Arris Group, Inc.v.Cirrex Systems, LLC

Patent Trial and Appeal Board

Dec 2, 2015

09318451 (P.T.A.B. Dec. 2, 2015)

Trials@uspto.gov Paper 18
Tel: 571-272-7822 Entered: December 2, 2015

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.
____________

Case IPR2014-00815
Patent 6,404,953 B1
____________

Before MEREDITH C. PETRAVICK, TRENTON A. WARD, and
BRIAN P. MURPHY, Administrative Patent Judges.

WARD, Administrative Patent Judge.

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

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I. INTRODUCTION
We have statutory authority 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.
With respect to the grounds instituted in this trial, we have considered
the papers submitted by the parties and the evidence cited therein. For the
reasons discussed below, we determine Petitioner has shown by a
preponderance of the evidence that claim 30 of U.S. Patent No.
6,404,953 B1 (Ex. 1001, “the ’953 patent”) is unpatentable.
BACKGROUND A.
Arris Group, Inc., Tellabs, Inc., Alcatel-Lucent USA, Inc., and Source
Photonics, Inc. (collectively, “Petitioner”) filed a Petition requesting an inter
partes review of claim 30 of the ’953 patent. Paper 1 (“Pet.”). Petitioner
included a Declaration of W. John Tomlinson, Ph.D. Ex. 1003. Symantec
Corporation (“Patent Owner”) filed a Preliminary Response to the Petition.
Paper 7 (“Prelim. Resp.”).
In our Decision Instituting Inter Partes Review, we granted review as
to the challenged claim. Paper 8 (“Dec. on Inst.”). Patent Owner filed a
Response to the Petition. Paper 12 (“PO Resp.”). Petitioner filed a Reply to
the Response. Paper 14 (“Pet. Reply”). On August 19, 2015, all parties
were present for an oral hearing. Paper 17 (“Tr.”).
RELATED PROCEEDINGS B.
The parties indicate that the ’953 patent is the subject of the following
pending federal district court case: Cirrex Systems, LLC v. Verizon
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Communications, Inc. et al., Case No. 1:13-cv-00921 (D. Del.). Pet. 6;
Paper 4, 3.
THE ’953 PATENT C.
The ’953 patent is titled “Optical Assembly With High Performance
Filter” and generally relates to an apparatus for optical noise reduction in
optical assemblies by controlling or limiting undesirable photon entrance,
reflection, departure, or appearance in or from the assembly. Ex. 1001,
2:36–39. The ’953 patent describes how in a preferred embodiment high
performance filters can be combined with masking to eliminate significant
sources of unwanted light penetration in an optical assembly. Id. at 3:65–67.
Figure 2 of the ’953 patent is reproduced below.

As shown above in Figure 2 of the ’953 patent, the end of an elongated
waveguide is shown in optical fiber 11 having mask 12 and filter 13. Id. at
3:44–47. The ’953 patent describes that mask 12 covers filter edge
surface 22a, the area of junction between filter 13 and end face 22b of
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fiber 11, the area of junction between the filter edge surface and filter
face 22c, and the peripheral portion of filter face surface 13 distal to
fiber 22d. Id. at 6:63–7:3. The ’953 patent describes “thin-film filters
having a large number of alternating high/low refractive indices, stacked
layers deposited on a substrate.” Id. at 4:14–17.
Claim 30, reproduced below, is illustrative of the claimed
subject matter:
30. An optical assembly comprising
a waveguide having at least one end face,
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
a mask in intimate contact with at least one of said filter
surfaces, said mask substantially opaque in at least some
spectral region.
INSTITUTED GROUNDS AND PRIOR ART D.
We instituted an inter partes review of claim 30 of the ’953 patent on
the following grounds (Dec. on Inst. 17):
Reference Basis
Nicholson1 § 102
Yokoyama2 § 102
Shih3 § 103

1 U.S. Patent No. 4,883,062 (Ex. 1005) (“Nicholson”).
2 U.S. Patent No. 5,457,558 (Ex. 1007) (“Yokoyama”).
3 U.S. Patent No. 5,546,486 (Ex. 1004) (“Shih”).
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II. ANALYSIS
CLAIM CONSTRUCTION A.
The Board will interpret claims of an unexpired patent using the
broadest reasonable construction in light of the specification of the
patent. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793
F.3d 1268, 1275–79 (Fed. Cir. 2015). Under the broadest reasonable
interpretation standard, claim terms are given their ordinary and customary
meaning as would be understood by one of ordinary skill in the art in the
context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007). An inventor may rebut that presumption by
providing a definition of the term in the specification with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994). In the absence of such a definition, limitations are not to be read
from the specification into the claims. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).
“mask” 1.
Petitioner proposes that the term “mask” be construed to mean a
“material that blocks the passage of at least selected photons.” Pet. 14
(citing Ex. 1003 (Declaration of W. John Tomlinson, Ph.D.) ¶¶ 42, 62, 64,
67). Petitioner quotes portions of the ’953 patent Specification, describing
that:
The mask is substantially opaque in at least some selected
spectral region to impact the extent to which photons in that
spectral region can pass through the filter and to the waveguide
member.
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Pet. 15 (citing Ex. 1001, Abstract). Furthermore, Petitioner quotes the
statement in the ’953 patent Specification that:
Mask 12 is opaque to at least some wavelengths of light.
Accordingly, light of the opacity wavelengths do not penetrate
mask 12 thereby eliminating unwanted optical noise that would
result from such light penetration of the mask covered areas.
Pet. 15 (citing Ex. 1001, 3:47–51).
Patent Owner does not comment on the construction of “mask” in its
Response. In view of the plain and ordinary meaning of the term “mask”
and the disclosure in the ’953 patent Specification, we determine that the
broadest reasonable interpretation of “mask” is “a material that blocks the
passage of at least selected photons.”
2. “thin-film filter”
Claim 30 recites “a thin-film filter in optical communication with said
waveguide.” In the Decision on Institution, we construed the term “thin-film
filter” to mean “a filter comprised of stacked layers for filtering light.” Dec.
on Inst. 6. Patent Owner argues that this construction is improper and that
the broadest reasonable interpretation of the term “thin-film filter” is the
following:
a filter comprised of stacked layers for filtering light, where the
layers are free from defects and voids such that the material
characteristics of the layer approaches that of a bulk solid and
the packing factors of the layers approach 100%
PO Resp. 1–2 (citing Ex. 1001, 4:22–25). Patent Owner argues that reading
these limitations into the term “thin-film filter” is appropriate based upon an
explicit definition in the specification of the ’953 patent. Id. at 2.
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Particularly, Patent Owner argues that Specification expressly states that
“thin-film filters” must have the features recited in its proposed construction.
Id. The portion of the Specification relied upon by Patent Owner as
providing this explicit definition of “thin-film filter” is reproduced below:
[D]esirable filter performance properties are achieved in high
performance filters, thin-film filters having a large number of
alternating high/low refractive indices, stacked layers deposited
on a substrate. Between 20 and 150 layers are usually required
depending on such factors as: 1) the performance required for
the end use; 2) the refractive index differential between
materials in adjacent filter layers; 3) the consistency and purity
of the filter layer; and 4) the sophistication of the filter design
process. And, the layers must be free from defects and voids
such that the material characteristics of the layer approaches
that of a bulk solid and the packing factor of the layer
approaches 100%. Achieving high-density packing requires the
molecules depositing onto the substrate to be highly energetic.
Ex. 1001, 4:14–27 (emphasis added). Patent Owner argues that the
statement as to what “the layers must be,” constitutes an explicit definition
for the claim term “thin-film filter.” PO Resp. 2.
Petitioner disagrees and argues that the ’953 patent Specification fails
to redefine the term “thin-film filter” to mean something other than its plain
and ordinary meaning and, thus, the Board’s construction in the Decision on
Institution is the correct construction. Pet. Reply 3–5.
a. Disclosure in the Specification regarding the
“thin-film filter”
Patent Owner argues that the ’953 patent Specification explicitly
defines “thin-film filter,” but Petitioner counters that the portion of the
’953 patent Specification cited by Patent Owner refers to “high
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performance” thin-film filters, not all types of thin-film filters. Pet. Reply 5
(citing Ex. 1001, 4:14–25). We note that in the disclosure from the
Specification relied upon by Patent Owner regarding what “the layers must
be,” the term “layers” refers to the “stacked layers deposited on a substrate”
identified earlier in the cited paragraph, which are recited as an element of
the “high performance filters, thin-film filters” being described. Ex. 1001,
4:14–17.
Petitioner argues that it would be improper to read limitations from
the Specification regarding some thin-film filters, namely high performance
thin-film filters, into the definition of “thin-film filters.” Pet. Reply 6.
Under the broadest reasonable interpretation standard, claim terms are given
their ordinary and customary meaning as would be understood by one of
ordinary skill in the art in the context of the entire disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An inventor
may rebut that presumption by providing a definition of the term in the
specification with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
definition, limitations are not to be read from the specification into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Patent Owner did, in fact, provide an express definition of a claim
term in the Specification of the ’953 patent in accordance with the typical
and conventional format of describing how a term is “used herein.” Ex.
1001, 1:45. More particularly, the Specification states the following:
The term “waveguide” is used herein to refer to an optical
structure having the ability to transmit light in a bound
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propagation mode along a path parallel to its axis, and to
contain the energy within or adjacent to its surface.
Ex. 1001, 1:45–49 (emphasis added). Although the Patent Owner chose to
use this common format for defining the term “waveguide” recited in claim
30 of the ’953 patent, it did not use such a format with respect to the term
“thin-film filter.” The description of high performance thin-film filters
relied upon by Patent Owner, moreover, is a description of a particularly
preferred embodiment. The description does not expressly limit all claimed
thin-film filters only to those comprising stacked layers free from defects
and voids and having a packing factor approaching 100%, with the requisite
clarity, deliberateness, and precision mandated by governing case law.
We are not persuaded by Patent Owner that the one statement in the
’953 patent Specification describing “desirable filter performance
properties” for “high performance filters” should be read to limit all thin-
film filters.
b. Claim Differentiation
Petitioner argues that the doctrine of claim differentiation reinforces
the conclusion that the term “thin-film filter” should not be narrowed as
proposed by Patent Owner. Pet. Reply 7. Specifically, Petitioner argues that
dependent claim 50, which depends from challenged independent claim 30,
further limits the term “thin-film filter” by reciting that “said thin film is
comprised of material having packing density exceeding 99%.” Pet. Reply 7
(quoting Ex. 1001, 14:22–23). Accordingly, Petitioner argues that the term
“thin-film filter” recited in independent claim 30 does not require such a
high packing density as proposed by Patent Owner. Pet. Reply 7.
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Under the doctrine of claim differentiation, when a dependent claim
adds a limitation relative to the independent claim on which it depends, there
is a rebuttable presumption that the independent claim does not require that
limitation. Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Can., 687 F.3d
1266, 1275 (Fed. Cir. 2012); Phillips v. AWH Corp., 415 F.3d 1303, 1315
(Fed. Cir. 2005). Furthermore, as the Federal Circuit stated in Liebel-
Flarsheim Co. v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004), the “doctrine
of claim differentiation is at its strongest” where “the limitation that is
sought to be ‘read into’ an independent claim already appears in a dependent
claim.” Id. at 910. Here, a similar limitation to the one regarding minimum
packing density that Patent Owner attempts to read into independent claim
30 appears in dependent claim 50. Accordingly, we are not persuaded that
Patent Owner has overcome the rebuttable presumption that independent
claim 30 does not require the further limitation of a minimum packing
density “exceeding 99%” (or approaching 100%), as recited in claim 50.
c. Ambiguity of the Proposed Claim Construction
Petitioner argues Patent Owner’s proposed construction for “thin-film
filter” would introduce ambiguity into the claim by purportedly covering
only thin film filters that have layers that “approach that of a bulk solid” and
have packing factors that “approach 100%”. Pet. Reply 9. Specifically,
Petitioner’s declarant Dr. Tomlinson states that a person of ordinary skill in
the art, reading the Specification and the claims, would not be able to
determine with any reasonable degree of certainty whether the proposed
construction requires a packing density that is substantially greater than
99%, greater than 99%, at least 95%, or some other scope. Id. (citing Ex.
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1018 ¶ 15). Petitioner further argues that the Specification of the ’953 patent
does not clearly define the scope of “approaching 100%.” Id.
We note that the ’953 patent Specification fails to provide complete
clarity regarding what it means for the “material characteristics of the layers
[to] approach that of a bulk solid and the packing factors of the layers [to]
approach 100%,” as set forth in Patent Owner’s proposed claim
construction. PO Resp. 1–2. For example, the Specification states that:
The preferred thin-film deposition processes impart sufficient
energy to the depositing molecules so that the forming structure
is essentially fully packed (100% comprised of the desired
molecules, essentially nonporous, and free of voids and
pinholes). For best performance, the structure should approach
or equal 100% (greater than 99%) packing density, but at least
95%.
Ex. 1001, 5:21–27 (emphasis added). The quoted statement seems to
indicate that the phrase “approach or equal 100%” means to be “greater than
99%.” See id. In the same paragraph of the Specification, however, it
describes “a filter with high packing density greater than 99%, preferably
approaching or equaling 100%, but at least 95%.” Ex. 1001, 5:44–46
(emphasis added).4 Accordingly, the ’953 patent Specification appears to
provide somewhat differing uses of the phrase “approaching or equaling
100%.” Thus, we are not persuaded that the Patent Owner clearly set forth a
definition in the Specification of the phrase “material characteristics of the

4 With respect to this statement, Patent Owner argued at the oral hearing that
“this is probably an appropriate case to look for the broadest reasonable
interpretation of what ‘approaching 100 percent’ means.” Tr. 31.
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layers approach that of a bulk solid and the packing factors of the layers
approach 100%,” as set forth in Patent Owner’s proposed claim
construction.
For the first time during oral argument, Patent Owner cited the
Federal Circuit’s decision in In re Abbott Diabetes Care Inc., 696 F.3d 1142,
1150 (Fed. Cir. 2012) as the closest case on this claim construction issue.
Tr. 29. Specifically, Patent Owner cited In re Abbott Diabetes Care Inc., as
an example of the Federal Circuit reading limitations recited in the
Specification into the construction of a claim term. In re Abbott, 696 F.3d at
1150 (construing the claimed “electrochemical sensor” as a “discrete
electrochemical sensor devoid of external connection cables or wires.”). In
that case, however, the Federal Circuit determined that “Abbott’s patents
‘repeatedly, consistently, and exclusively’ depict an electrochemical sensor
without external cables or wires while simultaneously disparaging sensors
with external cables or wires. Id. (quoting Irdeto Access, Inc. v. Echostar
Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004)). Unlike Abbott’s
patent, the Specification of Patent Owner’s ’953 patent does not repeatedly,
consistently, and exclusively describe a “thin-film filter” to require the
following:
a filter comprised of stacked layers for filtering light, where the
layers are free from defects and voids such that the material
characteristics of the layers approach that of a bulk solid and
the packing factors of the layers approach 100%.
PO Resp. 1–2. Furthermore, unlike the disparaging statements found in
Abbott’s patent, Patent Owner fails to identify any statements in the
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Specification disparaging thin-film filters that fail to provide each of the
limitations set forth in Patent Owner’s proposed narrowed construction of
“thin-film filter.” Therefore, we determine In re Abbott Diabetes Care Inc.
to be distinguishable from the facts of this inter partes review proceeding.
d. Conclusion
A “heavy presumption” exists in favor of the ordinary meaning of
claim language. Bell Atl. Network Servs., Inc. v. Covad Comm. Grp., Inc.,
262 F.3d 1258, 1268 (Fed. Cir. 2001). To overcome this presumption, the
patentee must “clearly set forth” and “clearly redefine” a claim term away
from its ordinary meaning. Id. The disavowal must be “unmistakable” and
“unambiguous.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir.
2012). This standard is “exacting.” Thorner v. Sony Computer Entm’t Am.
LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012).
We do not find that Patent Owner has met this exacting standard, and,
in the absence of an express definition for the term “thin-film filter,” we
decline to incorporate Patent Owner’s lengthy recitation as the broadest
reasonable interpretation of the term “thin-film filter.” In view of the plain
and ordinary meaning of the term “thin-film filter” and the disclosure in the
’953 patent Specification, we construe the term “thin-film filter” to mean “a
filter comprised of stacked layers for filtering light.”
PROPOSED GROUND OF ANTICIPATION BY NICHOLSON B.
Overview of Nicholson (Ex. 1005) 1.
Nicholson is titled “Temperature and Pressure Monitors Utilizing
Interference Filters,” and describes an interference edge filter mounted to the
end of an optical fiber to provide a sensor for pressure or temperature.
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Ex. 1005, Abstract. Nicholson discloses that the “interference filter is a
known device consisting of alternating metal-dielectric-metal layers,” and
that two basic types of interference filters exist, specifically (1) bandpass
filters and (2) edge filters. Ex. 1005, 2:5–15. Figure 1 of Nicholson is
reproduced below.

As shown above in Figure 1, Nicholson discloses optical fiber 10 with edge
filter 11 formed on it. Id. at 3:11–12. Nicholson discloses that the “edge
filter consists of alternating layers of dielectric and metal or metal coatings.”
Id. at 3:12–13. Additionally, as shown in Figure 1 above, Nicholson
discloses that the “filter is preferably surrounded by an absorbance layer 12
formed of highly optically absorbent material such as carbon black.” Id. at
3:23–25.
Analysis of Proposed Ground of Anticipation by 2.
Nicholson
The apparatus set forth in claim 30 requires a “waveguide having at
least one end face.” Concerning this claim limitation, Petitioner contends
that Nicholson discloses an optical assembly, and more particularly that
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“[a]n interference filter is mounted on the end of an optical fiber to provide a
sensor for pressure or temperature” and that the “edge filter at the end of an
optical fiber is subjected to a polychromatic light.” Pet. 28–29 (quoting
Ex. 1005, Abstract, 2:33–36). Accordingly, we are persuaded Petitioner
sufficiently demonstrates that Nicholson discloses the claimed waveguide
limitation.
With respect to the claimed “thin-film filter” limitation, Petitioner
contends that Nicholson discloses an edge filter consisting of alternating
layers of dielectric and metal or metal coatings. Pet. 30 (citing Ex. 1005,
3:11–12). Petitioner’s annotated version of Figure 1 of Nicholson is
reproduced below.

As illustrated in annotated Figure 1 of Nicholson above, Petitioner alleges
that Nicholson’s edge filter 11 has opposing face surfaces with a first face
surface being optically closer to the fiber end face and the second face
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surface being the opposing surface of edge filter 11. Pet. 31 (citing Ex. 1003
¶ 93).
As discussed above, we construe “thin-film filter,” to mean “a filter
comprised of stacked layers for filtering light.” As cited by Petitioner, edge
filter 11 from Nicholson is disclosed as consisting of alternating layers of
dielectric and metal or metal coatings. Pet. 30 (citing Ex. 1005, 3:11–12).
Furthermore, Petitioner cites the disclosure in Nicholson that edge filter 11
can transmit only above or below a certain “cut on” or “cut off” wavelength.
Pet. 30 (citing Ex. 1005, 2:5–16). Accordingly, we are persuaded Petitioner
sufficiently demonstrates that Nicholson discloses the claimed “thin-film
filter” limitation.
Claim 30 further requires “a mask in intimate contact with at least one
of said filter surfaces, said mask substantially opaque in at least some
spectral region.” For this claim limitation, Petitioner relies upon
Nicholson’s disclosure of absorbance layer 12, shown in the annotated
Figure 1 above. Pet. 31 (citing Ex. 1005, 3:23–25). Nicholson states that
the “absorbance layer 12 [is] formed of highly optical absorbent material
such as carbon black.” Ex. 1005, 3:24–25. Petitioner argues that this highly
absorbent material, such as carbon black, would be substantially opaque in at
least some spectral region. Pet. 31–32 (citing Ex. 1003 ¶ 94). As discussed
above, we construe a mask as “a material that blocks the passage of at least
selected photons.” We are persuaded that Petitioner sufficiently
demonstrates that absorbance layer 12 in Nicholson provides a material that
blocks the passage of at least selected photons.
In its Response, Patent Owner argues that Nicholson does not
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anticipate because it fails to teach a thin-film filter with layers having
packing factors approaching 100%. PO Resp. 6–7. As we do not adopt
Patent Owner’s proposed construction of “thin-film filter” requiring these
limitations, Patent Owner’s arguments are moot. In fact, during the oral
argument, Patent Owner conceded that, if the Board were to adopt the same
construction for “thin-film filter” as set forth in the decision to institute,
Nicholson would anticipate claim 30. Tr. 38.5 As discussed above, we
maintain the same construction for “thin-film filter” as in the decision to
institute. Dec. on Inst. 6. For the foregoing reasons, we determine that
Petitioner has demonstrated by a preponderance of the evidence that claim
30 is anticipated by Nicholson.
PROPOSED GROUND OF ANTICIPATION BY YOKOYAMA C.
Overview of Yokoyama (Ex. 1007) 1.
Yokoyama is titled “Optical Waveguide Multiplexer for Optical Fiber
Amplifiers,” and describes an optical waveguide multiplexer for use in
optical fiber amplifiers. Ex. 1007, Abstract. Specifically, Yokoyama
discloses optical waveguide multiplexer 61 having substrate 62 and 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.” Ex.
1007, 5:67–6:2. Figure 7 of Yokoyama is reproduced below.

5 “JUDGE WARD: With respect to anticipation by Nicholson, does the
Patent Owner concede that if were we to adopt our construction set forth in
the decision to institute, that Nicholson does anticipate?
MR. FAHMI: Under your original construction, yes.” Tr. 38.
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As shown above in Figure 7, Yokoyama discloses substrate 72, similar to
substrate 62, having optical branching film 63 formed on its face and
receiving light radiated from first optical I/O terminal 521. Id. at 9:1–6.
Yokoyama further discloses that in addition to optical branching film 63,
substrate 72 has aperture film 75 consisting of a metal film near the center of
which is a hole. Id. at 9:6–8.
Analysis of Proposed Ground of Anticipation by 2.
Yokoyama
The apparatus set forth in claim 30 requires a “waveguide having at
least one end face.” Concerning this claim limitation, Petitioner contends
that Yokoyama discloses “[a]n optical waveguide multiplexer for use in
optical fiber amplifiers” and that for the multiplexer, “[e]ach of the first to
fourth optical I/O terminals 521 to 524 is provided, at the tip of an optical
fiber.” Pet. 34 (quoting Ex. 1007, Abstract, 1:7–9, 6:46–47). Accordingly,
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we are persuaded Petitioner sufficiently demonstrates that Yokoyama
discloses the claimed waveguide limitation.
With respect to the “thin-film filter” limitation, Petitioner contends
that Yokoyama discloses optical branching film 63, consisting of a multi-
layer film of TiO2 and SiO2, deposited over a substrate. Pet. 34 (citing Ex.
1007, 6:6–9). Petitioner’s annotated version of Figure 8 of Yokoyama is
reproduced below.

As illustrated in annotated Figure 8 of Yokoyama above, Petitioner alleges
that Yokoyama’s substrate 72 is arranged so as to receive incident light from
first I/O terminal 521. Pet. 35 (citing Ex. 1007, 5:64–6:2). Accordingly,
Petitioner alleges that optical branching film 63, deposited on substrate 72,
has a first face surface optically closer to the fiber end face and second face
in contact with the substrate that is opposed to the first face surface. Pet. 35
(citing Ex. 1003 ¶ 106).
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As discussed above, we construe “thin-film filter” to mean “a filter
comprised of stacked layers for filtering light.” As cited by Petitioner,
optical branching film 63 from Yokoyama is disclosed as consisting of
multiple layers of TiO2 and SiO2. Pet. 34 (citing Ex. 1007, 6:6–9; Ex. 1003
¶ 104). Furthermore, Petitioner cites the disclosure in Yokoyama that
optical branching film 63 has a characteristic to transmit about 90% of the
incident light and to reflect the remaining 10%. Pet. 34 (citing Ex. 1007,
6:6–9). Accordingly, we are persuaded Petitioner sufficiently demonstrates
that Yokoyama discloses the claimed thin-film filter limitation.
Claim 30 further requires “a mask in intimate contact with at least one
of said filter surfaces, said mask substantially opaque in at least some
spectral region.” For this claim limitation, Petitioner relies upon
Yokoyama’s disclosure of aperture film 75, shown in Figure 7 above.
Pet. 35 (citing Ex. 1007, 9:2–8, 30–34). Yokoyama states that “aperture film
75 need not be made of metal, but of anything that intercepts light.”
Ex. 1007, 9:35–36; see also Ex. 1003 ¶¶ 108–109 (“aperture film 75 is
opaque in at least some spectral region”). As discussed above, we construe a
mask as “a material that blocks the passage of at least selected photons.”
We are persuaded that Petitioner has demonstrated that aperture film 75 in
Yokoyama provides a material that blocks the passage of at least selected
photons.
In its Response, Patent Owner argues that Yokoyama does not
anticipate because it fails to teach a thin-film filter with layers having
packing factors approaching 100%. PO Resp. 8–9. As we do not adopt
Patent Owner’s proposed construction of “thin-film filter” requiring these
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limitations, Patent Owner’s arguments are moot. In fact, during the oral
argument, Patent Owner conceded that, if the Board were to adopt the same
construction for “thin-film filter” as set forth in the decision to institute,
Yokoyama anticipates claim 30. Tr. 38.6 As discussed above, we maintain
the same construction for “thin-film filter” as in the decision to institute.
Dec. on Inst. 6. For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claim 30 is anticipated
by Yokoyama.
PROPOSED GROUND OF OBVIOUSNESS OVER SHIH D.
Overview of Shih (Ex. 1004) 1.
Shih is titled “Optical Fiber End for Application in an Optical Isolator
and a Method of Manufacture Thereof,” and describes an improved end of
an optical fiber such that light transmission into the end is substantially
reduced. Ex. 1004, 2:22–31. Figure 4G of Shih is reproduced below.

6 “JUDGE WARD: With respect to anticipation by Nicholson, does the
Patent Owner concede that if were we to adopt our construction set forth in
the decision to institute, that Nicholson does anticipate?
MR. FAHMI: Under your original construction, yes.
JUDGE WARD: Is the same true for Yokoyama?
MR. FAHMI: It is.” Tr. 38.
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As shown above in Figure 4G, Shih discloses input fiber 20 having core 21
and cladding 22. Id. at 3:10–13. Furthermore, Shih discloses placing an
optical barrier 30 over cladding 22 of end surface 24 of input fiber 20, such
that optical barrier 30 has opening 35 that exposes some portion of
cladding 22 around core 21 to allow light to be transmitted from core 21. Id.
at 3:15–19. Shih further discloses that the surface of optical barrier 30 and
the end surface of input fiber 20 in opening 35 are covered with
antireflection coatings. Id. at 4:39–41. Shih states that these “[t]he
antireflection coatings enhance the transmission of light in the forward
direction through the input fiber 20.” Id. at 4:46–48.
Analysis of Proposed Ground of Obviousness Over Shih 2.
The apparatus set forth in claim 30 requires a “waveguide having at
least one end face.” Concerning this claim limitation, Petitioner contends
that Shih discloses an optical fiber providing a waveguide. Pet. 20 (citing
Ex. 1004, 2:23–28). Specifically, Shih discloses that “[t]he present
invention provides for an improved end of an optical fiber” having “a flat
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end surface substantially perpendicular to the longitudinal axis.” Ex. 1004,
2:22–26. Accordingly, we are persuaded Petitioner sufficiently
demonstrates that Shih discloses the claimed waveguide limitation.
Claim 30 further requires “a mask in intimate contact with at least one
of said filter surfaces, said mask substantially opaque in at least some
spectral region.” For this claim limitation, Petitioner relies upon Shih’s
disclosure of optical barrier 30, shown in Figure 4G above. Pet. 26–27
(citing Ex. 1004, 3:12–22). Shih states that optical barrier 30 serves to
prevent any light from entering cladding 22. Ex. 1004, 3:12–13.
Furthermore, optical barrier 30 provides opening 35 to allow light to be
transmitted from core 21 in the forward direction. Id. at 3:18–19. As
discussed above, we construe a mask as “a material that blocks the passage
of at least selected photons.” We are persuaded that Petitioner sufficiently
demonstrates that optical barrier 30 in Shih provides a material that blocks
the passage of at least selected photons.
With respect to the claimed “thin-film filter” limitation, Petitioner
contends that Shih discloses the application of an antireflection coating, such
as layers of TiO2 and SiO2 or ZrO2 and SiO2, to optical barrier 30 and end
surface 34 of input fiber 20, as shown in Figure 4G above. Pet. 23–24
(citing Ex. 1004, 4:40–50). Petitioner argues that a person of ordinary skill
in the art would understand that an antireflection coating, such as layers of
titania and silica, is a thin-film filter. Pet. 25 (citing Ex. 1003 ¶ 76). To
support its contention, Petitioner relies upon testimony from Dr. Tomlinson
that “[i]t is my opinion that a person of ordinary skill in the relevant art
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would understand that the antireflection (AR) coating, as described and
illustrated in Shih, is a multilayer thin film filter.” Ex. 1003 ¶ 77.
Patent Owner offers only attorney argument, not evidence, in rebuttal
to Dr. Tomlinson’s Declaration testimony that one of ordinary skill would
understand Shih’s antireflection coating to be a “thin-film filter.” PO
Resp. 3–6. Patent Owner argues that Dr. Tomlinson’s statement is entitled
to little or no weight because it does not explain the “how,” “what,” and
“why” of Dr. Tomlinson’s opinion and does not explain how a person or
ordinary skill in the art would recognize that Shih would suggest the subject
claim. PO Resp. 3–4. Contrary to Patent Owner’s argument, Dr. Tomlinson
provides, as the basis for his opinion, certain statements recited in Shih. See
Ex. 1003 ¶¶ 76–77. As noted by Dr. Tomlinson, the cited portions of Shih
state that “‘[t]hese antireflection coatings and the techniques for applying
them have long been practiced in the optics field.’” Ex. 1003 ¶ 76 (quoting
Ex. 1004, 4:44–46 (emphasis added). Furthermore, Dr. Tomlinson relies
upon the statement in Shih that the “‘antireflection coatings enhance the
transmission of light in the forward direction through the input fiber 20.” Id.
(quoting Ex. 1004, 4:45–46). Accordingly, Dr. Tomlinson concludes that a
person of ordinary skill in the art would understand that the antireflection
coating described in Shih is a “thin-film filter.” Id. at ¶ 77.
“To determine whether there was an apparent reason to combine the
known elements in the way a patent claims, it will often be necessary to
look . . . [at] the background knowledge possessed by a person having
ordinary skill in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401
(2007). Petitioner argues that thin-film filters were well known in the art.
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Pet. 25 (citing Ex. 1003 ¶ 45). As discussed above, we construe “thin-film
filter,” to mean “a filter comprised of stacked layers for filtering light.” Shih
discloses that antireflection coatings are comprised of “layers of TiO2 and
SiO2” and that “[t]he antireflection coatings enhance the transmission of
light in the forward direction through the input fiber 20.” Ex. 1004, 4:42–
48. Thus, we are persuaded that Petitioner has presented sufficiently an
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)) (internal quotation marks omitted).
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claim 30 would have
been obvious in view of Shih.

III. CONCLUSION
Petitioner has shown by a preponderance of the evidence that: (1)
claim 30 of the ’953 patent is anticipated by Nicholson, (2) claim 30 of the
’953 patent is anticipated by Yokoyama, and (3) claim 30 of the ’953 patent
would have been obvious in view of Shih.

IV. ORDER
For the reasons given, it is
ORDERED that, based on Petitioner’s showing by a
preponderance of the evidence, claim 30 of the of the ’953 patent is
unpatentable; and
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FURTHER ORDERED that this is a final written decision and
that 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.

PETITIONER:

D. Joseph English
John M. Baird
DUANE MORRIS LLP
djenglish@duanemorris.com
jmbaird@duanemorris.com

PATENT OWNER:

Tarek N. Fahmi
ASCENDA LAW GROUP, PC
Tarek.fahmi@ascendalaw.com