Arris Group, Inc.v.Cirrex Systems, LLC

Patent Trial and Appeal Board

Dec 17, 2015

09267258 (P.T.A.B. Dec. 17, 2015)

Trials@uspto.gov Paper 15
Tel: 571-272-7822 Entered: December 17, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

ARRIS GROUP, INC.,
Petitioner,
v.
CIRREX SYSTEMS, LLC.,
Patent Owner.
_______________

Case IPR2014-01191
Patent 6,222,970 B1
_______________

Before JAMESON LEE, LINDA M. GAUDETTE, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

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

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I. INTRODUCTION
Arris Group, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) on
July 18, 2014, to institute an inter partes review of claims 59, 61, 74, 76, 78,
and 87 (the “challenged claims”) of U.S. Patent No. 6,222,970 B1 (Ex. 1001,
“the ’970 patent”). Cirrex Systems LLC (“Patent Owner”) timely filed a
Preliminary Response (Paper 5, “Prelim. Resp.”). Based on these
submissions, we instituted this trial on January 22, 2015, pursuant to
35 U.S.C. § 314. Paper 6 (“Dec. on Inst.”).
After institution, Patent Owner filed a Response (Paper 9, “PO
Resp.”), and Petitioner filed a Reply to the Patent Owner Response (Paper
10, “Reply”).
Oral argument was held on October 6, 2015, and a transcript (Paper
14 (“Tr.”)) has been entered into the record.
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons discussed below, we determine Petitioner has met its
burden to prove, by a preponderance of the evidence, that claims 59, 61, 74,
76, 78, and 87 of the ’970 patent are unpatentable.
II. BACKGROUND
A. The ’970 Patent (Ex. 1001)
The ’970 patent relates “to optical fiber probes that use manipulated
delivery and reception regions to improve sensitivity to specific light-matter
interactions.” Ex. 1001, 1:25–27. One application of optical fiber probes is
in Raman spectroscopy. See generally, id. at 1:52–3:30. Raman
spectroscopy is a technique for chemical analysis and monitoring, and
involves energizing a sample with a high-power, narrow-wavelength energy
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source, such as a laser, to induce low intensity light emissions from the
sample. Id. at 2:5–6.
In remote Raman spectroscopy, laser light is directed down an optical
fiber to a remote probe, and exits the fiber to illuminate the sample. Id. at
2:57–59, 3:23–24. Another fiber receives the Raman-emitted light and
returns it to an instrument for analysis. Id. at 2:59–61, 3:24–25. A problem
that occurs during this process is that “[w]avelength-shifted light is
generated due to inelastic light-matter interactions between propagation light
and fiber materials.” Id. at 62:11–13. “This wavelength-shifted light
manifests itself as interference in many fiber optic applications.
Applications in which the signals of interest are weak—similar in strength to
that of the interference—are particularly susceptible to detrimental
influence.” Id. at 62:25–30.
To address the interference problem, the ’970 patent applies to a fiber
end face a thin-film filter comprising between 20 and 150 stack layers of
alternating high/low refractive indices. Id. at 62:65–63:1, 63:57–58. The
filter is applied directly to the fiber end face, in contrast to the prior art
technique of placing filter-coated thin wafers in standard fiber optic mating
connector junctions between adjoining fiber end faces. Id. at 64:56–61. The
’970 patent discloses that the filter preferably has a packing density of at
least 95%, and that this density can be achieved by using a thin-film
deposition process that imparts sufficient energy to the depositing
molecules. Id. at 63:58–59, 64:64–65. According to the ’970 patent,
suitable deposition “processes include magnetron sputtering, single- and
dual-beam ion sputtering, ion plating, and ion-assisted deposition (typically
slightly less performance and lower packing densities).” Id. at 65:6–11; see
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also id. at 65:17–19 (“Ion-assisted deposition produces films with densities
typically in the 95% range.”).
B. Illustrative Claim
Of the challenged claims, claim 59 is independent. Remaining
challenged claims 61, 74, 76, 78, and 87 depend directly from claim 59,
reproduced below:
59. An optical fiber assembly, comprising:
an optical fiber segment, and
an integral filter having a packing density of at least ninety-five
percent adhering to an end face of the optical fiber segment.
C. The Prior Art
The pending grounds of unpatentability in this inter partes review are
based on the following prior art:
Reference Publication Date Exhibit
Stone

US 5,037,180 August 6, 1991 Exhibit 1005
Takashashi “Temperature stability
of thin-film narrow-
bandpass filters
produced by ion-
assisted deposition,”
Applied Optics, Vol. 34,
No. 4 (1995)

February 1, 1995 Exhibit 1006
Shioda JPH03118503 May 21, 1991 Exhibit 1010
Garmon US 4,946,239 August 7, 1990 Exhibit 1013
Ohmi et al. US 5,981,075 November 9,
1999
Exhibit 1017

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Petitioner also relies on the testimony of its expert, W. John
Tomlinson, Ph.D. Dr. Tomlinson executed a first declaration under
37 C.F.R. §1.68 (Ex. 1003) in support of the Petition, and a second
declaration under 37 C.F.R. §1.68 (Ex. 1020) in support of the Reply.
D. The Instituted Grounds of Unpatentability
We instituted the instant inter partes review on the following grounds
of unpatentability:
Claims Basis References
59, 78 § 103(a) Stone and Takashashi
61, 87 § 103(a) Stone, Takashashi, and Shioda
74 § 103(a) Stone, Takashashi, and Ohmi
76 § 103(a) Stone, Takashashi, and Garmon

III. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir.
2015). Even under the rule of broadest reasonable interpretation, claim
terms generally also are given their ordinary and customary meaning, as
would be understood by one of ordinary skill in the art in the context of the
entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007). Only terms which are in controversy need to be construed,
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and only to the extent necessary to resolve the controversy. Vivid Techs.,
Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
In its Petition, Petitioner proposes the following construction for the
phrase “an integral filter . . . adhering to an end face of the optical fiber
segment” (claim 59): “filter coating deposited on a substrate comprising an
end face of the optical fiber segment.” Pet. 12 (emphasis omitted).
Petitioner contends a person of ordinary skill would not interpret the claims
as encompassing structures formed by depositing a thin-film filter on a wafer
and then placing the wafer in optical communication with the fiber. Id.
In its Response, Patent Owner does not comment on Petitioner’s
proposed claim construction, or advance proposed constructions for any
claim terms. See generally, PO Resp.
We determined no express claim construction was required for
purposes of our Decision on Institution. Dec. on Inst. 6. Having now
considered Patent Owner’s Response and Petitioner’s Reply, and evidence in
support thereof, we remain of the opinion that an express claim construction
is unnecessary to a determination of patentability of the challenged claims in
this inter partes review. See Vivid Techs., 200 F.3d at 803. As discussed
more fully below in our analysis of Petitioner’s challenges to the claims, we
apply the plain and ordinary meaning of the claim terms in our analysis of
the patentability challenges.
B. Level of Ordinary Skill in the Art
Petitioner contends a person of ordinary skill in the art would have
“[an] education and/or experience in the field of optics” and “in the sub-field
of thin-film filters.” Pet. 15 (citing Ex. 1003 ¶ 24). According to Petitioner,
such person would have, at a minimum, (1) more than three years of relevant
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work experience and hold a basic Bachelor’s degree, or (2) less than three
years of relevant work experience, but hold a more advanced degree, such as
a Masters or a Ph.D. Id. (citing Ex. 1003 ¶ 24). Patent Owner does not
comment on Petitioner’s proposed definition of the level of ordinary skill in
the art, or offer an alternative definition. See generally, PO Resp.
Petitioner relies on the testimony of Dr. Tomlinson, see Pet. 15–20,
who testified that he is “an expert in the field of optical assemblies and . . .
[has] been an expert in this field since prior to 1965.” Ex. 1003 ¶ 11. Dr.
Tomlinson testified that he is “familiar with the knowledge and capabilities
of one of ordinary skill in the art” by virtue of his “work as a research
assistant, scientist, researcher, supervisor of Ph.D. level researchers and
engineers, and project manager.” Id. ¶ 23; see also id. ¶¶ 13–18 (wherein
Dr. Tomlinson discusses the specifics of his work). We find Dr. Tomlinson
is qualified to give an opinion as to the level of ordinary skill in the art in the
field of optics, and adopt Petitioner’s definition of the level of ordinary skill
in the art for purposes of this proceeding. Cf. Sundance, Inc. v. DeMonte
Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008) (explaining that
to testify as an expert under Federal Rule of Evidence (FRE) 702, a person
need not be a person of ordinary skill in the art, but rather “qualified in the
pertinent art.”).
C. Principles of Law
To prevail in its challenges to the patentability of the claims, a
petitioner must prove unpatentability by a preponderance of the evidence.
35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (Sept. 16, 2012).
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the subject matter sought to be patented and the prior art are such
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that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art; (3)
the level of ordinary skill in the art; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 18 (1966).
An invention “composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR, 550 U.S. at 418. Petitioner must also show
there was a reason to combine those elements to achieve the claimed
invention with a reasonable expectation of success. See PAR Pharm., Inc. v.
TWI Pharms., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). To make that
determination, we can look to “interrelated teachings of multiple patents; the
effects of demands known to the design community or present in the
marketplace; and the background knowledge possessed by a person having
ordinary skill in the art.” KSR, 550 U.S. at 418. We can also look to the
nature of the problem to be solved. In re Gartside, 203 F.3d 1305, 1319
(Fed. Cir. 2000) (holding that the suggestion to combine “may come from,
inter alia, the teachings of the references themselves and, in some cases,
from the nature of the problem to be solved”).
We analyze the instituted grounds of unpatentability in accordance
with these principles.
D. Alleged Obviousness of Claims 59, 61, 74, 76, 78, and 87
Petitioner’s obviousness challenges as to claims 59, 61, 74, 76, 78,
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and 87 are based on contentions that: (1) Stone discloses an optical
assembly comprising an integral filter formed on an optical fiber segment
using an electron-beam deposition technique; (2) Takashashi discloses
optical filters having near unity packing densities have desirable properties
and can be achieved using evaporation techniques based on reactive-ion-
plasma processing; and (3) one of ordinary skill in the art would have been
motivated to replace the electron-beam deposition technique used by Stone
with one of the reactive-ion-plasma processing techniques disclosed in
Takashashi in order to produce an optical assembly with a higher-quality
thin-film filter, i.e., a filter having a packing density of at least 95%. Pet.
32–34.
Patent Owner’s principal argument is that Petitioner has not met its
burden to show unpatentability of claims 59, 61, 74, 76, 78, and 87, because
a preponderance of the evidence fails to support Petitioner’s contention that
one of ordinary skill in the art would have been motivated to combine Stone
and Takashashi in the manner recited in claim 59. See generally, PO Resp.
2–7. Patent Owner presents additional arguments in support of patentability
of dependent claims 76 and 78 (id. at 8–10). Patent Owner has not filed any
additional evidence, and relies on Petitioner’s evidence in support of the
arguments made in its Response. See generally, PO Resp.
1. The Applied Prior Art
a. Stone (Ex. 1005)
Stone discloses “a thin film filter which is an integral part of an
optical fiber,” and can be used in the design of a long-pass, a short-pass, and
a bandpass filter. Ex. 1005, 1:5–7, 2:1–4. The filter is made by depositing
“a multilayer, thin-film stack of low and high index of refraction material”
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onto the end of an optical fiber by thin-film deposition techniques such as
“electron beam evaporation, sputtering and the like.” Id. at 1:30–32, 67–68.
Figure 1 of Stone, reproduced below, illustrates “a side view of an optical
fiber in combination with an optical filter in accordance with the principles
of the invention.” Id. at 1:45–47.
Stone Figure 1, above, illustrates fiber 10 having end 12 coated with a
filter comprising alternating layers of Si 14 and SiO2 16. Id. at 2:61–64.
Prior to depositing the Si 14 and SiO2 16 layers, end 12 was polished
“normal to the fiber axes.” Id. at 2:60–61. According to Stone, “filters
deposited on perpendicular facets of single-mode optical fibers reflect most
of the power which is not transmitted. This reflected light, if fed back to a
laser or an amplifier can cause a problem, particularly if the associated
isolators do not adequately block the reflections.” Id. at 3:58–63. Stone
discloses that one solution to this problem is to bevel the fiber end face so
that reflected power is not coupled back into the waveguide. Id. at 3:63–66.
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b. Takashashi (Ex. 1006)
Takashashi is an article titled “Temperature stability of thin-film
narrow-bandpass filters produced by ion-assisted deposition.” Ex. 1006,
Title. Takashashi discloses that the center wavelength of a narrow-bandpass
filter (“NBPF”) lengthens upon exposure to the atmosphere due to
absorption of atmospheric water vapor by the filter. Id. at 667.
This phenomenon can be explained by the fact that the effective
index of refraction (EIR) of the film varies according to the
absorbed moisture level. Variations in the absorbed moisture
level cause the effective optical thickness (expressed as the
product of the index of refraction and physical thickness) of the
film to change, which in turn shifts the center wavelength of the
filter.
Id. According to Takashashi, “[t]he amount of water absorbed . . . is greatly
influenced by ambient humidity and temperature; thus, changes in either of
these two factors vary the center wavelength of a[n] NBPF to a considerable
degree.” Id. Takashashi discloses the effect of ambient moisture on center
wavelength is more pronounced in an NBPF produced by conventional
methods, such as electron-beam evaporation, due to the filter’s low packing
density. Id. Takashashi discloses that more accurate measurement of
wavelength variations caused solely by temperature changes, i.e.,
temperature stability of the center wavelength (“TSCW”), is possible in
NBPFs produced by newer evaporation techniques based on the reactive-
ion-plasma process (RIPP), e.g., ion-assisted deposition (IAD). Id. at 667–
68. According to Takashashi, RIPP techniques can produce dense films of
near-unity packing density that “appear to be little affected by ambient
moisture.” Id. at 667. Takashashi explains that averaged packing density
(“APD”) of an NBPF can be determined by measuring the cubic volume V0
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of a region within a specific film and the volume V actually occupied by
evaporated film materials within volume V0 . Id. at 669. APD (P0) is equal
to V/V0. Id.
Takashashi describes the development of a new equation for
calculating the TSCW of an NBPF at wavelength λ. Id. at 669–70. The
equation is based on a finding that the TSCW is a function of both
temperature coefficient of refractive index (“TCRI”) of the film materials
and coefficient of linear expansion (“CLE”) of the substrate, Id. at 667–68.
Takashashi discloses that the new equation includes five unknown
parameters: N0 (averaged refractive index of the portion of the film actually
occupied by evaporated materials), δ (normalized temperature coefficient of
refractive index (“NTCRI”), α (coefficient of linear expansion of the
substrate (“CLES”)), β (coefficient of linear expansion of the filter
(“CLEF”)), and s (Poisson ratio). Id. at 671. Takashashi provides an
analysis of the dependency of the TSCW on each of the parameters related
to the film materials, i.e., NTCRI, CLEF, s, P0 (average packing density),
and N0. See id. at 671–72, Figs. 4–8. Based on the analysis, Takashashi
determines that the film properties having the greatest effect on the TSCW
values are the TCRI and the CLEF. Id. at 671–72. With respect to
dependency of the TSCW on P0, Takashashi discloses that “the packing
density of a film produced by the RIPP is nearly unity. For P0’s ranging
from 0.9 to 1.0, although calculation indicates slight dependency of the
TSCW (CLES) on P0, the more porous the film, the less steep the slope of
the TSCW (CLES).” Id. at 672. Takashashi also discloses that, based on
calculated substrate dependencies of the TSCWs of exemplary NBPFs, it
was found that the “TSCW of a[n] NBPF varies with changes in packing
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density, which, in turn, is a function of volumetric distortion caused by stress
applied to the NBPF from the substrate.” Id. at 668. Takashashi ultimately
concludes that “[t]he TSCW of a[n] NBPF with near-unity APD produced
by ion-assisted deposition is determined chiefly by the TCRI of the film
materials and by the CLE of the substrate. Id. at 675.
c. Garmon (Ex. 1013)
Garmon discloses an optical power isolator “for improving the
isolation between the light source and an optical waveguide in an optical
communications system.” Ex. 1013, 3:28–30. The isolator comprises an
input core surrounded by a layer of cladding material. Id. at 4:27–29. An
antireflection coating can be applied to an end to minimize reflection back to
a laser diode. Id. at 7:9–11. The isolator may “be fabricated by employing
thin film deposition techniques utilized in the manufacture of integrated
optics devices.” Id. at 9:28–30. Garmon discloses that the length of the
isolator is 7.0–11.5 centimeters. Id. at 8:5–12.
2. Analysis
a. Claim 59: alleged unpatentability under 35 U.S.C. § 103(a) over Stone
and Takashashi
Petitioner contends Stone discloses “[a]n optical fiber assembly,
comprising: “an optical fiber segment, and an integral filter . . . adhering to
an end face of the optical fiber segment” (claim 59). Pet. 32. Petitioner
concedes Stone does not disclose that the filter has “a packing density of at
least ninety-five percent,” as further recited in claim 59. See id. at 33.
Petitioner contends “Takashashi is directed to deposition techniques to
overcome the problem of ‘film absorption of atmospheric water vapor
caus[ing] the center wavelength of the filter to become longer’ in narrow
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bandpass filters.” Id. at 32 (quoting Ex. 1006, 667). Petitioner further
contends Takashashi teaches that new evaporation techniques based on the
reactive-ion-plasma process, such as ion-assisted deposition, enable the
growth of dense films of near unity packing densities, and that “the
wavelengths of these new RIPP-produced filters appear to be little affected
by ambient moisture.” Id. at 33 (quoting Ex. 1006, 667). Petitioner
contends “Takashashi teaches that ‘near unity packing densities’ were
desirable because ‘the wavelengths of these new RIPP-produced filters
appear to be little affected by ambient moisture.’” Id. (quoting Ex. 1006,
667). Petitioner, at oral argument, explained that “near unity,” in the context
of Takashashi’s discussion of moisture instability problems in filters,
“means at a hundred percent or as close as possible to a hundred percent . . .
above 95[%].” Tr. 16:3–6.
Petitioner argues that, based on Takashashi’s teaching that filters
having near-unity packing densities are desirable because they are less
susceptible to ambient moisture and its negative impact on wavelength, one
of ordinary skill in the art would have been motivated to produce Stone’s
optical assembly with a filter having a near-unity packing density in order to
reduce the effect of ambient moisture on filter performance. Pet. 33.
Petitioner further contends one of ordinary skill in the art would have
recognized that a filter with a near-unity packing density could be achieved
predictably by substituting the filter-forming technique used by Stone, e.g.,
electron-beam deposition, with one of the newer RIPP techniques described
in Takashashi, e.g., IAD, reactive ion plating and ion beam sputtering, for
producing filters having near-unity packing densities. Id. at 33–34.
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Petitioner acknowledges Takashashi does not explicitly describe
forming a “filter having a packing density of at least ninety-five percent” as
recited in claim 59. See id. at 36. Petitioner contends, however, that
achieving a packing density of at least 95% would have been a matter of
optimization well within the skill of [the ordinary artisan].” Id. at 34 In
support of this argument, Petitioner relies on Dr. Tomlinson’s opinion that
one of ordinary skill in the art would have understood from Takashashi’s
discussion of TSCW dependency on filter packing densities “ranging from
0.9 to 1.0” (Ex. 1006, 672, Fig. 7) that “a thin film filter with a packing
density of 100% . . . is achievable using the disclosed RIPP deposition
methods.” Pet. 37 (citing Ex. 1003 ¶¶93, 94, 101). Dr. Tomlinson further
opined that one of ordinary skill in the art would have been motivated to
make Stone’s filter with a packing density of greater than 95%, because
Takashashi teaches that the effect of ambient moisture on filter performance
and variations in the properties of a thin film filter are minimized with
higher packing densities. Ex. 1003 ¶¶ 98–100, cited in Pet. 38. Dr.
Tomlinson relies on Fulton (Ex. 1004) as additional evidence that “thin film
deposition processes for producing dense filters were well known at the time
of the alleged invention.” Ex. 1003 ¶ 42.
Fulton is an article titled “Application of ion-assisted-deposition using
a gridless end-Hall ion source for volume manufacturing of thin-film optical
filters.” Ex. 1004, Title. Fulton discloses that “bombardment of a growing
film with energetic ions enhances the performance of the thin-film properties
for optical filter applications. Improved film adhesion is achieved by ionic
bombardment of the substrate prior to film deposition. Densification of the
film, deposited on either heated or unheated substrates, is achieved with
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IAD.” Id. at 375. Fulton further discloses that “[t]hin-film properties, such
as packing density, adhesion, and stress, improve by low-energy ion
bombardment due to the increase in film density” (id. at 388), and that
“[p]orosity, reduced packing density, and a lower refractive index result in a
deterioration of the film’s performance in humid environmental conditions,
primarily due to adsorption of water vapor” (id. at 377).
Patent Owner argues the evidence does not support Petitioner’s
contention that one of ordinary skill in the art would have been motivated to
replace the electron-beam deposition technique used by Stone with one of
the reactive-ion-plasma processing techniques disclosed in Takashashi, e.g.,
ion-assisted deposition, in order to produce an optical assembly with a filter
having a near unity packing density. See PO Resp. 4–6. Patent Owner
directs us to a discussion of Stone in column 63, lines 24–46 of the ’970
patent, which state, in relevant part, that the detrimental effects of filter
inefficiencies can be minimized for many applications using Stone’s
technique of “bevel[ing] the filter/fiber end face such that the filter’s rejected
light is reflected at an angle which cannot be propagated by the fiber.” Id. at
4 (quoting Ex. 1001, 63:42–46); see also id. (citing Ex. 1005, 4:17–19, 23–
25 (discussing the effects of beveling)). Patent Owner argues that, when
considering the teachings of Stone and Takashashi as a whole,
it is likely that the person of ordinary skill would adopt Stone’s
teachings concerning the use of beveled end faces for the
optical fiber on which the filter is deposited inasmuch as such
beveled ends provide considerably reduced reflected power
with no walk-off losses and leave the filter spectra “essentially
unaltered.”
Id. at 6.
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We have considered Patent Owner’s arguments and evidence, but are
not persuaded that one of ordinary skill in the art would have understood that
the filter inefficiencies created by ambient moisture could be addressed
adequately by merely beveling Stone’s filter/fiber end face, i.e., we are not
persuaded that the ordinary artisan would not have been motivated to
increase filter packing density in Stone’s optical assembly. As pointed out
by Petitioner, Stone discloses that optical fibers having multilayer thin-films
deposited directly on their end faces have advantageous properties,
regardless of whether the filters are deposited on perpendicular fiber end
faces or on beveled fiber end faces. See Reply 10 (citing Ex. 1005, 1:60–
67). We further agree with Petitioner that Stone’s teaching of a preference
for using a beveled end face is limited to “certain situations in which power
would be reflected back into the waveguide in a problematic way” (id. at
10–11 (quoting Ex. 1005, 3:57–65)). Patent Owner has not argued,
however, nor do we find any language in the claims or specification of the
’970 patent that supports a narrow reading of claim 59 as limited to an
optical fiber assembly that is capable of use in an application in which
reflected light is problematic.
We credit Dr. Tomlinson’s testimony that one of ordinary skill in the
art: “would not [have] use[d] a beveled end face for applications where
reducing reflected power is not necessary because a beveled end face
requires additional machining and, as illustrated by Stone’s Figure 6, makes
connection to other fibers more problematic” and “would generally use a
perpendicular end face as shown in Stone Figure 1 unless a particular
application called for a beveled end face” (Ex. 1020 ¶ 23). We also credit
Dr. Tomlinson’s testimony that one of ordinary skill in the art would have
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been motivated by Takashashi’s description of the benefits provided by a
higher packing density, e.g., a reduction in the effect of ambient moisture on
filter performance,
to substitute one known method of thin film deposition – i.e.,
the “electron-beam deposition” of Stone – for another know
method of thin film deposition – i.e. the reactive-ion plasma
process of Takashashi – because the substitution would have
yielded a favorable and predictable result. Namely, the
combination of Stone and Takashashi would have yielded a
thin-film filter with a higher packing density which was less
susceptible to volumetric distortion of the film due to ambient
moisture, as taught by Takashashi.
Ex. 1003 ¶ 100.
Patent Owner argues that even if one of ordinary skill in the art had
been motivated to modify Stone’s process to produce a filter with a high
packing density, the evidence does not support Petitioner’s contention that
the ordinary artisan would have produced a filter with a packing density as
high as 95%. See PO Resp. 6–7. Patent Owner asserts that a “prior art
reference must be considered in its entirety, i.e., as a whole, including
portions that would lead away from the claimed invention (id. at 5–6 (citing
W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983))),1
and argues that
considering the teachings of Stone and Takashashi as a whole, a
person of ordinary skill in the art would understand that if ion-
assisted deposition were used to create thin-film filters having
high packing densities, those filters should have packing

1 In Gore, the Federal Circuit found that “the district court erred in . . .
considering the references in less than their entireties, i.e., in disregarding
disclosures in the references that diverge from and teach away from the
invention at hand.” Id. at 1550 (emphasis added).
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densities near 90% so as to best maintain center wavelength
tem[p]erature stability.
(id. at 6). Patent Owner’s argument relies on Takashashi’s statement that
“[f]or P0’s ranging from 0.9 to 1.0, although calculation indicates slight
dependency of the TSCW (CLES) on P0, the more porous the film,
the less steep the slope of the TSCW (CLES)” (Ex. 1006, 667). See PO
Resp. at 4–5; cf. Ex. 1006, 672 (noting that the creating of pores in the film
results in a reduction in the packing density). Patent Owner argues Dr.
Tomlinson’s testimony that “Takashashi teaches depositing a filter having a
packing density of at least ninety-five percent” (Ex. 1003 ¶ 91) “ignores
Takashashi’s report concerning increased temperature-induced center
wavelength instabilities with increased packing densities.” PO Resp. 6.
Relying on Dr. Tomlinson’s testimony, Petitioner argues that even if
one of ordinary skill in the art were to read Takashashi as teaching that
packing densities nearer 90% provide better temperature stability (id. at 3),
the ordinary artisan would have understood from Takashashi that: (1) a
packing density above 95% provides advantages that outweigh any negative
impact on temperature stability (Reply 4–6 (citing Ex. 1020 ¶¶ 9–14 )); (2)
any dependency of temperature stability on packing density is trivial (id. at 6
(citing Ex. 1020 ¶ 16)); (3) temperature stability can be improved best by
selecting materials for the thin film filter that are appropriate for the
expansion characteristics of the substrate, not by reducing packing density
(id. at 6–7 (citing Ex. 1020 ¶¶ 17–18)); and (4) any preference for packing
densities closer to 90% is only applicable to a small subset of filters (id. at 8
(citing Ex. 1020 ¶ 19)).
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Dr. Tomlinson testified that one of ordinary skill in the art
“understood that packing density is a measure of how well a thin film filter
is deposited,” and that “[i]n the ideal case, the film is deposited with zero
voids (considered defects), which means the film has unity, or 100%,
packing density.” Ex. 1020 ¶ 9. Dr. Tomlinson testified that Fulton and
Takashashi evidence that one of ordinary skill in the art was aware “that as
packing density decreases from unity, the number of voids (defects)
increase, making the filter susceptible to moisture induced instabilities and
reduction of refractive index.” Id. According to Dr. Tomlinson, one of
ordinary skill in the art would have understood Takashashi Figure 7 as
“show[ing] a negligible difference in temperature stability between [] 90%
and 100% packing densit[ies].” Id. ¶ 16. Dr. Tomlinson further testified
that, to the extent Takashashi indicates a preference for a 90% packing
density, such preference is only indicated “in the context of extremely
narrowband filters having a FWHM [(full width at half-maximum)] of
between 0.5 and 1.1 nanometer.” Id. ¶ 19; cf. Ex. 1006, 667, Abstract
(noting that the four types of narrow-bandpass filters examined had FWHMs
from 0.5 to 1.1 nm). Dr. Tomlinson explained that, after consideration of
multiple factors (“Poisson ratio, s, (Fig. 6), average refractive index, N0,
(Fig. 8), coefficient of linear expansion of the filter, CLEF or β, (Fig. 5), and
the normalized temperature coefficient of the refractive index, NTCRI, (Fig.
4)”), Takashashi concluded the TCRI and the CLEF had the greatest effect
on temperature stability values. Ex. 1020 ¶ 17 (citing Ex. 1006, 672). Dr.
Tomlinson testified that one of ordinary skill in the art would have
understood from this disclosure in Takashashi that the way to achieve a
narrowband filter with an upper limit on its temperature stability is “by the
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selection of materials for the thin film filter relative to the expansion
characteristics of the substrate, namely the substrate’s coefficient of linear
expansion. “ Id. ¶ 18.
We have considered Patent Owner’s arguments and evidence, but find
a preponderance of the evidence support’s Petitioner’s contention that one of
ordinary skill in the art would have been motivated to modify Stone’s
method to produce a filter with a packing density of at least 95%. We credit
Dr. Tomlinson’s testimony that a person of ordinary skill in the art “would
not [have] read Takashashi as criticizing, discrediting or discouraging the
claimed solution, i.e., thin film filters having 95% and higher packing
density,” but would have understood Takashashi as teaching, at most, a
slight preference for using a packing density closer to 90%, applicable only
to a small subset of high performance filters (Ex. 1020 ¶ 8). See Syntex
(U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1379–80 (Fed. Cir. 2005) (“A
statement that a particular combination is not a preferred embodiment does
not teach away absent clear discouragement of that combination.”); In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed in the . . .
application.”); see also Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d
1344, 1356 (Fed. Cir. 2012) (“Describing a formulation as ‘second best’ is
not a ‘clear discouragement,’ as is required by our precedent.”). We further
credit Dr. Tomlinson’s testimony that one of ordinary skill in the art, in
considering Takashashi in its entirety, would have concluded that the
advantages of using a packing density as close as possible to unity (100%)
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outweigh any negative effect on TSCW caused by using a packing density of
greater than 95% versus a packing density closer to 90%. (see Ex. 1020
¶ 18).
In sum, we determine Petitioner has met its burden to show that claim
59 is unpatentable under 35 U.S.C. § 103(a) over Stone and Takashashi.
b. Claim 78: alleged unpatentability under 35 U.S.C. § 103(a) over Stone
and Takashashi
Claim 78 depends directly from claim 59 and recites “wherein said
end face substantially lies within a plane perpendicular to the longitudinal
axis of the optical fiber.” Ex. 1001, 84:3–5. Patent Owner concedes this
feature is described in Stone Figure 1.2 PO Resp. 8. Patent Owner argues,
however, that given Stone’s preference for beveled end faces and
“indicat[ion] that the use of such bevels results in no walk-off losses and
filter spectra remaining ‘essentially unaltered,’” one of ordinary skill in the
art would have used an optical fiber with a beveled end face for deposition
of thin-film filters. Id. (citing Ex. 1005, 4:17–19, 23–25).
Patent Owner’s argument regarding Stone’s preference for beveled
end faces, and Petitioner’s response thereto, were discussed above in
connection with claim 59. See Section III.D.2.a. For the same reasons, we
determine a preponderance of the evidence supports Petitioner’s contention
that it would have been obvious to one of ordinary skill in the art to have
used an optical fiber having a perpendicular end face to deposit an integral
filter. Accordingly, we determine Petitioner has met its burden to show that

2 Given Patent Owner’s concession, we need not address Petitioner’s
alternative contention that it would have been obvious to shape Stone’s
optical fiber with an end face as claimed. See Pet. 40.
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claim 78 is unpatentable under 35 U.S.C. § 103(a) over Stone and
Takashashi.
c. Claim 76 alleged unpatentability under 35 U.S.C. § 103(a) over Stone,
Takashashi, and Garmon
Claim 76 depends directly from claim 59 and recites “wherein said
optical fiber segment is less than 24 inches in length.” Ex. 1001, 83:66–67.
Petitioner relies on Garmon for a disclosure of an optical fiber having a
length between “7 and 11.5 centimeters (2.76 to 4.53 inches)” (Pet. 56
(citing Ex. 1013, Table 3)), i.e., “less than 24 inches in length” (Ex. 1001,
83:67). Pet. 56. Petitioner contends “[o]ptical fiber length was recognized
as a result-effective variable in the art” (id. at 57), relying on Dr.
Tomlinson’s testimony that one of ordinary skill in the art “would have
known of the advantages of working with short lengths of optical fibers,”
i.e., “[s]hort lengths of optical fibers were preferred for the ease of use and
manipulation while working with the fibers” (Ex. 1003 ¶ 48 (citing U.S.
Patent No. 5,684,907 (Ex. 1018, 5:4–5) for a teaching that the purpose of
using an 11.875 inch length of fiber was its ease of manipulation during an
encasement process)). Pet. 20. Petitioner contends “it would have been
obvious to implement the fiber of Stone with a short length as taught by
Garmon to [] improve ease of manipulation of the optical fiber during
processing” or for the purpose of “implement[ing] the fiber of Stone as a
short optical link between two other systems, as taught by Garmon.” Id. at
56 (citing Ex. 1003 ¶ 121).
Patent Owner contends Petitioner’s arguments are based on
speculation and argues Petitioner has not identified sufficient evidentiary
support for its contention that one of ordinary skill in the art would have
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been motivated to combine the teachings of Stone, Takashashi, and Garmon
to arrive at the invention recited in claim 76. See PO Resp. 9–10. Patent
Owner argues, more specifically, that Dr. Tomlinson’s testimony, alone, is
insufficient to support Petitioner’s contention that it was known in the art to
use short fiber lengths. Id.
“A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Dr. Tomlinson’s
opinion that optical fiber length was recognized as a result-effective variable
in the art (see Ex. 1003 ¶ 48) is based on his familiarity (as an expert in the
field of optical assemblies since 1965) with the knowledge and capabilities
of one of ordinary skill in the art (see id. ¶¶ 11–25). Dr. Tomlinson’s
opinion is further supported by disclosure in U.S. Patent No. 5,684,907 (Ex.
1018). We credit Dr. Tomlinson’s testimony, and find that Patent Owner
has not identified evidence to rebut Dr. Tomlinson’s opinion. Accordingly,
we determine a preponderance of the evidence supports Petitioner’s
contention that fiber length was recognized as result-effective variable that
could be optimized to allow ease of manipulation during processing or use
of the fiber.
“[D]iscovery of an optimum value of a result effective variable . . . is
ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276
(CCPA 1980). “The outcome of optimizing a result-effective variable may
still be patentable if the claimed ranges are ‘critical’ and ‘produce a new and
unexpected result which is different in kind and not merely in degree from
the results of the prior art.’” Applied Materials, 692 F.3d at 1297 (quoting
In re Aller 220 F.2d 454, 456 (CCPA 1955)).
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Patent Owner contends column 62, lines 7–8 of the ’970 patent
“explain[] the importance of using a fiber less than 24 [inches] in length.”
PO Resp. 9. The language of the ’970 patent relied upon by Patent Owner
reads: “Many of the phenomena associated with light propagation in optical
fibers are dependent on travel distance in the fiber.” Ex. 1001, 62:7–8.
In its Reply Brief, Petitioner relies on Dr. Tomlinson’s testimony that
column 62, lines 7–8 of the ’970 patent do not provide any evidence of
criticality in a fiber length of 24 inches or less. Reply Br. 15–16 (citing Ex.
1020 ¶ 31). Dr. Tomlinson further testified that the disclosure cited by
Patent Owner
refers to accumulation of interference caused by fluorescence
and Raman effects, but a [person of ordinary skill in the art]
would understand that the ’970 Patent teaches that such
interference accumulation is unacceptable after just a few
inches, well below the claimed range of less than 24 inches:
“interference accumulates rapidly in even a short segment of
optical fiber (more than a few inches).”
Ex. 1020 ¶ 31 (quoting Ex. 1001, 47:38–40). Petitioner contends the only
disclosure in the ’970 patent pertaining to a fiber length of less than 24
inches is found in column 63, line 66 to column 64, line 2 (Reply Br. 15),
which read: “In an exemplary embodiment, a short fiber segment,
preferably less than 24" but optimally 1.5" or less, has an integral filter
applied to its end face. The segment can be joined to a longer fiber” (Ex.
1001, 63:66–64:2). Petitioner contends this disclosure likewise fails to
provide any evidence of criticality, and argues that, to the contrary, the ’970
patent suggests there is no criticality in the recited length, directing us to
column 68, lines 27–29, which read: “Fibers are first cut to a manageable
length. This length may be anything from a few inches to many meters
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depending on the required volume. (emphasis added)” (Reply 15–16). We
agree with Petitioner that Patent Owner has not identified persuasive
evidence that a fiber length of 24 inches or less is critical and produces a
new and unexpected result.
We credit Dr. Tomlinson’s testimony that one of ordinary skill in the
art would have been motivated to utilize a fiber length of less than 24 inches,
as exemplified by Garmon, to “ease the coating process required by Stone”
(Ex. 1020 ¶ 26), or for the purpose of using Stone’s optical assembly to
“connect[] optical components that are disposed in close proximity to each
other, i.e., less than 24 inches” (id. ¶ 27). See also Ex. 1003 ¶121
(“[M]otivation would have been to implement a short length as taught by
Garmon to improve ease of manipulation of Stone’s optical fiber during
processing . . . [or] to use the integral filter of Stone and Takashashi as a
short optical link between two other systems as taught by Garmon.”).
We determine a preponderance of the evidence supports Petitioner’s
contention that one of ordinary skill in the art would have been motivated to
use a length of 24 inches or less for the optical fiber segment of Stone, as
modified by Takashashi and that Petitioner has met its burden to show that
claim 76 is unpatentable under 35 U.S.C. § 103(a) over Stone, Takashashi,
and Garmon.
d. Claims 61, 74, and 87: alleged unpatentability of claims 61 and 87
under 35 U.S.C. § 103(a) over Stone, Takashashi, and Shioda; and
alleged unpatentability of claim 74 under 35 U.S.C. § 103(a) over Stone,
Takashashi, and Ohmi
Patent Owner does not advance separate arguments in support of
patentability of claims 61, 74, and 87, but contends these claims (as well as
claim 76) are patentable over the cited references, because Petitioner has
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failed to meet its burden to show unpatentability of claim 59, from which
these claims depend. PO Resp. 7–8. In Section III.D.2.a., we determined
Petitioner had met its burden to show that claim 59 is unpatentable under 35
U.S.C. § 103(a) over Stone and Takashashi. We have considered the
arguments and evidence presented in the Petition in support of
unpatentability of claims 61, 74, 87 (see Pet. 44–53), and 76 (discussed in
Section III.D.2.c.), and likewise determine Petitioner has met its burden to
show unpatentability of these claims by a preponderance of the evidence.
IV. CONCLUSION
Petitioner has met its burden to show, by a preponderance of the
evidence, unpatentability of: claims 59 and 78 under 35 U.S.C. §103(a)
based on Stone and Takashashi; claims 61 and 87 under 35 U.S.C. §103(a)
based on Stone, Takashashi, and Shioda; claim 74 under 35 U.S.C. §103(a)
based on Stone, Takashashi, and Ohmi; and claim 76 under 35 U.S.C.
§103(a) based on Stone, Takashashi, and Garmon.
V. ORDER
For the reasons given, it is
ORDERED that, by a preponderance of the evidence, claims 59, 61,
74, 76, 78, and 87 are unpatentable; and
FURTHER ORDERED that because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

D. Joseph English
Duane Morris LLP
djenglish@duanemorris.com

BACKUP COUNSEL:

John Baird
Duane Morris LLP
jmbaird@duanemorris.com

PATENT OWNER:

Tarek Fahmi
Ascenda Law Group
tarek.fahmi@ascendalaw.com