Inter Partes Review of U.S. Patent No. 6,404,953 IN THE ... · Petition for Inter Partes Review of...

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 _____________________


Mail Stop “PATENT BOARD” Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450


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


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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


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.


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


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).


3

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


4

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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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

[email protected].


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


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

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eview of U

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er the filter

001, 3:43-

paque to th

anted optic

areas of the

16, ¶ 35.

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me the ‘953

40. The ‘9

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that


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


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


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:


13

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


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.


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


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.


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.


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-


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


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


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


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


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.


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.


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.


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-


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:


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


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.





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.


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.




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


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:



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:




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.


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

on for Inter

ptical asse

¶¶ 8, 124.

Id.

n optical fib

amplifiers

2) a filter in

face of the

illustrates

RRIS-1007,

tive view o

plexer of F

waveguide

FIG. 7 and

r Partes Re

35

embly of C

Claim 23,

ber assemb

s. The opti

n optical c

e filter. AR

a preferred

, 5:53-54; A

of a substra

FIG. 5, whi

e multiplex

d 8 of Yoko

eview of U

Claim 1 is a

dependen

bly includi

ical fiber a

ommunica

RRIS-1007

d embodim

ARRIS-10

ate in an im

ile FIG. 8

xer. ARRI

oyama are

U.S. Patent

anticipated

nt from Cla

ing an optic

assembly in

ation with t

7, 6:6-9; 9:

ment of the

016, ¶ 111.

mproved em

shows a pl

IS-1007, 9:

illustrated

No. 6,404

by

aim 1, is al

cal wavegu

ncludes: (

the fiber; a

1-16; ARR

optical

. FIG. 7 of

mbodimen

lan

:1-2; ARR

d as follows

4,953

lso

uide

1) a

and

RIS-

f

nt of

RIS-

s:


36

The following analysis shows where each element of Claims 1 and 31 is

taught by Yokoyama:

Claim 1:


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.





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


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].




filter.


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.


39

The aperture film 75 need not be made of metal, but of

anything that intercepts light.

Id. at 9:35-36.

Claim 23:



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

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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.


having a face surface facing toward one end of said waveguide member, and a



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.



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,


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):


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,


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:




44


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.


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


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


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


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.


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-


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.


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


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


53

to no more than routine optimization of a result effective variable. In re Applied


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


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


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


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



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


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

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