preponderance of the
evidence that Tsai describes the other elements recited in 53–64, 66, and 71–74.
Pet. 51–54. For example, regarding claims 54 and 55, Petitioner points to
description in Tsai disclosing that optical detector 72 is disposed adjacent to, i.e.,
near to, reflector assembly 22 (beam directing device) and output fibers 40 (optical
receptors), as shown in Figures 2–4 of Tsai. Id. at 51. We note, however, that
Petitioner does not provide contentions as to where Tsai describes the “multiple
sources” element recited in claim 67. Id. at 10, 50–54. Thus, Petitioner does not
establish by a preponderance of the evidence that Tsai describes the element
recited in claim 67.
G. Anticipation by Chande
Petitioner argues that Chande anticipates claims 1, 53, 54, 57–64, 66, 69, 71,
73, and 74 of the ’917 patent. Pet. 23–24, 54–56, 58–62. As discussed above,
Chande constitutes § 102(b) prior art.
1. Chande (Ex. 1009)
Chande describes a system that directs successive beam pulses of a laser into
different optical fibers. Ex. 1009, Abstract. The system comprises a lens, optical
fibers, and galvanometer-driven mirrors for directing a laser beam through the lens
for focusing onto different fiber tips. Id.
IPR2013-00318
Patent 7,095,917 B2

41

Chande presents Figure 5, reproduced below:

Figure 5 depicts laser beam directing system 300, which directs laser beam 302
into one of a plurality of optical fibers 304. The system comprises mirror 306,
which reflects the beam onto second mirror 310. The beam reflects off mirror 310
onto one of four focusing lenses 312, which focuses the beam onto one of the
optical fibers 304. Id. at 8:39–48. Computer 332 controls galvanometers 326 and
330, and, therefore, galvanometer shafts 324 and 328, which control mirrors 306
and 310, respectively. Id. at 8:64–9:5.
As described in Chande and depicted in Figure 9 (not shown here),
galvanometer 326 provides an output 640 of an analog signal proportional to the
angular position of shaft 324, and, therefore, mirror 306. Id. at Fig. 9; 3:57–60;
14:21–29. Output 640 is applied to first input of comparator 644, which “provides
an error signal representative of the difference between the actual and desired
galvanometer positions, the error signal being amplified by an amplifier 648 and
IPR2013-00318
Patent 7,095,917 B2

42

applied to drive galvanometer 326.” Id. at 14:21–35. Galvanometer 330, which
controls mirror 310, similarly creates output 650 applied to comparator 654, which
generates an error signal sent to galvanometer 330. Id. at 14:36–52.
2. Anticipation by Chande
Petitioner argues that Chande discloses each and every limitation of claims
1, 53, 54, 57–64, 66, 69, 71, 73, and 74. Pet. 23–24, 54–56, 58–62. Patent Owner
responds by focusing on independent claims 1 and 53. PO Resp. 34–37. Notably,
Patent Owner relies on its claim construction of the term “optical beam” in the
challenged claims, i.e., that this term should be construed as “optical beam used in
communications” or “communications optical beam.” Id. at 7–15, 35.
In this regard, Patent Owner contends that Chande does not involve fiber
optic switches used in the communications field, but rather “describes a switch
used in manufacturing operations involving high powered neodymium:yttrium
aluminum garnet (‘YAG’) lasers.” Id. at 34. Patent Owner argues that Chande
“relates to ‘high power gas and solid state lasers’ used for energy intensive and
destructive manufacturing operations such as ‘welding,’ ‘scribing information’ and
‘drilling.’” Id. at 35. Patent Owner contends that, by contrast, the ’917 patent
relates to the switching of laser communication signals that travel substantial
distances, which is “accomplished by delicate and minute beam directing devices
including, for example, MEMS mirror assemblies.” Id.
Patent Owner further argues that the Chande system differs from the system
recited in claims 1 and 53 because Chande discloses (1) a “single, locally located
laser beam,” not fiber sources carrying communication signals; (2) a distribution
system for delivering the optical power of a single laser to a plurality of locally
located workstations, not a fiber-to-fiber switch; (3) a high power pulsed YAG
laser light source operating at 1064 nm, not a communications laser operating at
IPR2013-00318
Patent 7,095,917 B2

43

1550 nm, such that “Chande’s switch will be different in material and design”;
(4) a system that use a laser power that is “approximately 400 Watts average power
or 50 J/pulse, thousands of times more intense than the power of communication
signals”; (5) output fibers that are fused silica fibers or fiber bundles, which are not
used in the communications field; and (6) a galvanometer control loop that
receives no feedback regarding the current location of the optical beam. Id. at 35–
36 (citing Ex. 2012; Ex. 2017, 100–105).
As discussed above, we do not define “optical beam” to be limited to
“optical beam used in communications,” as Patent Owner proposes. Pet. 7–15.
Based on our claim construction, and upon review of the record before us, we are
persuaded that Petitioner establishes, by a preponderance of the evidence, that
Chande describes every element recited in claims 1, 53, 54, 57–64, 66, 69, 71, 73,
and 74. For example, Petitioner points us to where Chande discloses a “control” as
recited in the independent claims, i.e., digital computer 332, which controls the
positions of galvanometer shafts 324 and 328, and mirrors 306 and 310. Id. at 55–
56 (citing Ex. 1009, 9:2–9).
In addition, Petitioner points to where Chande discloses a “data gathering
and transmission element” as recited in independent claims 1 and 53. Pet. 56, 59.
We are persuaded that galvanometers 326 and 330 provide an indication regarding
the current orientation of a controlled beam directing device (mirror 306 and 310)
to the control (computer 332) for adjusting at least one of the beam directing
devices, as shown in Figures 5–7 and 9, for example. See also Ex. 1009, 12:3–59
(describing that “[g]alvanometers 326 and 330 each feed back an analog position
signal, on their respective outputs 420 and 422, to the galvanometer driver [408],”
and that “[s]ignal conditioner 402 is coupled to receive the position acknowledge
signal generated by the galvanometer driver,” and “condition signals being
IPR2013-00318
Patent 7,095,917 B2

44

provided to computer 332,” which itself generates a signal that directs the
galvanometer driver to cause the galvanometer to orient a mirror). We are not
persuaded by Patent Owner’s contention that “the galvanometer control loop [in
Chande] receives no feedback regarding the current location of the optical beam.”
PO Resp. 36. Instead, we are persuaded that the “the galvanometer control loop”
in Chande receives “feedback” (id.) regarding the current orientation of the
controlled beam directing device, i.e., the mirror.
Moreover, the differences that Patent Owner asserts between Chande’s
system and the system recited in claims 1 and 53, as discussed above, appear to
rely on elements not recited in the claims, such as communication signals, and
certain types of fibers, light sources, and power strength used in field of fiber optic
communication. Thus, we are not persuaded that Chande fails to describe the
elements of claims 1 and 53 as properly construed.
Petitioner also explains where Chande describes other elements recited in
claims 1, 53, 54, 57–64, 66, 69, 71, 73, and 74. Pet. 54–56, 58–62. For example,
regarding claim 54, Petitioner has shown by a preponderance of the evidence that
Chande discloses a data gathering and transmission element, i.e., galvanometers
326 and/or 330 (as shown in Figure 9), that are adjacent, i.e., near to, mirrors 306
and 310, respectively (as shown in Figure 5). Id. at 59. Based on our review of the
evidence and arguments in the Petition, we are persuaded that Petitioner has shown
by a preponderance of the evidence that Chande anticipates claims 1, 53, 54, 57–
64, 66, 69, 71, 73, and 74.
H. Patent Owner’s Motion to Amend
Patent Owner moves to substitute claims 75 and 76 for challenged
independent claims 1 and 53, respectively, assuming we find claims 1 and 53
unpatentable. Motion 1. As stated above, we determine that Petitioner has
IPR2013-00318
Patent 7,095,917 B2

45

demonstrated by a preponderance of the evidence that challenged claims 1 and 53
are unpatentable. Thus, Patent Owner’s Motion to Amend is before us for
consideration. For the reasons set forth below, Patent Owner’s Motion to Amend
is denied.
Proposed substitute claims 75 and 76 are each independent claims.
Proposed substitute claims 75 and 76 are reproduced as follows:
75. (substitute for claim 1) An fiber optical beam
communications switching system for transmitting an optical
communications beam from at least one fiber source to at least one of
a plurality of fiber optical receptors comprising:
at least one source of an optical communications beam;
at least one first beam directing device mounted across a first
area of free space from the source;
at least one second beam directing device mounted across a
second area of free space from the first beam directing device;
a plurality of fiber optical receptors;
a control operative for at least one of 1) positioning a first beam
directing device to direct the optical communications beam from at
least one source to a second beam directing device, and 2) positioning
said second beam directing device to direct the optical
communications beam from said second beam directing device to a
selected one of said plurality of fiber optical receptors; and
at least one data gathering and transmission element to provide
an indication regarding the current orientation of the controlled beam
directing device or the current location of the optical communications
beam to the control for adjusting at least one of the beam directing
devices.
76. (substitute for claim 53) An fiber optical beam
communications switching system for transmitting an optical
IPR2013-00318
Patent 7,095,917 B2

46

communications beam from at least one fiber source to at least one of
a plurality of fiber optical receptors comprising:
at least one source of an optical communications beam;
at least one first beam directing device mounted across a first
area of free space from the source;
a plurality of fiber optical receptors mounted across a second
area of free space from the first beam directing device;
a control so that a first beam directing device will be positioned
to direct the optical communications beam from at least one source to
a selected one of said plurality of fiber optical receptors; and
at least one data gathering and transmission element to provide
an indication regarding the current orientation of the controlled beam
directing device or the current location of the optical communications
beam to the control for adjusting at least one of the beam directing
devices.
Motion 1–3 (underlining added by Patent Owner to show added features, and
strike-through added to show deleted features).
A motion to amend claims in an inter partes review is not, itself, an
amendment. As the moving party, Patent Owner bears the burden of proof to
establish that it is entitled to the relief requested. 37 C.F.R. § 42.20(c). Thus,
Patent Owner’s proposed substitute claims are not entered automatically, but only
upon Patent Owner having demonstrated by a preponderance of the evidence the
patentability of those substitute claims. See, e.g., 37 C.F.R. § 42.1(d) (noting that
the “default evidentiary standard [in proceedings before the Board] is a
preponderance of the evidence”).
1. Claim Construction
Claim construction is an important step in a patentability determination.
Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003). Thus, a
IPR2013-00318
Patent 7,095,917 B2

47

motion to amend claims must identify how the proposed substitute claims are to be
construed, especially when the proposed substitute claims introduce new claim
terms. See Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at
7 (PTAB June 11, 2013) (Paper 26).
In its Motion to Amend, Patent Owner introduces two new claim terms—
i.e., “communications” and “fiber”—in its proposed substitute claims. Patent
Owner argues that those claim features distinguish the proposed substitute claims
from the prior art. See, e.g., Motion 10–14. Patent Owner does not provide,
however, adequate claim constructions or explanations for how the new claim
terms should be construed. For example, in relation to the term “communications,”
Patent Owner offers, at most, that the addition of this term means that the recited
subject matter “involve[s] switches only in the fiber optic communications field of
endeavor,” and that the term identifies claimed components as “related to a fiber
optic switching device that switches optical beams containing communications
signals.” Id. at 3, 10.
Simply referring to the terms “communications” and “fiber” in the Motion to
Amend does not define adequately an ordinary and customary meaning, as would
be understood by one of ordinary skill in the art in the context of the Specification
(which itself does not define “communications”). Ex. 1001, 1:11–14 (presenting
the one time the term “communication” is used in the ’917 patent Specification).
During the oral hearing, Patent Owner’s counsel, upon questioning, proposed that
“communication” means “a beam of light, with a frequency around approximately
1500 nanometers.” Paper 44, 47:4–13. The Motion to Amend, however, does not
suggest such a claim construction, nor refer to any evidence, e.g., a dictionary or
scientific definition, in support. Moreover, as discussed during the oral hearing, it
is not clear from the record if “communication” might mean simply “transmission
IPR2013-00318
Patent 7,095,917 B2

48

of information,” a definition not limited to a beam of light at 1500 nm. Id. at
53:14–55:18.
Without a reasonable construction of the new claim features added by the
proposed substitute claims, Patent Owner’s Motion does not provide adequate
information for us to determine whether its proposed substitute claims are
patentable over the prior art generally. Thus, we are not persuaded that Patent
Owner has met its burden to demonstrate patentability of the proposed substitute
claims under 37 C.F.R. § 42.20(c).
2. Written Description Support
A motion to amend claims must identify clearly the written description
support for each proposed substitute claim. 37 C.F.R. § 42.121(b). The written
description test is whether the original disclosure of the application relied upon
reasonably conveys to a person of ordinary skill in the art that the inventor had
possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc.
v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Thus, the
motion should account for the claimed subject matter as a whole, i.e., the entire
proposed substitute claim, when showing where there is sufficient written
description support for each claim feature. See Nichia Corp. v. Emcore Corp.,
Case IPR2012-00005, slip op. at 4 (PTAB June 3, 2013) (Paper 27).
In both substitute claims, Patent Owner proposes to delete “the current
orientation of the controlled beam directing device or” so that the claim requires
that the “data gathering and transmission element” provides an “indication
regarding the current location of the optical communications beam to the control.”
In written description support, Patent Owner cites the ’917 patent, as issued (Ex.
1001), at column 1, line 62–column 2, line 17, column 2, line 17, and column 5,
lines 37–46. Motion 6.
IPR2013-00318
Patent 7,095,917 B2

49

As an initial matter, we note that Patent Owner does not direct us to support
in the original disclosure of the application as-filed, as required under 37 C.F.R.
§ 42.121(b)(1) (stating that a motion to amend claims must include a claim listing
setting forth “support in the original disclosure of the patent”). Even considering
the ’917 patent as issued, however, the disclosure identified by Patent Owner does
not point us to adequate written description support for a data gathering and
transmission element providing an “indication regarding the current location of the
optical communications beam.” Instead, the disclosure identified by Patent Owner
provides written description support for an element providing an “indication
regarding the current orientation of the controlled beam directing device,” i.e., a
mirror. See Opp. 5.
For example, column 1, line 62–column 2, line 17, of the ’917 patent
describes that “LED’s provide signals for controlling the position of the movable
mirror,” and that the LED’s “accurately locate the mirror relative to one another
for proper control of mirror movement.” Ex. 1001, 1:62–2:17. That passage in the
’917 patent does not describe LEDs identifying the current location of the light
beam. Thereafter, the sentence ending at column 2, line 17, describes how a
“mirror is disposed in alignment with the fiber for reflecting an optical signal from
the fiber to the movable mirror,” but again does not describe identifying the current
location of the optical signal. Id. at 2:13–17. Likewise, column 5, lines 37–46,
describes how LEDs provide radiation “associated with the first movable mirror,”
but does not mention identifying the current location of the optical signal/light
beam. Id. at 5:37–46.
We note that in its Reply in support of its Contingent Motion to Amend,
Patent Owner points out for the first time that the ’917 patent teaches that “ʻ[t]he
control system [of the ‘917 Patent] can be similar to that described in U.S. Pat. No.
IPR2013-00318
Patent 7,095,917 B2

50

5,177,348,’” (“the ’348 patent”). Reply to Opp. 1–2 (citing Ex. 1001, 7:53–55).
Patent Owner then argues that the ’348 patent describes the use of “Radiation
Emitting Devices (‘RED’s’) to detect the location of the optical communications
beam and provide feedback to a servo controlled, piezoelectric fiber bender.” Id.
at 2. Even assuming that to be the case, the cited passage in the ’917 patent
Specification refers to “control system 100,” i.e., the “control” limitation recited in
the challenged claims. Ex. 1001, 7:50–55. That portion of the Specification does
not describe using the REDs described in the ’348 patent as a data gathering and
transmission element.
Thus, Patent Owner points us to written description support for the
limitation deleted from the proposed substitute claims, but not the remaining
limitation of a data gathering and transmission element that provides an indication
regarding the current location of an optical beam to the control. As such, Patent
Owner’s Motion to Amend does not set forth adequate written description support
for each proposed substitute claim as required by 37 C.F.R. § 42.121(b)(1) and
§ 42.121(b)(2).
III. CONCLUSION
For the foregoing reasons, we are persuaded that Petitioner has demonstrated
by a preponderance of the evidence that: (1) claims 1, 53–55, 57–66, 69, and 71–
74 of the ’917 patent are unpatentable under 35 U.S.C. § 102(e) as anticipated by
Wilde, (2) claims 56, 58–66, 69, and 71–74 are unpatentable under 35 U.S.C.
§ 103(a) over the combination of Wilde and Hurst; (3) claims 53–64, 66, and 71–
74 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Tsai; and (4) claims
1, 53, 54, 57–64, 66, 69, 71, 73, and 74 are unpatentable under 35 U.S.C. § 102(b)
as anticipated by Chande. We are not persuaded, however, that Petitioner has
demonstrated by a preponderance of the evidence that claims 1, 53, 56–59, 62–65,
IPR2013-00318
Patent 7,095,917 B2

51

and 67–74 are unpatentable under 35 U.S.C. § 103(a) over the combination of
Young and Hurst, or that claim 67 is unpatentable under 35 U.S.C. § 102(b) as
anticipated by Tsai. Petitioner has not demonstrated by a preponderance of the
evidence that challenged claims 67, 68, or 70 of the ’917 patent are unpatentable
based on the grounds before us.
In addition, for the reasons discussed above, Patent Owner has not, in its
Motion to Amend, satisfied its burden of proof.
IV. ORDER
Accordingly, it is
ORDERED that Petitioner has shown by a preponderance of the evidence
that claims 1, 53–66, 69, and 71–74 of the ’917 patent are unpatentable; and
FURTHER ORDERED that Patent Owner’s Motion to Amend is denied;
and
FURTHER ORDERED that, because this is a Final Written Decision, the
parties to the proceeding seeking judicial review of the decision must comply with
the notice and service requirements of 37 C.F.R. § 90.2.

IPR2013-00318
Patent 7,095,917 B2

52

For PETITIONER:

Kimberly Nobles
John Teresinski
Jan Weir
Sara Kerrane
kim.nobles@klgates.com
john.teresinski@klgates.com
jan.weir@klgates.com
sara.kerrane@klgates.com

For PATENT OWNER:

A. Justin Poplin
patent@lathropgage.com