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Petition for Inter Partes Review of U.S. Patent No. 6,404,953
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________________
ARRIS GROUP, INC., TELLABS, INC. ALCATEL-LUCENT USA, INC., and SOURCE PHOTONICS, INC.
Petitioner,
v.
CIRREX SYSTEMS LLC Patent Owner
U.S. Patent No. 6,404,953 to Wach et al.
Issue Date: June 11, 2002 Title: Optical Assembly with High Performance Filter
_____________________
Inter Partes Review No: Unassigned _____________________
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
Mail Stop “PATENT BOARD” Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
i
TABLE OF CONTENTS
Page
I. INTRODUCTION ........................................................................................... 1
II. OVERVIEW .................................................................................................... 2
III. MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1)) ...................................... 5
A. Real parties-in-interest (37 C.F.R. § 42.8(b)(1)) ................................... 5
B. Related matters (37 C.F.R. § 42.8(b)(2)) .............................................. 6
1. Judicial Matters ........................................................................... 6
2. Related Patents ............................................................................ 6
C. Designation of Lead and Back-up Counsel (37 C.F.R. § 42.8(b)(3)) ............................................................................................. 6
D. Notice of Service Information (37 C.F.R. § 42.8(b)(4)) ....................... 6
IV. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)) ................................. 7
V. RELIEF REQUESTED (37 C.F.R. § 42.22(a)(1)) .......................................... 7
VI. REASONS FOR THE REQUESTED RELIEF (37 C.F.R. § 42.22(a)(1)) ................................................................................................................ 7
A. Summary of the ‘953 Patent .................................................................. 8
B. Prosecution History ............................................................................. 11
C. Claim Construction ............................................................................. 12
1. Proposed construction of “waveguide” ..................................... 12
2. Proposed construction of “mask” ............................................. 13
3. Proposed construction of “thin-film filter” ............................... 14
D. Priority Date of the Challenged Claims .............................................. 14
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
ii
E. Person of Ordinary Skill in the Art and The Scope and Content of the Prior Art. ................................................................................... 15
F. Summary of the Petition ...................................................................... 16
VII. IDENTIFICATION OF CHALLENGES ...................................................... 17
A. Challenged Claims .............................................................................. 17
B. Statutory Grounds for Challenges ....................................................... 18
VIII. THE CHALLENGED CLAIMS ARE NOT PATENTABLE ...................... 19
A. Challenge 1: Claims 1, 23, and 31 are Unpatentable Over Shih ......... 19
B. Challenge 2: Claims 1, 23, 31, and 51 Are Unpatentable Over Nicholson ............................................................................................. 29
C. Challenge 3: Claims 1 and 23 are Unpatentable Over Yokoyama ........................................................................................... 34
D. Challenge 4: Claims 1, 31, 47, and 51 Are Unpatentable Over Naganuma ............................................................................................ 39
E. Challenge 5: Claims 24 and 26 Are Unpatentable over Yokoyama in view of Takashashi ....................................................... 45
F. Challenge 6: Claims 24 and 26 Are Unpatentable over Naganuma in view of Fulton ............................................................... 52
IX. Conclusion ..................................................................................................... 57
Certificate of Service
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
iii
PETITIONER’S EXHIBIT LIST
Exhibit No. Description
ARRIS - 1001 U.S. Patent No. 6,404,953 (“the ‘953 Patent”)
ARRIS - 1002 U.S. Patent No. 6,404,953 File History
ARRIS - 1003 Intentionally left blank
ARRIS - 1004 U.S. Patent No. 5,546,486 (“Shih”)
ARRIS - 1005 U.S. Patent No. 4,883,062 (“Nicholson”)
ARRIS - 1006 U.S. Patent No. 5,905,827 (“Naganuma”)
ARRIS - 1007 U.S. Patent No. 5,457,558 (“Yokoyama”)
ARRIS - 1008 U.S. Patent No. 5,953,477 (“the ‘477 Patent” or “Wach”)
ARRIS - 1009 James D. Rancourt, Optical Thin Films, McGraw-Hill Publishing, NY, (1987)
ARRIS - 1010 Max Born and Emil Wolf, Principles of Optics (1975)
ARRIS - 1011 U.S. Patent No. 5,274,721 (“Dickinson”)
ARRIS - 1012 Resume of Petitioner’s Expert, W. John Tomlinson, Ph.D.
ARRIS - 1013 Appendix A “Related Patents”
ARRIS - 1014 Takashashi, “Temperature stability of thin-film narrow-bandpass filters produced by ion-assisted deposition,” Applied Optics (1995) (“Takashashi”)
ARRIS - 1015 Fulton, “Application of ion-assisted-deposition using a gridless end-Hall ion source for volume manufacturing of thin-film optical filters,” SPIE (1994) (“Fulton”)
ARRIS - 1016 Declaration of Petitioner’s Expert, W. John Tomlinson, Ph.D.
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
I. INTRODUCTION
Cirrex Systems LLC (“Patent Owner”) has alleged that Arris Group, Inc.,
Tellabs, Inc., Alcatel-Lucent USA, Inc., and others have infringed U.S. Patent No.
6,404,953 (“the ‘953 Patent”) in a civil action in the District of Delaware identified
in Section III below (the “Delaware Action”), which was filed on May 22, 2013.
Patent Owner’s original Complaint was served on May 26, 2013, and identified
only Claim 30 of the ‘953 Patent as being infringed. On February 1, 2014, the
Patent Owner served its infringement contentions, confirming that only Claim 30
in the ‘953 Patent was asserted in the Delaware Action.
Accordingly, on May 23, 2014, Arris Group, Inc., Tellabs, Inc., Alcatel-
Lucent USA, Inc., and Source Photonics, Inc. (collectively, “Petitioner”) filed a
Petition for Inter Partes Review requesting review of Claim 30 of the ‘953 Patent.
Arris Group Inc. v. Cirrex Systems LLC, Case No. IPR2014-00815, (Paper 1) (May
23, 2014) (the “First Petition”). In its December 3, 2014 Decision on Institution of
the First Petition (the “Decision”), the Board ordered the institution of inter partes
review of the ‘953 Patent on each of Petitioner’s grounds challenging Claim 30.
See Institution Order, IPR2014-00815 (PTAB Dec. 3, 2014) (Paper 8).
As of the statutory one-year bar date under 35 U.S.C. § 315(b) of May 26,
2014, Claim 30 remained the only claim in the ‘953 Patent asserted by the Patent
Owner against the Petitioner. On June 26, 2014, however, the Patent Owner
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
2
identified additional claims of the ‘953 Patent as being infringed in the Delaware
Action, specifically, Claims 1, 23, 24, 26, 31, 47, and 51 (the “Additional
Claims”).
Therefore, and in accordance with 35 U.S.C. §311 et seq. and 37 C.F.R.
§42.1 et seq., Petitioner files the instant Petition for Inter Partes Review of the
‘953 Patent requesting cancellation of the Additional Claims (the “Second
Petition”). Concurrently, Petitioner files a Motion for Joinder herewith to join this
Second Petition with the already instituted proceeding in IPR2014-00815.
Petitioner respectfully submits that the Additional Claims (also referred to
herein as the “Challenged Claims”) are unpatentable under 35 U.S.C. §102 and
§103 in view of the prior art references discussed herein. There is a reasonable
likelihood that Petitioner will prevail with respect to the Challenged Claims.
Accordingly, it is respectfully requested that the Board institute an inter partes
review of the ‘953 Patent pursuant to 37 C.F.R. §42.108.
II. OVERVIEW
The Challenged Claims of the ‘953 Patent are unpatentable as anticipated or
obvious over the prior art. The Challenged Claims are: independent Claim 1;
Claims 23, 24, and 26 (which are dependent from Claim 1); Claims 31 and 51
(which are dependent from Claim 30); and Claim 47 (which is dependent from
Claim 31).
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
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Claim 30 was the only challenged claim in the First Petition, as it was the
only asserted claim at the time in the Delaware Action. Similar to Claim 30, Claim
1 is directed to an optical assembly comprising: (1) a waveguide; (2) a filter in
optical communication with the waveguide; and (3) a mask adhering to a filter
surface. In its Decision, the Board found that Petitioner had demonstrated a
reasonable likelihood of prevailing on each of the grounds set forth showing that
the optical assembly comprising a waveguide, filter, and mask recited in Claim 30
is not patentable. See Institution Order, IPR2014-00815, (PTAB Dec. 3, 2014)
(Paper 8), 2-3.
Specifically, the Board found it reasonably likely that the optical assembly is
obvious over U.S. Patent No. 5,546,486 to Shih et al. (“Shih”), attached herein as
ARRIS-1004; anticipated by U.S. Patent No. 4,883,062 to Nicholson
(“Nicholson”), attached herein as ARRIS-1005; and anticipated by U.S. Patent No.
5,457,558 to Yokoyama (“Yokoyama”), attached herein as ARRIS-1007. Id.
As discussed below, newly asserted Claim 1 was known or obvious over
the same prior art references for reasons similar to the Board’s findings with
respect to Claim 30 in the First Petition. The Challenged Claims also include
Claims 23, 24, and 26, each dependent from Claim 1, which further define the
filter recited in Claim 1. Claim 23 specifies that the filter comprises thin-film
layers of alternating refractive index. Claim 24 specifies that the filter
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
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comprises a dielectric stack having a packing density of at least 95%. Claim 26
specifies that the filter comprises a multi-layer high performance thin film filter
having a packing density of at least 95%. As discussed below, the use of such
filters was well known in optical assemblies rendering Claims 23, 24, and 26
unpatentable.
The Challenged Claims also include Claim 31 which is dependent from
Claim 30 and specifies that the waveguide is an optical fiber. Each of the
references providing grounds for unpatentability of Claim 30 in the First Petition
includes an optical fiber as a waveguide and thus render Claim 31 unpatentable as
discussed below.
The Challenged Claims also include Claim 47 which is dependent from
Claim 31 and specifies that the mask is rigid. Fiber optic assemblies as recited in
Claim 31 having a rigid mask were well known in the prior art, rendering Claim 47
unpatentable. For example, U.S. Patent No. 5,905,827 to Naganuma et al.
(“Naganuma”), attached herein as ARRIS-1006, teaches an optical assembly
comprising: (1) an optical fiber; (2) a thin-film filter in optical communication
with the optical fiber; and (3) a rigid mask in contact with a face surface of the
filter.1
1 FIG. 1 of Naganuma has been annotated to label the waveguide (blue), filter
(green), and mask (red).
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Petition for Inter Partes Review of U.S. Patent No. 6,404,953
6
B. Related matters (37 C.F.R. § 42.8(b)(2))
1. Judicial Matters
As of the filing date of this Petition and to the best knowledge of the
Petitioner, the ‘953 Patent is involved in the following litigation:
Cirrex System LLC v. Verizon Communications Inc., et al., D. Del. Case
No.: 13-cv-921-GMS, filed on May 22, 2013 (served on May 26, 2013).
2. Related Patents
See Appendix A “Related Patents,” attached herein as ARRIS-1013.
C. Designation of Lead and Back-up Counsel (37 C.F.R. § 42.8(b)(3))
Lead Counsel Back-Up Counsel
D. Joseph English
USPTO Reg. No. 42,514
DUANE MORRIS, LLP
505 9th Street NW, Suite 1000
Washington, D.C. 20004
Phone: (202) 776-5228
Fax: (202) 776-7801
Email: [email protected]
John M. Baird
USPTO Reg. No. 57,585
DUANE MORRIS LLP
505 9th Street NW, Suite 1000
Washington, D.C. 20004
Phone: (202) 776-7840
Fax: (202) 776-7801
Email: [email protected]
D. Notice of Service Information (37 C.F.R. § 42.8(b)(4))
Please direct all correspondence to Lead Counsel at the above address.
Petitioner consents to email service at: [email protected] and
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
7
IV. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a))
Petitioner certifies that the Patent for which review is sought is available for
inter partes review and that Petitioner is not barred or estopped from requesting an
inter partes review challenging the patented claims on the grounds identified in
this Petition. Although Petitioner was served more than one year ago with a
complaint asserting infringement of the ‘953 Patent in the Delaware Action,
Petitioner submits that, pursuant to 35 U.S.C. § 315(b), it is not barred from filing
the present Petition because: (i) Petitioner timely filed its First Petition for Inter
Partes Review of the ‘953 Patent (IPR2014-00815); and (ii) Petitioner
accompanies the present Petition with a Motion for Joinder under 35 U.S.C.
§ 315(c).
V. RELIEF REQUESTED (37 C.F.R. § 42.22(a)(1))
Petitioner respectfully requests that the Board review the accompanying
prior art and analysis and institute an inter partes review of the Challenged Claims
of the ‘953 Patent pursuant to 37 C.F.R. §42.108 and cancel the Challenged Claims
(Claims 1, 23, 24, 26, 31, 47, and 51) as unpatentable.
VI. REASONS FOR THE REQUESTED RELIEF (37 C.F.R. § 42.22(a)(1))
As explained below and in the attached Declaration of Petitioner’s Expert,
W. John Tomlinson, Ph.D. (ARRIS-1016), the optical assemblies described and
claimed in the ‘953 Patent are anticipated in the prior art or obvious over the prior
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
8
art. This Petition and Petitioner’s Expert Declaration explain where each element
is found in the prior art and why each of the Challenged Claims was anticipated or
would have been obvious to a person of ordinary skill in the art when the ‘953
Patent was filed. A detailed statement of the reasons for the relief requested is set
forth in Sections VII – VIII of this Petition.
A. Summary of the ‘953 Patent
The ‘953 Patent is generally related to optical assemblies including a
waveguide, such as an optical fiber, in optical communication with an optical filter.
ARRIS-1001, 1:28-31; ARRIS-1016, ¶ 32. The ‘953 Patent discloses that optical
fiber assemblies were well known at the time the ‘953 Patent was filed. ARRIS-
1001, 1:28-31. The ‘953 Patent also discloses that many types of filters, such as
interference filters, were used in such well known optical fiber assemblies.
ARRIS-1001, 1:54-55; ARRIS-1016, ¶ 40.
The ‘953 Patent identifies the invention disclosed in the Patent as effective
optical noise reduction in such optical assemblies by controlling or limiting
unwanted photon entrance, reflection, departure, or appearance in or from the
assembly. ARRIS-1001, 2:36-39; ARRIS-1016, ¶ 32. In optical assemblies
having a waveguide in optical communication with a filter, the unwanted photons
may penetrate the assembly in areas including edge and face surfaces of the
assembly. ARRIS-1001, 2:46-60; ARRIS-1016, ¶ 33. The ‘953 Patent specifically
identifie
penetrat
2:60-63
disclose
A
wavegu
optical f
of the en
The ma
unwante
result fr
the mas
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optical f
ARRIS-
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As depicted
uide (optica
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nd face of
sk 12 is fo
ed photons
rom such u
sk 12. ARR
The ‘953 Pa
fiber 11, w
-1001, 1:3
Petitio
ged inventi
a material t
1016, ¶ 33.
tated FIGs
d in the abo
al fiber 11)
A mask 12
the optical
ormed from
s, thereby e
unwanted li
RIS-1001,
atent disclo
which was w
8-40, 3:43
on for Inter
ion as the c
that is opaq
. A preferr
. 1 and 2 a
ove FIGs.,
), and a filt
is position
l fiber 11.
m a materia
eliminating
ight penetr
3:47-51; A
oses a pref
well know
-45; ARRI
r Partes Re
9
covering o
que to the u
red embod
s shown be
the optica
ter 13 posit
ned to cove
ARRIS-1
al that is op
g the unwa
rating the a
ARRIS-10
ferred emb
n at the tim
IS-1016, ¶
eview of U
of the areas
unwanted p
diment of th
elow:
al assembly
tioned at th
er the filter
001, 3:43-
paque to th
anted optic
areas of the
16, ¶ 35.
bodiment o
me the ‘953
40. The ‘9
U.S. Patent
s susceptib
photons. A
he alleged
y includes a
he end face
r 13 at the
-47; ARRIS
he wavelen
cal noise th
e assembly
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3 Patent w
953 Patent
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invention
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ngths of the
hat would
y covered b
eguide as a
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t discloses
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that
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
10
the filter 13 may be a known thin-film filter formed from one or more layers of
materials having high and low refractive indices. ARRIS-1001, 4:14-17; ARRIS-
1016, ¶ 41. The ‘953 Patent discloses that the mask 12 may be formed from
known masking materials such as metals, oxides, and plastics and that the masking
material may be applied using known techniques. ARRIS-1001, 6:11-17; ARRIS-
1016, ¶ 42. The manner of forming the mask and the material used are selected
based on the environmental demands of the particular application. ARRIS-1001,
6:17-19; ARRIS-1016, ¶ 42.
The ‘953 Patent discloses several potential applications for the alleged
invention including:
[I]nstrumentation applications, … wavelength division
multiplexing, telecommunications, general fiber optic
sensor usage, photonic computing, photonic amplifiers,
pump blocking, fiber-integral active devices such as
fiber-coupled (pigtailed) lasers and lasers utilizing the
fiber as the lasing cavity.
ARRIS-1001, 4:39-45.
The ‘953 Patent includes two independent claims (Claims 1 and 30
reproduced below). These claims are illustrative of the claimed subject matter
directed to the combination of: (1) a waveguide; (2) a filter in optical
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
11
communication with the waveguide; and (3) a mask in contact with (or adhering
to) a surface of the filter.
Claim 1 Claim 30
[1.0] An optical assembly comprising [30.0] An optical assembly comprising
[1.1] a waveguide member having at least two ends,
[30.1] a waveguide having at least one end face,
[1.2] a filter in optical communication with said waveguide member, said filter having a face surface facing toward one end of said waveguide member, a second face surface facing away from one end of said waveguide member, and at least one peripheral edge surface, and
[30.2] a thin-film filter in optical communication with said waveguide, said filter having a first face surface optically closer to said waveguide end face and a second face surface opposed to said first face, and
[1.3] a mask adhering to at least one of said filter surfaces, said mask substantially opaque in at least one selected spectral region and impacting the extent to which photons in said selected spectral region can pass through said filter.
[30.3] a mask in intimate contact with at least one of said filter surfaces, said mask substantially opaque in at least some spectral region.
B. Prosecution History
The ‘953 Patent was filed as U.S. Patent Application No. 09/318,451 (“the
‘451 Application”) on May 25, 1999. The ‘451 Application was filed with Claims
1-50. ARRIS-1002, 23-28 (Application as filed). The Applicants filed a
Preliminary Amendment on November 29, 1999 wherein several claims were
amended to “address inadvertent errors and to provide proper antecedent basis for
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
12
certain terms” and to add new Claims 51-57. Id. at 52-58 (Preliminary
Amendment). Among the Challenged Claims, Claim 1 was amended to specify
that the filter includes “at least one peripheral edge surface.” Id.
A first action Notice of Allowance was mailed on October 1, 2001,
following an interview between the Applicants and the Examiner. Id. at 69-74.
Id. at 73. The ‘451 Application issued as the ‘953 Patent on June 11, 2002.
C. Claim Construction
Under 37 C.F.R. §42.100(b), the terms of the claims of the ‘953 Patent are to
be given their broadest reasonable interpretation in light of the specification of the
‘953 Patent. Consistent with this standard, a proposed interpretation for certain
claim terms is provided below. It is noted that this interpretation is applicable to
the inter partes review sought herein only and should not be construed as
constituting, in whole or in part, the Petitioner’s own interpretation of any claims
for any other purposes, including any litigation. Accordingly, Petitioner expressly
reserves the right to present an interpretation of a claim term in other proceedings,
which is different, in whole or in part, of that presented in this Petition.
1. Proposed construction of “waveguide”
The term “waveguide” is expressly recited in Claims 1, 30, and 31.
The ‘953 Patent defines the term “waveguide” as:
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
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The term “waveguide” is used herein to refer to an
optical structure having the ability to transmit light in a
bound propagation mode along a path parallel to its axis,
and to contain the energy within or adjacent to its
surface.
ARRIS-1001, 1:45-48.
The ‘953 Patent further states that an optical fiber is a “waveguide” as that
term is used in the Patent. For example:
This invention relates generally to optical assemblies,
and more particularly to assemblies including
waveguides, for example optical fibers…
Id. at 1:28-30, 1:48-50, and 3:44-45.
A Person of Ordinary Skill in the Art (“POSA”) would understand the term
“waveguide” to mean an optical structure such as an optical fiber having the
ability to transmit light in a bound propagation mode along a path parallel to its
axis, and to contain the energy within or adjacent to its surface. ARRIS-1016,
¶¶ 62-63.
2. Proposed construction of “mask”
The term “mask” is expressly recited in Claims 1, 30, 47, and 51.
In its Decision, the Board determined that the broadest reasonable
interpretation of the term “mask” is “a material that blocks the passage of at least
selected photons.” Institution Order, IPR2014-00815, (PTAB Dec. 3, 2014) (Paper
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
14
8), 8. A POSA would understand the term “mask” to have the meaning as
construed by the Board in its Decision. ARRIS-1016, ¶¶ 43, 65, 67, 68.
3. Proposed construction of “thin-film filter”
The term “thin-film filter” is recited in Claims 26 and 30. Claim 23 recites
that the filter comprises “thin-film layers.”
In its Decision, the Board construed the term “thin-film filter” to mean “a
filter comprised of stacked layers for filtering light.” Institution Order, IPR2014-
00815, (PTAB Dec. 3, 2014) (Paper 8), 9. A POSA would understand the term
“thin-film filter” to have the meaning as construed by the Board in its Decision.
ARRIS-1016, ¶ 70.
D. Priority Date of the Challenged Claims
The ‘953 Patent was filed on May 25, 1999 as a continuation-in-part to U.S.
Patent No. 5,953,477 (App. Ser. No. 08/819,979) (“the ‘477 Patent”). The subject
matter of the Challenged Claims that was disclosed in the ‘953 Patent (i.e., FIGs.
1-11b, and associated text), was not disclosed in the ‘477 Patent. ARRIS-1016,
¶ 56. Absent satisfaction of 35 U.S.C. § 112(1), the Challenged Claims are not
entitled to the filing date of the ‘477 Patent.
In addition, the first line of the specification of the ‘953 Patent refers to
various other applications, none of which provide an earlier priority date for at
least three reasons. ARRIS-1001, 1:7-25.
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
15
First, as was the case for the ‘477 Patent, the subject matter of the
Challenged Claims disclosed in the ‘953 Patent was not disclosed in the other
applications, and earlier priority date is improper absent 35 U.S.C. § 112(1)
support. Second, these other applications are described merely as “related”
applications, which is not a claim to priority. Id. at 1:11-25. Third, with respect to
the three related provisional applications (id.), priority was expressly disclaimed
during prosecution.
Specifically, the Applicants formally requested removal of the provisional
applications from the priority claim shown on the application filing receipt in a
Request to Correct Filing Receipt, July 2, 1999. ARRIS-1002, 64-66. The
Applicants lined out the provisional information and explained that the information
was incorrect and that the correct priority information was identified in the
inventors’ declarations, which referenced only the ‘477 Patent. Id.
Therefore, the Challenged Claims are only entitled to a priority date of May
25, 1999, the filing date of the ‘953 Patent.
E. Person of Ordinary Skill in the Art and The Scope and Content of the Prior Art.
A POSA is a hypothetical person who is presumed to be aware of all
pertinent prior art, thinks along conventional wisdom in the art, and is a person of
ordinary creativity. With respect to the ‘953 Patent, a POSA would have had
education and/or experience in the field of optics, and knowledge of the scientific
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
16
literature concerning the same. The education and experience levels may vary
between persons of ordinary skill, with some persons holding a basic Bachelor’s
degree with more than three years of relevant work experience, or others holding
more advanced degrees—e.g., Masters or Ph.D.— but having fewer years of
experience. ARRIS-1016, ¶ 23.
F. Summary of the Petition
The Challenged Claims of the ‘953 Patent are directed to optical assemblies
formed by combining the known elements: (1) a waveguide, including optical
fiber; (2) a filter in optical communication with the waveguide; and (3) a mask in
contact with or adhering to a face surface of the filter. Id. at ¶ 37. However, the
combination of these elements was not new as of the effective filing date of the
‘953 Patent. The ‘953 Patent admits that optical assemblies, including assemblies
where the waveguide is an optical fiber, having a thin-film filter in optical
communication with the fiber were well known in the art at the time of the alleged
invention. ARRIS-1001, 1:37-61; ARRIS-1016, ¶ 40. The ‘953 Patent alleges that
the invention is the inclusion of a mask in contact with a face surface of the filter
where the mask is opaque to unwanted light, thereby preventing the penetration of
the unwanted light into the assembly. ARRIS-1001, 2:60-63; ARRIS-1016, ¶ 43.
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
17
As shown above in the Overview, however, it was also known in the prior art to
include a mask in optical assemblies having an optical fiber and a thin-film filter in
optical communication with the fiber.
Because all of the limitations recited in independent Claims 1 and 30 were
known, Claims 1 and 30 are not patentable and should be canceled. For the
purposes of assessing the patentability of Claim 1 over the prior art of record,
Claim 1 is not materially different from Claim 30. Consistent with the Board’s
Decision finding that Petitioner had a reasonable likelihood of prevailing on each
of the grounds set forth as to Claim 30 in its First Petition (see Institution Order,
IPR2014-00815, (PTAB Dec. 3, 2014) (Paper 8)), Petitioner here also has a
reasonable likelihood of prevailing as to Claim 1 on each of the grounds set forth
in the instant Petition. Furthermore, none of the Challenged Claims that are
dependent from either Claim 1 or Claim 30 (i.e. Claims 23, 24, 26, 31, 47, and 51)
recite any new basis for patentability. Thus, Petitioner also has a reasonable
likelihood of prevailing as to these Challenged Claims.
VII. IDENTIFICATION OF CHALLENGES
A. Challenged Claims
Claims 1, 23, 24, 26, 31, 47, and 51 are challenged in this Petition.
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
18
B. Statutory Grounds for Challenges
Challenge 1: Claims 1, 23, and 31 are obvious under 35 U.S.C. § 103 over
U.S. Patent No. 5,546,486 to Shih et al. (“Shih”) (ARRIS-1004). Shih was issued
on August 13, 1996 from an application filed on March 3, 1994 and is prior art to
the ‘953 Patent at least under 35 U.S.C. § 102(b). Shih was not cited or applied by
the Examiner during the prosecution of the ‘953 Patent.
Challenge 2: Claims 1, 23, 31, and 51 are anticipated under 35 U.S.C. §
102(b) by U.S. Patent No. 4,883,062 to Nicholson (“Nicholson”) (ARRIS-1005).
Nicholson was issued on November 28, 1989 from an application filed on April 25,
1988 and is prior art to the ‘953 Patent at least under 35 U.S.C. § 102(b).
Nicholson was not cited or applied by the Examiner during the prosecution of the
‘953 Patent.
Challenge 3: Claims 1, 23, and 31 are anticipated under 35 U.S.C. § 102(b)
by U.S. Patent No. 5,457,558 to Yokoyama (“Yokoyama”) (ARRIS-1007).
Yokoyama was issued on October 10, 1995 from an application filed on June 28,
1994 and is prior art to the ‘953 Patent at least under 35 U.S.C. § 102(b).
Yokoyama was not cited or applied by the Examiner during the prosecution of the
‘953 Patent.
Challenge 4: Claims 1, 31, 47, and 51 are anticipated under 35 U.S.C. §
102(b) by U.S. Patent No. 5,905,827 to Naganuma et al. (“Naganuma”) (ARRIS-
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
19
1006). Naganuma was issued on May 18, 1999 from an application filed on
February 14, 1997, and is prior art to the ‘953 Patent at least under 35 U.S.C. §
102(b). Naganuma was not cited or applied by the Examiner during the
prosecution of the ‘953 Patent.
Challenge 5: Claims 24 and 26 are obvious under 35 U.S.C. § 103 by
Yokoyama in view of “Temperature stability of thin-film narrow-bandpass filters
produced by ion-assisted deposition” by Takashashi (“Takashashi”) (ARRIS-
1014). Takashashi was published on February 1, 1995, and is prior art to the ‘953
Patent at least under 35 U.S.C. § 102(b). Takashashi was not cited or applied by
the Examiner during the prosecution of the ‘953 Patent.
Challenge 6: Claims 24 and 26 are obvious under 35 U.S.C. § 103 by
Naganuma in view of “Application of ion-assisted-deposition using a gridless end-
Hall ion source for volume manufacturing of thin-film optical filters” by Fulton
(“Fulton”) (ARRIS-1015). Fulton was published on November 4, 1994, and is
prior art to the ‘953 Patent at least under 35 U.S.C. § 102(b). Fulton was not cited
or applied by the Examiner during the prosecution of the ‘953 Patent.
VIII. THE CHALLENGED CLAIMS ARE NOT PATENTABLE
A. Challenge 1: Claims 1, 23, and 31 are Unpatentable Over Shih
Claims 1, 23, and 31 are rendered obvious under 35 U.S.C. § 103 by Shih.
ARRIS-1016, ¶¶ 8, 84. In its Decision, the Board found that it reasonably likely
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
20
that Claim 30 was obvious over Shih. Institution Order, IPR2014-00815, (PTAB
Dec. 3, 2014) (Paper 8), 9-10. As shown below, each of the limitations of Claims
1, 23, and 31 are taught by Shih and any potential distinction that may be argued
by the Patent Owner would have been obvious over Shih. ARRIS-1016, ¶¶ 84-92.
Shih discloses an optical assembly including: (1) a waveguide (optical
fiber); (2) a thin-film filter in optical communication with the fiber; and (3) a mask
adhering to a surface of the filter. ARRIS-1004, 4:40-49; ARRIS-1016, ¶ 79.
Specifically, like the preferred embodiment of the ‘953 Patent, Shih is directed to
reducing optical noise (i.e., unwanted light) in the areas of optical assemblies
susceptible to penetration by unwanted light by including a mask at the fiber end
face that is opaque to the unwanted light. ARRIS-1016, ¶ 72.
[t]he present invention provides for an improved end of
an optical fiber, which has a core and a cladding around
the core parallel to a longitudinal axis of the fiber. The
fiber end comprises a flat end surface substantially
perpendicular to the longitudinal axis, the end surface
intersecting the core and cladding; and an optical barrier
layer on the end surface. The optical barrier layer,
formed by a chromium layer and a gold layer, has an
aperture exposing the core and covering the cladding.
Light transmission into the end is substantially reduced.
ARRIS-1004, 2:23-31.
F
W
optical n
FIGs. 3A an
With refere
noise: AR
[t]he
coup
fiber.
22 of
To p
prese
cladd
show
open
24, a
The
cladd
transm
some
26 of
mask
Petitio
nd 3B belo
ence to FIG
RRIS-1016,
present i
ling betwe
. Some of
f the input
revent any
ent inventi
ding 22 of
wn in FIG
ing 35 wh
as shown in
opening
ding 22 aro
mitted from
e allowanc
f input fibe
k over the c
on for Inter
ow illustrat
Gs. 3A and
, ¶ 74.
invention
een the cl
f the light
t fiber 20
y light from
ion places
the end su
S. 3A and
ich expose
n an end v
35 also
ound the co
m the core
ce of devia
er 20. Th
cladding 22
r Partes Re
21
te a fiber o
3B, Shih t
recognizes
ladding an
which has
will leak b
m entering
an optica
urface 24 o
d 3B. Th
es the core
iew of the
exposes s
ore 21 to a
21 in the f
ation from
hus the end
2 and the c
eview of U
optical asse
teaches the
s that the
nd core of
s entered t
back into t
g the cladd
al barrier 3
of the input
he barrier
e 21 of the
e fiber end
some port
allows [sic
forward di
m the longi
d of the fib
core 21 is e
U.S. Patent
embly acco
e use of a m
ere is som
f an optic
the claddin
the core 2
ding 22, th
30 over th
t fiber 20 a
r 30 has a
end surfac
in FIG. 3B
tion of th
c] light to b
irection wi
itudinal ax
ber 20 has
exposed.
No. 6,404
ording to S
mask to red
me
cal
ng
1.
he
he
as
an
ce
B.
he
be
th
xis
a
4,953
Shih:
duce
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
22
ARRIS-1004, 3:8-22.
The following analysis shows where each of the elements of Claims 1, 23,
and 31 is taught by Shih:
Claim 1:
[1.0] An optical assembly comprising
Shih teaches an optical assembly. ARRIS-1016, ¶¶ 72, 79, 85 [1.0]. Shih
teaches “[a]n optical fiber having an improved input fiber end for an optical
isolator.” ARRIS-1004, Abstract. Shih also teaches:
“[t]he present invention is related to optical fibers and,
more particularly, to techniques for reducing reflection
back into input optical fibers. Such techniques find
applications in many fields, including optical devices
such as isolators.
Id. at 1:7-10.
[1.1] a waveguide member having at least two ends
Shih teaches a waveguide member having at least two ends. ARRIS-1016,
¶¶ 73, 79, 85 [1.1]. Shih teaches an optical assembly including an optical fiber
having two ends, including an improved end.
[t]he present invention provides for an improved end of
an optical fiber, which has a core and a cladding around
the core parallel to a longitudinal axis of the fiber. The
fiber end comprises a flat end surface substantially
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
23
perpendicular to the longitudinal axis, the end surface
intersecting the core and cladding;
ARRIS-1004, 2:23-28.
[1.2] a filter in optical communication with said waveguide member, said filter
having a face surface facing toward one end of said waveguide member, a
second face surface facing away from one end of said waveguide member, and at
least one peripheral edge surface
Shih teaches a thin-film filter in optical communication with the waveguide.
ARRIS-1016, ¶¶ 74, 79, 85 [1.2]. FIG. 4G as annotated below illustrates the
application of an antireflection (AR) coating on the optical fiber end face.
Shih teaches that the AR coating covers the end face of the fiber and the
optical barrier (mask) 30. ARRIS-1016, ¶ 78.
Finally, the surface of the optical barrier 30 and the end surface [24]2 of the
input fiber 20 in the opening 35 are covered with AR coatings and the techniques
2 The “end surface” of the input fiber 20 is designated by reference numeral 24, as
for appl
1004, 4
directio
F
ARRIS-
A
silica, o
is a filte
understa
shown i
the end
numera
ARRIS-
lying them
:44-48. Th
n through
FIG. 3A wa
-1016, ¶ 79
A POSA wo
or zirconia
er, specific
and from t
in FIG. 3A
surface is
l “34” to id
-1004, 4:40
Petitio
m have long
he AR coat
the input f
as annotate
9, 85 [1.2]
ould under
and silica,
cally a thin
he teachin
A. Shih inc
identified
dentify an
0-41.
on for Inter
g been prac
tings enhan
fiber 20. A
ed to show
.
rstand that
or the com
-film filter
g of Shih t
cludes an ap
as element
end face o
r Partes Re
24
cticed in th
nce the tran
ARRIS-100
the AR co
an AR coa
mbination o
r. Id. at ¶¶
that the coa
pparent typ
t 34 rather
of the input
eview of U
he optics fie
nsmission
04, 4:40-50
oating as il
ating such
of titania w
75, 86. A
ating when
pographica
r than 24. F
t fiber 20 in
U.S. Patent
eld. Id. at 7
of light in
0.
lustrated b
as layers o
with zircon
A POSA wo
n deposited
al error at 4
Further, Sh
n the text o
No. 6,404
75; ARRIS
the forwar
below.
of titania a
nia and silic
ould furthe
d to cover t
4:40-41 wh
hih never u
or figures.
4,953
S-
rd
and
ca,
er
the
here
uses
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
25
optical barrier 30 and the end surface 24 of the input fiber 20 will have two
opposing face surfaces (as distinguished from edge surfaces) with a first face
surface facing toward one end of the waveguide member (i.e., the end face of the
fiber) and a second face surface facing away from one end of the waveguide
member. Id. at ¶¶ 80, 87. FIG. 3A illustrated above has been annotated to show
the first and second face surfaces of the filter. The first face surface is the inner
surface of the layer of the coating that is in contact with the substrate, in this case
the optical barrier 30 and the input fiber 20 in the opening 35. The second face
surface is the external surface of the layer of the coating most remote from the
substrate.
In the event that the Patent Owner argues, or the Board holds, that the AR
coating taught by Shih is not a filter as claimed, Shih nevertheless renders Claim 1
obvious to a POSA. Thin-film filters and their application to the end face of fibers
was well known in the art. Id. at ¶¶ 44-45. High pass, low pass, band pass, notch,
and slot thin film filters along with their respective uses and benefits were well
known, especially as applicable to optical devices. Id. at ¶ 46. Therefore, it would
be obvious for a POSA to substitute a thin-film filter in place of the AR coating of
Shih. Id. at ¶ 88. A POSA would be motivated because the filter would allow only
light in the spectrum of interest to enter the wave guide and thus reduce noise. Id.
at ¶¶ 82, 88.
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
26
In the event that the Patent Owner argues, or the Board holds, that the filter
requires any additional un-recited limitation(s), a POSA given the teachings of
Shih and the well-developed field of optical filters, would recognize that there are
many acceptable alternative filters that may be substituted for the filter of Shih as a
simple matter of design choice rather than invention. Id. at ¶¶ 83, 89.
[1.3] a mask adhering to at least one of said filter surfaces, said mask
substantially opaque in at least one selected spectral region and impacting the
extent to which photons in said selected spectral region can pass though said
filter.
Shih teaches a mask adhering to a surface of the filter. Id. at ¶¶ 78, 85 [1.3].
With reference to the figures shown above, Shih teaches:
To prevent any light from entering the cladding 22, the
present invention places an optical barrier 30 over the
cladding 22 of the end surface 24 of the input fiber 20 as
shown in FIGS. 3A and 3B. The barrier 30 has an
opening 35 which exposes the core 21 of the end surface
24, as shown in an end view of the fiber end in FIG. 3B.
The opening 35 also exposes some portion of the
cladding 22 around the core 21 to allows [sic] light to be
transmitted from the core 21 in the forward direction with
some allowance of deviation from the longitudinal axis
26 of input fiber 20. Thus the end of the fiber 20 has a
mask over the cladding 22 and the core 21 is exposed.
ARRIS-1004, 3:12-22.
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
27
Shih also teaches:
[a]n optical barrier layer, formed by a layer of chromium
and a layer of gold, covers the end surface of the fiber
with an aperture exposing the core and covering the
cladding of the fiber.
Id. at Abstract.
Besides metal layers, dielectric coatings of silicon
dioxide and magnesium oxide may also be used for the
barrier 30. Multiple layers of these coatings further
decrease the wavelength selectivity of the optical barrier
30 so that effectiveness of the barrier 30 is increased and
the performance of the optical isolator is further
enhanced.
Id. at 4:1-6.
The materials forming the optical barrier layer 30 (mask) are substantially
opaque in at least some spectral regions. ARRIS-1016, ¶ 76.
As shown above in FIG. 4G and the annotated FIG. 3A, the first face surface
of the AR coating is adhering to the mask 30. ARRIS-1016, ¶¶ 74, 78, 85 [1.2].
Finally, the surface of the optical barrier 30 and the end
surface [24] of the input fiber 20 in the opening 35 are
covered with antireflection coatings…
ARRIS-1004, 4:40-42.
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
28
Claim 23:
[23.0] the optical assembly of Claim 1 wherein said filter comprises thin-film
layers of alternating refractive index.
Shih teaches an optical assembly as specified in Claim 1 as set forth above,
wherein the filter comprises thin-film layers of alternating refractive index. Shih
teaches that the AR coating may include layers of titania and silica, or zirconia and
silica, or the combination of titania with zirconia and silica. ARRIS-1004, 4:40-
50; ARRIS-1016, ¶ 90 [23.0].
A POSA would understand that such AR coatings form filters comprising
thin-film layers of alternating refractive index. ARRIS-1016, ¶ 91.
Claim 31:
[31.0] The optical assembly of claim 30 wherein said waveguide is an optical
fiber having at least one end face, and said filter comprises said first face surface
facing toward and said second face surface facing away from one end of said
fiber.
Claim 31 depends from Claim 30 and specifies that the waveguide is an
optical fiber. In its Decision, the Board found it reasonably likely that Claim 30
was obvious over Shih. Institution Order, IPR2014-00815, (PTAB Dec. 3, 2014)
(Paper 8), 9-10. Shih further discloses that the waveguide is an optical fiber
having at least one end face, where the first face surface faces toward and the
second face surface facing away from one end of said fiber. Id. at 8-9; ARRIS-
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
29
1016, ¶ 92 [31.0]; see also the comparison of Shih to limitations [1.1] and [1.2]
above.
B. Challenge 2: Claims 1, 23, 31, and 51 Are Unpatentable Over Nicholson
In its Decision, the Board found it reasonably likely that the optical
assembly of Claim 30 was anticipated under 35 U.S.C. § 102(b) by U.S. Patent No.
4,883,062 to Nicholson (“Nicholson”) (ARRIS-1005). Institution Order, IPR2014-
00815, (PTAB Dec. 3, 2014) (Paper 8), 13. Similar to the optical assembly of
Claim 30, the optical assembly of Claim 1 is anticipated by Nicholson. ARRIS-
1016, ¶¶ 8, 101. Claim 23 dependent from Claim 1, and Claims 31 and 51
dependent from Claim 30 are also anticipated by Nicholson. Id. at ¶ 8.
Nicholson discloses an optical fiber assembly including: (1) a waveguide
member (optical fiber); (2) a filter in optical communication with the fiber; and (3)
a mask adhering to a surface of the filter. ARRIS-1005, 3:11-26; ARRIS-1016,
¶ 95.
The following analysis shows where each element of Claim 1 is taught by
Nicholson:
Claim 1:
[1.0] An optical assembly comprising
Nicholson teaches an optical assembly. ARRIS-1016, ¶ 94, 102 [1.0].
Nicholson teaches “[a]n interference filter is mounted on the end of an optical fiber
to provi
1016, ¶
attained
optical f
ARRIS-
[1.1] a w
N
1016, ¶¶
on the e
ARRIS-
of the in
edge fil
ARRIS-
illustrat
ide a senso
94. Nicho
d by provid
fiber is sub
-1016, ¶ 94
waveguide
Nicholson t
¶ 95, 102 [
end of an o
-1005, Abs
nvention ar
ter at the e
-1005, 2:33
ted in anno
Petitio
or for press
olson also t
ding an opt
bjected to a
4.
e member h
teaches a w
[1.1], 103.
optical fibe
stract; ARR
re further a
end of an o
3-36; ARR
otated FIG.
on for Inter
sure or tem
teaches “[t
tical system
a polychro
having at l
waveguide
Nicholson
r to provid
RIS-1016,
attained by
optical fiber
RIS-1016, ¶
1 of Nich
r Partes Re
30
mperature.”
t]he object
m wherein
matic light
least two e
member h
n teaches “
de a sensor
¶ 94. Nich
y providing
r is subject
¶ 94. One
olson as fo
eview of U
ARRIS-1
ts of the inv
the edge fi
t.” ARRIS
ends
having at le
“[a]n interf
r for pressu
holson also
g an optica
ted to a po
end of the
ollows:
U.S. Patent
1005, Abst
vention are
filter at the
S-1005, 2:3
east two en
ference filt
ure or temp
o teaches “
l system w
olychromat
e optical fib
No. 6,404
tract; ARR
e further
end of an
33-36;
nds. ARRI
ter is moun
perature.”
“[t]he obje
wherein the
tic light.”
ber is
4,953
RIS-
IS-
nted
ects
e
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
31
“Referring to FIG. 1, an optical fiber 10 has an edge filter 11 formed on it.”
ARRIS-1005, 3:11-12. A POSA would understand that an optical fiber has at least
two ends. ARRIS-1016, ¶¶ 98, 103.
[1.2] a filter in optical communication with said waveguide member, said filter
having a face surface facing toward one end of said waveguide member, a
second face surface facing away from one end of said waveguide member, and at
least one peripheral edge surface
Nicholson teaches a filter in optical communication with the waveguide.
ARRIS-1016, ¶¶ 95, 102 [1.2]. With reference to FIG. 1 of Nicholson shown
above, Nicholson teaches “an optical fiber 10 has an edge filter 11 formed on it.
The edge filter consists of alternating layers of dielectric and metal or metal
coatings.” ARRIS-1005, 3:11-12; ARRIS-1016, ¶ 96. With respect to the filters
disclosed in Nicholson, Nicholson teaches:
The interference filter is a known device consisting of
alternating metal-dielectric-metal layers. Two basic
types exist: Bandpass filters which transmit light only
within a defined spectral band ranging from less than one
to many nanometers wide; and Edge filters which
transmit only above or below a certain “cut on” or “cut
off” wavelength and continue to transmit efficiently
throughout that range until reaching the transmission
limits of the substrate material.
ARRIS-1005, 2:5-16.
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
32
The edge filter 11 is a thin-film filter having opposing face surfaces with a
first face surface being optically closer to the fiber end face. ARRIS-1016, ¶ 98.
FIG. 1 as annotated illustrates the first and second face surfaces. The first face
surface is the of edge filter 11 that is in contact with the substrate surface, in this
case the end face of the optical fiber 10. The second face surface is the opposing
surface of edge filter 11 that is most remote from the substrate surface. Id. at ¶ 95,
98.
[1.3] a mask adhering to at least one of said filter surfaces, said mask
substantially opaque in at least one selected spectral region and impacting the
extent to which photons in said selected spectral region can pass though said
filter.
Nicholson teaches a mask adhering to a surface of the filter. ARRIS-1016,
¶¶ 95, 99, 100, 102 [1.3]. With reference to FIG. 1 of Nicholson shown above,
Nicholson teaches “[t]he filter is preferably surrounded by an absorbance layer 12
formed of highly optical absorbent material such as carbon black.” ARRIS-1005,
3:23-25; ARRIS-1016, ¶ 99.
FIG. 1 teaches that the absorbance layer 12 is in intimate contact with a face
surface of edge filter 11 as it is shown to be deposited on the outer face surface of
edge filter 11, i.e., the second face surface of the filter. ARRIS-1016, ¶ 95.
A POSA would also understand that absorbance layer 12 formed from
“highly optical absorbent material such as carbon black” would be opaque in at
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
33
least some spectral region. Id. at ¶¶ 99, 104. The optical characteristics of carbon
black were well known to a POSA at the time of the alleged invention of the ‘953
Patent. Id.
Claim 23:
[23.0] the optical assembly of Claim 1 wherein said filter comprises thin-film
layers of alternating refractive index.
Nicholson teaches an optical assembly as specified in Claim 1 as set forth
above, wherein the filter comprises thin-film layers of alternating refractive index.
ARRIS-1016, ¶ 105 [23.0]. With reference to FIG. 1 of Nicholson shown above,
Nicholson teaches “an optical fiber 10 has an edge filter 11 formed on it. The edge
filter consists of alternating layers of dielectric and metal or metal coatings.”
ARRIS-1005, 3:11-12; ARRIS-1016, ¶ 105 [23.0]. A POSA would understand
that such filters comprise thin-film layers of alternating refractive index. ARRIS-
1016, ¶ 106.
Claim 31:
[31.0] The optical assembly of claim 30 wherein said waveguide is an optical
fiber having at least one end face, and said filter comprises said first face surface
facing toward and said second face surface facing away from one end of said
fiber.
Claim 31 is dependent from Claim 30 and further specifies that the
waveguide is an optical fiber. In its Decision, the Board found it likely that Claim
30 was anticipated by Nicholson. Institution Order, IPR2014-00815, (PTAB Dec.
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
34
3, 2014) (Paper 8), 13. Nicholson discloses an optical assembly comprising an
optical fiber having at least two ends. Id. at 11; ARRIS-1016, ¶ 107 [31.0]; see
also the comparison of Nicholson to limitations [1.1] and [1.2] above.
Claim 51:
[51.0] The optical assembly of Claim 30, said filter further comprising a
peripheral edge surface, said mask positioned in intimate contact with said
peripheral edge surface.
Claim 51 depends from Claim 30. In its Decision, the Board found it
reasonably likely that Claim 30 was anticipated by Nicholson. Institution Order,
IPR2014-00815, (PTAB Dec. 3, 2014) (Paper 8), 13. Nicholson also anticipates
Claim 51. With reference to FIG. 1 of Nicholson shown above, Nicholson teaches
“an optical fiber 10 has an edge filter 11 formed on it. The edge filter consists of
alternating layers of dielectric and metal or metal coatings.” ARRIS-1005, 3:11-
12; ARRIS-1016, ¶ 96. As shown, the edge filter comprises a peripheral edge
surface. The mask 12 is positioned in intimate contact with said peripheral edge
surface of filter 11. ARRIS-1016, ¶ 108 [51.0].
C. Challenge 3: Claims 1 and 23 are Unpatentable Over Yokoyama
In its Decision, the Board found that it reasonably likely that the optical
assembly of Claim 30 was anticipated under 35 U.S.C. § 102(b) by US Patent No.
5,457,558 to Yokoyama (“Yokoyama”)(ARRIS-1007). Institution Order,
IPR2014-00815, (PTAB Dec. 3, 2014) (Paper 8), 17. Similar to the optical
assembl
Yokoya
anticipa
Y
multiple
wavegu
(3) a ma
1016, ¶
F
wavegu
Yokoya
the opti
configu
1016, ¶
ly of Claim
ama. ARR
ated by Yo
Yokoyama
exer for op
uide (optica
ask adherin
123.
FIG. 5 of Y
uide multip
ama shows
cal wavegu
uration of th
120. An a
Petitio
m 30, the o
RIS-1016, ¶
koyama. I
teaches an
ptical fiber
al fiber); (2
ng to a surf
Yokoyama i
plexer. AR
a perspect
uide multip
he optical w
annotated F
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Petition for Inter Partes Review of U.S. Patent No. 6,404,953
36
The following analysis shows where each element of Claims 1 and 31 is
taught by Yokoyama:
Claim 1:
[1.0] An optical assembly comprising
Yokoyama teaches an optical assembly. ARRIS-1016, ¶¶ 110, 123, 125
[1.0]. Yokoyama teaches “[a]n optical waveguide multiplexer for use in optical
fiber amplifiers and the like.” ARRIS-1007, 1:7-9; ARRIS-1016, ¶ 110.
[1.1] a waveguide member having at least two ends
Yokoyama teaches a waveguide member having at least two ends. ARRIS-
1016, ¶¶ 125 [1.1], 126. “Each of the first to fourth optical I/O terminals 521 to 524
is provided, at the tip of an optical fiber, …” ARRIS-1007, 6:46-47; ARRIS-1016,
¶ 112. A POSA would understand that an optical fiber has at least two ends.
ARRIS-1016, ¶ 126.
[1.2] a filter in optical communication with said waveguide member, said filter
having a face surface facing toward one end of said waveguide member, a
second face surface facing away from one end of said waveguide member, and at
least one peripheral edge surface
Yokoyama teaches a filter in optical communication with the waveguide.
ARRIS-1016, ¶¶ 111, 117, 125 [1.2]. With reference to the annotated FIGs. 7 and
8 shown above, Yokoyama teaches a filter formed from a substrate 72 (like
substrate 62 in FIG. 5) having an optical branching film 63 forming one face
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
37
surface, and an optical multiplexing film 64 forming an opposing face surface.
ARRIS-1007, 9:2-30. The filter is in optical communication with the first I/O
terminal 521. ARRIS-1016, ¶ 117. Yokoyama teaches:
In this optical waveguide multiplexer 61, a substrate 62
[72] is arranged so as to be inclined with respect to a
straight line connections a first I/O terminal 521 and a
third I/O terminal 523. On one face of the substrate 62 on
which a first light of wavelength λ1 (an optical signal 12)
is to come incident, a branching film 63 is vapor
deposited. On the other face on which a second light of
wavelength (a pumping light 14) from a second I/O
terminal 524 is to come incident, an optical multiplexing
film is to be vapor deposited.
ARRIS-1007, 5:64-6:5.
The optical branching film 63 forms a first face surface facing toward the
fiber end face and optical multiplexing film 64 forms a second face surface facing
away from the fiber end face. ARRIS-1016, ¶ 119. See annotated FIG. 8 shown
above. The filter includes the inherent feature of a peripheral edge surface.
ARRIS-1016, ¶¶ 122, 125 [1.2].
[1.3] a mask adhering to at least one of said filter surfaces, said mask
substantially opaque in at least one selected spectral region and impacting the
extent to which photons in said selected spectral region can pass though said
filter.
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
38
Yokoyama teaches a mask adhering to a surface of the filter. ARRIS-1016,
¶¶ 111, 121-122, 125 [1.3]. With reference to the annotated FIG. 7 shown above,
Yokoyama teaches:
A substrate 72 shown in FIG. 6, like the substrate 62 in
FIG. 5, has the optical branching film 63 formed on its
face receiving light from the first I/O input terminal 521.
The substrate 72 further has, in addition to the optical
branching film 63, an aperture film 75 consisting of a
metal film near the center of which is opened a hole.
ARRIS-1007, 9:2-8, 30-34.
Yokoyama further teaches that the film 75 adheres to a surface of the optical
branching film 63: “[t]he metal film is formed by vapor depositing chromium and
gold directly on the upper face of the optical branching film 63.” ARRIS-1007,
9:14-16, 30-34; ARRIS-1016, ¶ 122.
Yokoyama teaches that the film 75 is opaque in at least some spectral
region:
As the aperture film 75 has a high reflection factor, even
if part of the light 12 radiated from the first optical I/O
terminal hits the metal film, it will be reflected toward
the second optical I/O terminal 522, so that there will be
no loss of light.
ARRIS-1007, 9:17-22.
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
39
The aperture film 75 need not be made of metal, but of
anything that intercepts light.
Id. at 9:35-36.
Claim 23:
[23.0] the optical assembly of Claim 1 wherein said filter comprises thin-film
layers of alternating refractive index.
Yokoyama teaches an optical assembly as specified in Claim 1 as set forth
above, wherein the filter comprises thin-film layers of alternating refractive index.
ARRIS-1016, ¶ 127 [23.0]. For example, with reference to the annotated FIG. 8
shown above, Yokoyama teaches that “multiplexing film 64, consist[s] of a multi-
layer film similar to the optical branching film 63,” while optical branching film 63
is described as “consisting of a multi-layer film of TiO2 and SiO2 deposited over a
substrate.” ARRIS-1007, 6:6-11; ARRIS-1016, ¶ 115. A POSA would understand
that such filters – particularly multiplexing film 64 – comprise thin-film layers of
alternating refractive index. ARRIS-1016, ¶ 128.
D. Challenge 4: Claims 1, 31, 47, and 51 Are Unpatentable Over Naganuma
Claims 1, 31, 47, and 51 are anticipated under 35 U.S.C. § 102(b) by U.S.
Patent No. 5,905,827 to Naganuma et al. (“Naganuma”) (ARRIS-1006). ARRIS-
1016, ¶ 8. Naganuma discloses a fiber optic assembly for wavelength division
multiplexing. The fiber optic assembly includes: (1) a waveguide in the form of
an optical fiber; (2) a thin-film filter in optical communication with the optical
fiber; an
and a pe
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Petition for Inter Partes Review of U.S. Patent No. 6,404,953
41
24 having an end which emits light. ARRIS-1006, 3:50-65. A POSA would
understand that an optical fiber as disclosed by Naganuma has at least another end
where light is input. ARRIS-1016, ¶ 133.
[1.2] a filter in optical communication with said waveguide member, said filter
having a face surface facing toward one end of said waveguide member, and a
second face surface facing away from one end of said waveguide member, and at
least one peripheral edge surface
Naganuma discloses a filter in optical communication with said waveguide.
ARRIS-1016, ¶¶ 130, 132 [1.2]. With reference to Figure 1 shown above,
Naganuma discloses a band pass filter 32 which includes the transparent plate 34
(substrate) and optical film 36 which is formed on a surface of the plate 34.
ARRIS-1006, 4:7-10. The optical film 36 is in optical communication with the
fiber 24, and includes a face surface facing toward one end of the fiber and a
second face surface facing away from one end of the fiber. ARRIS-1006, 4:21-35.
The optical film 36 may be a dielectric multilayer film formed by alternating
layers of silica and titania. ARRIS-1006, 4:18-21.
[1.3] a mask adhering to at least one of said filter surfaces, said mask
substantially opaque in at least one selected spectral region and impacting the
extent to which photons in said selected spectral region can pass through said
filter.
Naganuma discloses a mask adhering to at least one of the filter surfaces.
ARRIS-1016, ¶¶ 132 [1.3], 130. With reference to Figure 1 shown above,
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
42
Naganuma discloses optical film holder 26 formed from stainless steel. ARRIS-
1006, 3:66-67. The position of the filter 32 (including optical film 36) in the
optical film holder 26 may be fixed by adhesive and thus the optical film holder is
adhering to at least a surface of the filter. ARRIS-1006, 4:5-10. A POSA would
understand that stainless steel is opaque to at least one selected spectral region.
ARRIS-1016, ¶ 134. Optical film holder 26 impacts the extent to which photons in
the spectral region can pass through optical film 36. Id..
Claim 30 (from which Challenged Claims 31 and 51 depend):
[30.0] An optical assembly comprising
Naganuma discloses an optical assembly. ARRIS-1016, ¶¶ 130, 135 [30.0].
Naganuma is directed to “an optical multiplexer/demultiplexer and a wavelength
division multiplexing module.” ARRIS-1006, 1:7-10.
[30.1] a waveguide having at least one end face
Naganuma discloses a waveguide having at least one end face. ARRIS-
1016, ¶¶ 130, 135 [30.1]. With reference to Figure 1 above, Naganuma discloses
an optical fiber 24 having an end which emits light. ARRIS-1006, 3:50-65.
[30.2] a thin-film filter in optical communication with said waveguide, said filter
having a first face surface optically closer to said waveguide end face and a
second face surface opposed to said first face surface
Naganuma discloses a thin-film filter in optical communication with said
waveguide. ARRIS-1016, ¶¶ 130, 135 [30.2]. With reference to Figure 1 above,
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
43
Naganuma discloses a band pass filter 32 which includes the transparent plate 34
(substrate) and optical film 36 which is formed on a surface of the plate 34.
ARRIS-1006, 4:7-10. The optical film 36 is in optical communication with the
fiber 24, and includes a first face surface optically closer to the fiber and a second
face surface opposed to the first face surface. ARRIS-1006, 4:21-35.
The optical film 36 may be a dielectric multilayer film formed by alternating
layers of silica and tintania. ARRIS-1006, 4:18-21.
[30.3] a mask in intimate contact with at least one of said filter surfaces, said
mask substantially opaque in at least some spectral region.
Naganuma discloses a mask in intimate contact with at least one of the filter
surfaces. ARRIS-1016, ¶¶ 130, 135 [30.3]. With reference to Figure 1 shown
above, Naganuma discloses optical film holder 26 formed from stainless steel.
ARRIS-1006, 3:66-67. The position of the filter 32 (including optical film 36) in
the optical film holder 26 may be fixed by adhesive with the optical film holder in
intimate contact with a face surface of the optical film 36. ARRIS-1006, 4:5-10.
A POSA would understand that stainless steel is opaque to at least some spectral
region. ARRIS-1016, ¶ 134.
Claim 31:
[31.0] The optical assembly of claim 30 wherein said waveguide is an optical
fiber having at least one end face, and said filter comprises said first face surface
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
44
facing toward and said second face surface facing away from one end of said
fiber.
Naganuma discloses the optical assembly of Claim 30 as set forth above.
ARRIS-1016, ¶ 136 [31.0]. The waveguide of the optical assembly is an optical
fiber having at least one end face. With reference to Figure 1 above, Naganuma
discloses an optical fiber 24 having an end which emits light. ARRIS-1006, 3:50-
65. As illustrated in annotated Figure 1, the optical film 36 includes a first face
surface facing toward and a second face surface face away from one end of the
fiber 24. Id..
Claim 47:
[47.0] The optical assembly of claim 31 wherein said mask is rigid.
Naganuma discloses an optical assembly having a rigid mask. ARRIS-1016,
¶ 137 [47.0]. As discussed in Section [30.3] above, Naganuma discloses optical
film holder 26 which meets the limitations of the recited mask in Claim 30.
Naganuma discloses that the optical film holder 26 may be formed from stainless
steel. ARRIS-1006, 3:66-67. A POSA would understand that the optical filter
holder 26 disclosed in Naganuma is rigid. ARRIS-1016, ¶¶ 134, 137 [47.0].
Claim 51:
[51.0] The optical assembly of Claim 30, said filter further comprising a
peripheral edge surface, said mask positioned in intimate contact with said
peripheral edge surface.
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
45
Naganuma discloses an optical assembly having a filter comprising a
peripheral edge surface and a mask positioned in intimate contact with the
peripheral edge surface. ARRIS-1016, ¶ 138 [51.0]. With reference to Figure 1
above, the optical film 36 comprises a peripheral edge surface. ARRIS-1006, Fig.
1. The optical filter holder 26 is positioned in intimate contact with the peripheral
edge surface of the optical film 36. Id.
E. Challenge 5: Claims 24 and 26 Are Unpatentable over Yokoyama in view of Takashashi
Claims 24 and 26 are rendered obvious under 35 U.S.C. § 103 by Yokoyama
in view of “Temperature stability of thin-film narrow-bandpass filters produced by
ion-assisted deposition” by Takashashi (“Takashashi”) (ARRIS-1014). ARRIS-
1016, ¶¶ 8, 146, 147 [24.0], 149, 151 [26.0].
Claims 24 and 26 each depend from Claim 1, and further specify that the
filter of Claim 1 is a multilayer filter having a packing density of at least 95%. The
specification of the ‘953 Patent, however, does not disclose any new techniques for
improving filter performance or packing density. First, the specification of the
‘953 Patent discusses generally how the energy of the deposition process used in
forming a filter relates to the packing density achieved. ARRIS-1001, 4:25-33;
5:21-25; ARRIS-1016, ¶ 139. Then, the ‘953 Patent refers to various high-energy
deposition processes of the prior art, but does not disclose any new processes or
any modification to them, and observes that ion-assisted deposition processes
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
46
result in thin film filters with packing densities “typically in the 95% range”.
ARRIS-1001, 5:32-44; ARRIS-1016, ¶ 140. This was well known to a POSA. Id.
For example, citing a number of references, Takashashi stated in 1995:
new evaporation techniques based on the reactive-ion-
plasma process (RIPP), such as ion-assisted deposition
(IAD), reactive ion plating, and ion beam sputtering,
have been developed that make it possible to grow dense
films of near-unity packing densities. Furthermore, the
wavelengths of these new RIPP-produced filters appear
to be little affected by ambient moisture.
ARRIS-1006, 667.
Thus, the ‘953 Patent merely discloses the use of known deposition
processes to form a thin film filter as those processes were known in the art; the
‘953 Patent does not modify or improve the processes. ARRIS-1016, ¶¶ 139-140.
The ‘953 Patent admits, for example, that conventional ion-assisted deposition
techniques used to achieve the film properties of the invention, including “a
packing density of at least ninety-five percent” as claimed in Claims 24 and 26.
As the specification suggests, the subject matter of these claims amounts to
no more than routine optimization of a result effective variable, namely packing
density, using known techniques. See In re Aller, 220 F.2d 454, 456 (CCPA 1955)
(“where the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
47
experimentation”); In re Applied Materials, Inc., 692 F.3d 1289 (Fed. Cir. 2012);
MPEP §§ 2144.04, 2144.05.
Claims 24 and 26 merely recite an optimal range – “at least 95%” – of
packing density for a thin film filter. The determination of an optimal range of a
results-effective variable is within the skill of a POSA. Applied Materials, 692
F.3d at 1293-94 (citing In re Aller, 220 F.3d at 456). A POSA understood that
packing density was a result-effective variable in the art, for example a POSA
knew that refractive index of a film depends on packing density. ARRIS-1016,
¶¶ 49, 51; ARRIS-1014, 669 (explaining that refractive index is a function of
packing density. More specifically, explaining that a filter’s average refractive
index (n0) is a function of average packing density(P0) and the averaged refractive
index of the bulk material (N0) used to make the filter: “n0 = N0 P0 + 1 – P0”.).
Thus, a POSA understood that increasing packing density had the predictable and
advantageous result of increasing the refractive index of the film towards that of
the bulk materials. ARRIS-1016, ¶¶ 49, 51, 144. Thus, the determination of the
optimal range of packing density was within the skill of a POSA. Applied
Materials, 692 F.3d at 1293-94; ARRIS-1016, ¶¶ 145, 149.
Further, the specification and prosecution history of the ‘953 Patent are
devoid of any assertion that the claimed optimal range of packing density is
“critical” and “produce[s] a new and unexpected result which is different in kind
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
48
and not merely in degree from the results of the prior art.” Applied Materials, 692
F.3d at 1297 (citing In re Aller, 220 F.3d at 456); ARRIS-1016, ¶¶ 140, 145.
Instead, the ‘953 Patent specification merely uses known processes to produce a
known result. See, e.g., ARRIS-1001, 5:32-33 (“[s]everal thin-film processes are
particularly well suited to produce this high-density . . . filter”). Thus, Claims 24
and Claims 26 lack patentability at least because they claim nothing more than
routine optimization.
Furthermore, as set out below, Yokoyama in view of Takashashi teach all of
the limitations of Claims 24 and 26, and it would have been obvious to combine
their teachings. ARRIS-1016, ¶¶ 141-151.
Claim 24:
[24.0] The optical assembly of Claim 1 wherein said filter comprises a dielectric
stack with a packing density of at least 95%.
Yokoyama teaches an optical assembly as specified in Claim 1 as set forth in
Challenge 3 above. ARRIS-1016, ¶ 125 [1.0-1.3]. With reference to the annotated
FIGs. 7 and 8 shown above, Yokoyama teaches a filter that includes optical
multiplexing film 64. ARRIS-1007, 9:2-30. Yokoyama teaches that “multiplexing
film 64, consisting of a multi-layer film similar to the optical branching film 63.”
ARRIS-1007, 6:6-9, 10-11; ARRIS-1016, ¶ 116. Multiplexing film 64 is vapor
deposited on substrate 72, which is BK7 glass. ARRIS-1007, 5:67-6:5, 6:14-15.
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
49
Multiplexing film 64 has “has a characteristic to transmit[] a signal light of 1.55
µm in wavelength and to reflect an pumping light of 1.48 µm in wavelength.” Id. at
6:11-14. Thus, multiplexing film 64 is a multi-layer, thin film filter, and a POSA
understands that it comprises a dielectric stack. ARRIS-1016, ¶ 148.
Takashashi teaches depositing a filter having a packing density of at least
ninety-five percent. ARRIS-1016, ¶¶ 143, 150. Takashashi teaches improving the
performance of thin-film filters by overcoming the problem of “film absorption of
atmospheric water vapor caus[ing] the center wavelength of the filter to become
longer” in narrow bandpass filters (“NBPF”). ARRIS-1014, 667. Takashashi
teaches that using reactive-ion-plasma processes, such as ion-assisted deposition
make dense films near-unity packing density possible, with the result that the films
are “little affected by ambient moisture”. Id. Thus, Takashashi teaches that the
near unity filters reduce the effect of ambient moisture on filter performance. Id. ;
ARRIS-1016, ¶¶ 146, 149.
In addition to teaching deposition techniques which result in “near-unity
packing densities” (ARRIS-1014, 667), Takashashi quantifies “near unity” as
including densities between 90 and 100%: “The packing density of a film
produced by the RIPP is nearly unity. For Po’s [packing densities] ranging from
0.9 to 1.0. . .” Id. at 672, and Fig. 7; ARRIS-1016, ¶ 143. Takashashi further
teaches that “considerable compressive stress from the substrate” during post-
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
50
deposition cooling increases averaged packing density (“APD”) of the filter, and
therefore its effective index of refraction (“EIR”), even to packing densities
greater than unity, when the filter is deposited on substrates such as glass. Id. at
674; ARRIS-1016, ¶ 143. Thus, Takashashi teaches achieving unity, and even
greater than unity, packing density, which is at least 95% packing density as
claimed.
A POSA would have been motivated to use the deposition techniques
described in Takashashi to make the optical multiplexing film 64 of Yokoyama
have at least 95% packing density. ARRIS-1016, ¶ 146. The substrate in
Yokoyama is BK7 glass, and as discussed above, Takashashi teaches that filters
deposited on such substrates using the techniques taught have improved refractive
indexes and increased packing densities, even greater than unity. ARRIS-1016, ¶
143. A POSA would have been motivated by the benefits described by
Takashashi, including increased refractive index and reduced effects of ambient
moisture on filter performance. ARRIS-1016, ¶¶ 146, 149. Thus, the modification
would require no more than applying a known technique to achieve predictable,
beneficial results. Furthermore, as discussed above, following the teaching of
Takashashi to achieve “at least 95%” packing density would be a matter of routine
optimization of a result effective variable. ARRIS-1016, ¶ 149; In re Applied
Materials, Inc., 692 F.3d 1289 (Fed. Cir. 2012); MPEP §§ 2144.04, 2144.05.
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
51
Claim 26:
[26.0] The optical assembly of Claim 1 wherein said filter comprises a multi-
layer high performance thin-film filter with a packing density of at least 95%.
Claim 26 would have been obvious over Yokoyama in view of Takashashi
as set forth for Claim 24. Claim 26 differs from Claim 24 in that it recites a
“multi-layer . . . thin-film filter”, whereas Claim 24 recites a “dielectric stack”. As
set forth for Claim 24, multiplexing film 64 is a multi-layer, thin film filter.
ARRIS-1016, ¶ 116. Claim 26 further specifies that the thin film filter is “high
performance”. A POSA would understand multiplexing film 64 is a high
performance thin-film filter. ARRIS-1016, ¶ 152. For example, multiplexing film 64
is used for long distance optical communications. Id.; ARRIS-1007, 1:7-11. The
multiplexing film 64 has “has a characteristic to transmit[] a signal light of 1.55
µm in wavelength and to reflect an pumping light of 1.48 µm in wavelength.”
ARRIS-1007, 6:11-14. “[M]ore than 90% of the [pumping light] …is reflected by
the optical multiplexing film 64” Id. at 7:20-23. A POSA understands that the
transmission and 90% reflectance requirement of multiplexer 64 in the context of a
long distance communication indicates the high performance nature of the filter.
ARRIS-1016, ¶ 152. A POSA further understands that such a filter would
typically be made by 20 or more layers, as a matter of design choice. Id.
The combination and motivation of Yokoyama and Takashashi is as set forth
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
52
above for Claim 24. ARRIS-1016, ¶ 149. Consistent with the high performance
filter 64 of Yokoyama, a POSA understands that the deposition teachings of
Takashashi are directed to high performance filters. ARRIS-1016, ¶ 153. For
example, Takashashi is directed to filters used in fiberoptic and satellite based
communication systems and the specific narrow bandpass filters of Takashashi
have between 31 and 41 layers. ARRIS-1016, ¶ 151 [26.0]; ARRIS-1007, 668,
670.
F. Challenge 6: Claims 24 and 26 Are Unpatentable over Naganuma in view of Fulton
Claims 24 and 26 are rendered obvious under 35 U.S.C. § 103 by Naganuma
in view of Fulton. ARRIS-1016, ¶¶ 8, 164-166. As set forth for Challenge 5, the
specification of the ‘953 Patent does not disclose any new techniques for
improving packing density or the criticality of the range claimed in Claims 24 and
26. Like Takashashi, Fulton confirms that a POSA knew packing density was a
result effective variable. ARRIS-1016, ¶ 161. For example, Fulton teaches that a
lower packing density results in a deterioration of filter performance in humid
environments. ARRIS-1015, 377. Fulton further teaches that higher packing
density leads to a higher index of refraction of a thin film layer, which a POSA
understands improves filter performance. ARRIS-1016, ¶ 161, ARRIS-1015, 378
(“increase in packing density (thus increased refractive index)”). Thus, as set forth
in Challenge 5, achieving the packing density of Claims 24 and Claims 26 amounts
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
53
to no more than routine optimization of a result effective variable. In re Applied
Materials, Inc., 692 F.3d 1289 (Fed. Cir. 2012); MPEP §§ 2144.04, 2144.05.
Furthermore, as shown below, each of the limitations of Claims 24 and 26 are
taught by Naganuma in view of Fulton, and it would have been obvious to combine
their teachings. ARRIS-1016, ¶¶ 154-166.
Claim 24:
[24.0] The optical assembly of Claim 1 wherein said filter comprises a dielectric
stack with a packing density of at least 95%.
Naganuma teaches an optical assembly as specified in Claim 1 as set forth in
Challenge 4 above. ARRIS-1016, ¶ 132 [1.0-1.3]. With reference to annotated
Figure 1 above, Naganuma discloses that filter 32 includes optical film 36, which
is a bandpass filter. ARRIS-1006, 4:7-10. “The optical film 36 may be a dielectric
multilayer film” formed by alternating layers of silica and titania. ARRIS-1006,
4:18-21. Thus, optical film 36 is a dielectric stack. Id.; ARRIS-1016, ¶ 165 [24.0].
Fulton teaches depositing a thin film filter (dielectric stack) having a packing
density of “full densification” and “0.98”, which a POSA understands are at least
ninety-five percent. ARRIS-1016, ¶¶ 159-160; ARRIS-1015, 383, 386-388. For
example, Fulton reports:
As in . . .Si3N4 (Fig. 6) a “vitreous-amorphous”
morphology was achieved. Depending on the process
parameters, material, and substrate temperature, this IAD
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
54
process can be “tuned” to produce film properties within
any of the four zones in Guenther's model.
ARRIS-1015, 387-388. The microstructure of the Si3N4 (Fig. 6) thin film filter had
achieved “full densification.” Id. at 383. Likewise, for another film, Fulton’s IAD
technique achieved a higher index of refraction (1.39) than the index (1.38) of the
same type of film known to have 0.98 packing density. Id. at 386. A POSA
understands that the packing density achieved was at least 98%. ARRIS-1016,
¶ 160.
Fulton further taught that high packing density was desirable. ARRIS-1016,
¶¶ 161, 163. For example, Fulton taught that index of refraction advantageously
increases with packing density. ARRIS-1016, ¶ 161; ARRIS-1015, 378 (“increase
in packing density (thus increased refractive index)”. Fulton also taught that
“reduced packing density . . . result in deterioration of the film’s performance in
humid environmental conditions, primarily due to absorption of water vapor”.
ARRIS-1015, 377. Fulton taught that it’s ion-assisted deposition process resulted
in “high quality optical coatings”. Id. at 389.
It would have been obvious to a POSA to deposit the optical film 36 of
Naganuma using the deposition process teachings of Fulton to achieve a packing
density of at least 95%. A POSA would have been motivated to do so for multiple
reasons, including Fulton’s teaching that index of refraction advantageously
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
55
increases with packing density (ARRIS-1015, 378); his teaching that higher
packing density improves performance in humidity (id. at 377), or to achieve
Fulton’s “high quality optical coating” with any of the many benefits described in
Fulton, such as increased stability, lower absorption, or higher durability (id. at
375, 389). ARRIS-1016, ¶¶ 156-157. The modification would require no more
than applying a known technique to achieve predictable, beneficial results.
Furthermore, as discussed above, following the teaching of Fulton to achieve a
particular packing density of at least 95% would be a matter of routine
optimization. ARRIS-1016, ¶ 164. In re Applied Materials, Inc., 692 F.3d 1289
(Fed. Cir. 2012); MPEP §§ 2144.04, 2144.05.
Claim 26:
[26.0] The optical assembly of Claim 1 wherein said filter comprises a multi-
layer high performance thin-film filter with a packing density of at least 95%.
Claim 26 would have been obvious over Yokoyama in view of Fulton as set
forth for Claim 24. Claim 26 differs in that it recites a “multi-layer high
performance thin-film filter”, whereas Claim 24 recites a “dielectric stack”. The
optical film 36 of Naganuma is a multilayer, thin film filter formed by alternating
layers of silica and titania. ARRIS-1006, 4:18-21; ARRIS-1016, ¶ 166 [26.0].
Bandpass filter 36 is used in an assembly for “multiplexing or demultiplexing a
plurality of optical signals having close wavelengths.” ARRIS-1006, Abstract,
1:7-10 (emphasis added). A POSA understands that the bandpass filter 36 for
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
56
multiplexing close wavelengths is a high performance filter, typically having more
than 20 layers. ARRIS-1016, ¶ 167; see, e.g., ARRIS-1014, at 670 Table 3.
As set forth for Claim 24, it would have been obvious to apply the
deposition technique teachings of Fulton to form the bandpass filter 36 of
Naganuma with a packing density of at least 95%. ARRIS-1016, ¶ 164. In
addition to the reasons stated for Claim 24, Fulton has teachings relevant to the
“high performance” filter of Claim 26. ARRIS-1016, ¶ 156. For example, Fulton
teaches that its process forms “high quality optical coatings.” ARRIS-1015, 389;
ARRIS-1016, ¶ 156. Fulton teaches that its process is suitable for: “more durable,
higher performing, design critical thin-film optical coatings” ARRIS-1015, 390.
Fulton taught that its process achieved higher performance of multiple parameters,
such as increasing the stability of the refractive index, having lower absorption,
and higher durability. Id. at 375, 389. Thus, in addition to the reasons set forth for
Claim 24, a POSA would have been motivated to use the deposition techniques of
Fulton to achieve an even higher performance filter 36 of Naganuma. ARRIS-
1016, ¶ 164. The modification would require no more than applying a known
technique to achieve predictable, beneficial results. Furthermore, as discussed
above, following the teaching of Fulton to achieve a particular packing density of
at least 95% would be a matter of routine optimization. Id. at ¶ 163. In re Applied
Materials, Inc., 692 F.3d 1289 (Fed. Cir. 2012); MPEP §§ 2144.04, 2144.05.
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
57
IX. Conclusion
For the reason set forth above, Petitioner has established a reasonable
likelihood of prevailing with respect to Claims 1, 23, 24, 26, 31, 47, and 51 of the
‘953 Patent and requests the Board to institute Petitioner’s Inter Partes Review and
then cancel Claims 1, 23, 24, 26, 31, 47, and 51 as unpatentable.
Respectfully submitted, /s/ D. Joseph English
D. Joseph English USPTO Reg. No. 42,514 Duane Morris LLP 505 9th Street NW, Suite 1000 Washington, D.C. 20004
Dated: January 5, 2015
Petition for Inter Partes Review of U.S. Patent No. 6,404,953
CERTIFICATE OF SERVICE ON PATENT OWNER UNDER 37 C.F.R. § 42.105(a)
Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies
that on the 5th day of January 2015, a complete and entire copy of this Petition for
Inter Partes Review and all supporting exhibits were provided via Federal Express,
postage prepaid, to the Patent Owner by serving the correspondence address of
record for the ‘953 Patent:
CIRREX SYSTEMS, LLC c/o ASCENDA LAW GROUP, PC
ATTN: TAREK N. FAHMI 84 W. Santa Clara St Suite 550
San Jose, CA 95113
Respectfully submitted,
DUANE MORRIS LLP
BY: /D. Joseph English/ D. Joseph English, Reg. No.: 42,514 John M. Baird, Reg. No. 57,585 505 9th Street, N.W., Suite 1000 Washington, D.C. 20004 P: (202) 776-7800 F: (202) 776-7801 [email protected] [email protected]
ATTORNEYS FOR PETITIONER