Capella Photonics, Inc. v. Infinera Corporation et al

Filing 99

CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER. Signed by Magistrate Judge Roy S. Payne on 2/9/2021. (ch, )

Case 2:20-cv-00077-JRG Document 99 Filed 02/09/21 Page 1 of 66 PageID #: 6246

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
CAPELLA PHOTONICS, INC.,
Plaintiff,
v.
Case No. 2:20-cv-00076-JRG
FUJITSU NETWORK COMMUNICATIONS,
INC.,
Defendant.
CAPELLA PHOTONICS, INC.,
Plaintiff,
v.

Case No. 2:20-cv-00077-JRG

INFINERA CORPORATION, TELLABS, INC.,
TELLABS OPERATIONS INC., CORIANT
AMERICA INC., AND CORIANT (USA) INC.,
Defendants.
CLAIM CONSTRUCTION MEMORANDUM OPINION AND ORDER
This Order addresses the claim-construction disputes presented by the parties in Case No.
2:20-cv-00076-JRG (the “’076 Case”) and Case No. 2:20-cv-00077-JRG (the “’077 Case”). Before
the Court are the opening claim construction briefs of Capella Photonics, Inc. (“Plaintiff”) (’076
Case Dkt. No. 56 and ’077 Case Dkt. No. 72, respectively filed on December 8 and 9, 2020), 1 the
responses of Fujitsu Network Communications, Inc., Infinera Corporation, Tellabs, Inc., Tellabs
Operations Inc., Coriant America Inc., and Coriant (USA) Inc. (collectively “Defendants”) (’076
Case Dkt. No. 62 and ’077 Case Dkt. No. 80, both filed on December 22, 2020), and Plaintiff’s

1

Citations to the parties’ filings are to the filing’s number in the docket (Dkt. No.) and pin cites
are to the page numbers assigned through ECF. Substantially the same briefs and exhibits were
submitted in both cases. For simplicity, the Court cites only the ’077 Case submissions.
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replies (’076 Case Dkt. No. 64 and ’077 Case Dkt. No. 83, both filed on January 4, 2021). The
Court held a hearing on the issues of claim construction and claim definiteness on January 22,
2021. Having considered the arguments and evidence presented by the parties at the hearing and
in their briefing, the Court issues this Order.

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Table of Contents
I.

BACKGROUND ............................................................................................................... 4

II.

LEGAL PRINCIPLES ..................................................................................................... 9
A.
B.

Departing from the Ordinary Meaning of a Claim Term ...................................... 11

C.

Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA) / § 112(f) (AIA) ......... 12

D.
III.

Claim Construction ................................................................................................. 9

Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA) ................. 14

CONSTRUCTION OF DISPUTED TERMS ............................................................... 16
A.
B.

“beam-deflecting element(s)” ............................................................................... 26

C.

“. . . controllable” and “controlling . . .” ............................................................... 34

D.

“. . . continuously controllable,” “controlling . . . continuously . . .,” and
“continuously controlling . . .” .............................................................................. 37

E.

“said [beam-deflecting] elements being . . . controllable in two
dimensions” and “controlling . . . said beam-deflecting elements in two
dimensions”........................................................................................................... 42

F.

“a control unit for controlling each of said beam-deflecting elements” ............... 46

G.

“a processing unit . . . for . . .” .............................................................................. 49

H.

“a power-management system configured to manage power levels of at
least one of the first spectral channels and the second spectral channels” ........... 52

I.

“a servo-control assembly . . . for . . .” ................................................................. 54

J.

“channel micromirrors,” “mirror[s],” “micromirror[s],” and
“micromachined mirror[s]” ................................................................................... 57

K.

“corresponding” .................................................................................................... 61

L.
IV.

“port(s)” and “fiber collimators . . . providing . . . port(s)” .................................. 16

“. . . individually . . . controllable,” “. . . individually pivotable” ......................... 63

CONCLUSION ............................................................................................................... 65

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I.

BACKGROUND
Plaintiff alleges infringement of two U.S. Patents: No. RE47,905 (the “’905 Patent”) and No.

RE47,906 (the “’906 Patent”) (collectively, the “Asserted Patents”). The ’905 and ’906 Patents are
related through continuation applications and share a substantially identical specification, outside
the claim set. 2 Each patent lists an earliest priority date of March 19, 2001.
Each of the patents has been subject to a series of Inter Partes Reviews (IPR) and Reissue
proceedings. U.S. Patent No. RE42,368 (the parent of the ’905 Patent) was the subject of at least
six IPR proceedings: IPR2014-01166, IPR2015-00816, IPR2015-00726, IPR2015-01958,
IPR2015-00731, and IPR2015-01969. Claims 1–6, 9–13, and 15–22 were cancelled because of
these proceedings. U.S. Patent No. RE42,678 (the parent of the ’906 Patent) was the subject of at
least six IPR proceedings: IPR2014-01276, IPR2015-00894, IPR2015-00727, IPR2015-01961,
IPR2015-00739, IPR2015-01971. Claims 1–4, 9, 10, 13, 17, 19–23, 27, 29, 44–46, 53, and 61–65
were cancelled because of these proceedings. In all IPR proceedings, the Broadest Reasonable
Interpretation claim-construction standard applied. The IPR decisions were summarily affirmed
by the Federal Circuit. Capella Photonics, Inc. v. Cisco Sys., 711 F. App’x 642, 643 (Fed. Cir.
2018), cert. denied 139 S. Ct. 462 (2018). The IPR invalidity rulings were addressed in Reissue
proceedings. The ’905 Patent is a reissue of U.S. Patent No. RE42,368 (which is a reissue of U.S.
Patent No. 6,879,750 which is a continuation of U.S. Patent No. 6,687,431 which is a continuation
of U.S. Patent No. 6,625,346). The ’906 Patent is a reissue of U.S. Patent No. RE42,678 (which is
a reissue of U.S. Patent No. RE39,397 which is a reissue of U.S. Patent No. 6,625,346).

2

For simplicity, the Court cites the ’905 Patent with the understanding that the cited material is
also in the ’906 Patent.
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In general, the Asserted Patents are directed to technology for wavelength-division
multiplexing (WDM) in optical communication systems. The technology can be generally
understood with reference to Figure 2A of the patents, reproduced and annotated below. An
exemplary wavelength-separating-routing (WSR) apparatus includes an input port (110-1), a
number of output ports (110-2 – 110-N), a one-dimensional array of collimator-alignment mirrors
that correspond to the ports (array 220, mirrors 220-1 – 220-N), a wavelength-separating
diffraction grating (101), a quarter-wave plate (104), a beam-focusing lens (102), and an array of
channel micromirrors (103). An optical signal (in blue) enters through the input port, reflects off
the collimator-alignment mirror (220-1) that corresponds to the input port, and is incident upon
the diffraction grating. The diffraction grating spatially separates the optical signal into various
wavelengths (in red, green, violet), each forming a spectral channel. The various spectral channels
are separately focused (via the beam-focusing lens) on the array of channel micromirrors such that
each channel micromirror receives one of the spectral channels. Each separated spectral channel
is reflected back through the lens, diffraction grating, and a collimator-alignment mirror and out
through the corresponding output port. ’905 Patent col.6 l.59 – col.7 l.29, col.9 l.57 – col.10 l.10.

5

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The exemplary array of channel micromirrors (103) is further described with respect to Figure
1B, reproduced and annotated below. As depicted, the reflective surface of each channel
micromirror lies in an x-y plane and the micromirrors are arranged such that each micromirror
receives one of the focused, spatially separated, spectral channels (in red, green, violet). The
micromirrors are movable such that the spectral channels reflected off the micromirrors may be
directed to one of the output ports. For example, the micromirrors may be independently pivotable
about the x-axis, enabling controlled deflection of the corresponding spectral channel in the y-axis.
Id. at col.8 ll.22–37.

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The abstracts of the Asserted Patents are almost identical. The ’905 Patent’s abstract provides
(emphasis added):
This invention provides a novel wavelength-separating-routing (WSR) apparatus
that uses a diffraction grating to separate a multi-wavelength optical signal by
wavelength into multiple spectral channels, which are then focused onto an array
of corresponding channel micromirrors. The channel micromirrors are individually
controllable and continuously pivotable to reflect the spectral channels into selected
output ports. As such, the inventive WSR apparatus is capable of routing the
spectral channels on a channel-by-channel basis and coupling any spectral channel
into any one of the output ports. The WSR apparatus of the present invention may
be further equipped with servo-control and spectral power-management
capabilities, thereby maintaining the coupling efficiencies of the spectral channels
into the output ports at desired values. The WSR apparatus of the present invention
can be used to construct a novel class of dynamically reconfigurable optical adddrop multiplexers (OADMs) for WDM optical networking applications.
The ’906 Patent’s abstract differs only in that the first reference to “channels” in the ’905 Patent’s
abstract (emphasized above) is replaced with “characters.”
Claim 1 of the ’905 Patent, an exemplary apparatus claim cancelled as a result of the IPR
proceedings, recites as follows:
1. An optical add-drop apparatus comprising
an input port for an input multi-wavelength optical signal having first spectral
channels;
one or more other ports for second spectral channels;
an output port for an output multi-wavelength optical signal;
a wavelength-selective device for spatially separating said spectral channels;
a spatial array of beam-deflecting elements positioned such that each element
receives a corresponding one of said spectral channels, each of said elements
being individually and continuously controllable in two dimensions to
reflect its corresponding spectral channel to a selected one of said ports and
to control the power of the spectral channel reflected to said selected port.
’905 Patent col.14 ll.29–43 (original emphasis omitted; bold-italic emphasis added to denote terms
in dispute). Claim 23 of the ’905 Patent, which was added in the reissue of the ’905 Patent, recites
as follows:
23. An optical add-drop apparatus comprising an output port and fiber
collimators serving as an input port and one or more other ports, the apparatus
comprising:
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the fiber collimator input port for an input multi-wavelength optical signal
having first spectral channels;
the fiber collimator one or more other ports for second spectral channels;
the output port for an output multi-wavelength optical signal;
a wavelength-selective device for spatially separating said spectral channels;
a spatial array of beam-deflecting elements positioned such that each element
receives a corresponding one of said spectral channels, each of said elements
being individually and continuously controllable in two dimensions to
reflect its corresponding spectral channel to a selected one of said output port
or the fiber collimator ports and to control the power of the spectral channel
reflected to said output port or the fiber collimator selected port.
Id. at col.16 ll.38–58 (original emphasis omitted; bold-italic emphasis added to denote terms in
dispute).
The parties dispute whether there is a substantial difference in claim scope between IPRcancelled Claim 1 and reissued Claim 23. Plaintiff maintains that the ports of cancelled Claim 1
are inherently fiber-collimator ports, that the PTAB’s conclusion to the contrary is wrong and in
any event based on a different claim-construction standard than applies in litigation, and that there
is no meaningful difference in scope between Claims 1 and 23 when properly construed under the
litigation claim-construction standard (thus avoiding intervening rights for Defendants’ actions
before issue of the ’905 Patent). Defendants maintain that the ports of IPR-cancelled Claim 1 are
not limited to fiber-collimator ports, that Plaintiff is collaterally estopped from challenging the
PTAB’s broader construction of “port,” and that there is a substantial difference in scope between
Claims 1 and 23 (thus triggering intervening rights for Defendants’ actions before issue of the ’905
Patent). The parties present a similar dispute regarding the ’906 Patent. See the parties briefing on
Defendants’ motions under Fed. R. Civ. P. 12(c): ’076 Case Dkt. Nos. 57, 63, 65, and 70; and ’077
Case Dkt. Nos. 74, 81, 87, and 91.

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II.

LEGAL PRINCIPLES
A.

Claim Construction

“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to
which the patentee is entitled the right to exclude.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312
(Fed. Cir. 2005) (en banc) (quoting Innova/Pure Water Inc. v. Safari Water Filtration Sys., Inc.,
381 F.3d 1111, 1115 (Fed. Cir. 2004)). To determine the meaning of the claims, courts start by
considering the intrinsic evidence. Id. at 1313; C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d
858, 861 (Fed. Cir. 2004); Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d
1258, 1267 (Fed. Cir. 2001). The intrinsic evidence includes the claims themselves, the
specification, and the prosecution history. Phillips, 415 F.3d at 1314; C.R. Bard, Inc., 388 F.3d at
861. The general rule—subject to certain specific exceptions discussed infra—is that each claim
term is construed according to its ordinary and accustomed meaning as understood by one of
ordinary skill in the art at the time of the invention in the context of the patent. Phillips, 415 F.3d
at 1312–13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003); Azure
Networks, LLC v. CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014) (“There is a heavy presumption
that claim terms carry their accustomed meaning in the relevant community at the relevant time.”)
(vacated on other grounds).
“The claim construction inquiry . . . begins and ends in all cases with the actual words of the
claim.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998). “[I]n
all aspects of claim construction, ‘the name of the game is the claim.’” Apple Inc. v. Motorola,
Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014) (quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.
Cir. 1998)). First, a term’s context in the asserted claim can be instructive. Phillips, 415 F.3d at
1314. Other asserted or unasserted claims can also aid in determining the claim’s meaning, because
claim terms are typically used consistently throughout the patent. Id. Differences among the claim
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terms can also assist in understanding a term’s meaning. Id. For example, when a dependent claim
adds a limitation to an independent claim, it is presumed that the independent claim does not
include the limitation. Id. at 1314–15.
“[C]laims ‘must be read in view of the specification, of which they are a part.’” Id. (quoting
Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)). “[T]he
specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive;
it is the single best guide to the meaning of a disputed term.’” Id. (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); Teleflex, Inc. v. Ficosa N. Am. Corp.,
299 F.3d 1313, 1325 (Fed. Cir. 2002). But, “‘[a]lthough the specification may aid the court in
interpreting the meaning of disputed claim language, particular embodiments and examples
appearing in the specification will not generally be read into the claims.’” Comark Commc’ns, Inc.
v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced MicroDevices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)); see also Phillips, 415 F.3d at 1323. “[I]t is
improper to read limitations from a preferred embodiment described in the specification—even if
it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the
patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 913 (Fed. Cir. 2004).
The prosecution history is another tool to supply the proper context for claim construction
because, like the specification, the prosecution history provides evidence of how the U.S. Patent
and Trademark Office (“PTO”) and the inventor understood the patent. Phillips, 415 F.3d at 1317.
However, “because the prosecution history represents an ongoing negotiation between the PTO
and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the
specification and thus is less useful for claim construction purposes.” Id. at 1318; see also Athletic

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Alternatives, Inc. v. Prince Mfg., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (ambiguous prosecution
history may be “unhelpful as an interpretive resource”).
Although extrinsic evidence can also be useful, it is “‘less significant than the intrinsic record
in determining the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317
(quoting C.R. Bard, Inc., 388 F.3d at 862). Technical dictionaries and treatises may help a court
understand the underlying technology and the manner in which one skilled in the art might use
claim terms, but technical dictionaries and treatises may provide definitions that are too broad or
may not be indicative of how the term is used in the patent. Id. at 1318. Similarly, expert testimony
may aid a court in understanding the underlying technology and determining the meaning of a term
in the pertinent field, but an expert’s conclusory, unsupported assertions as to a term’s definition
are not helpful to a court. Id. Extrinsic evidence is “less reliable than the patent and its prosecution
history in determining how to read claim terms.” Id. The Supreme Court has explained the role of
extrinsic evidence in claim construction:
In some cases, however, the district court will need to look beyond the patent’s
intrinsic evidence and to consult extrinsic evidence in order to understand, for
example, the background science or the meaning of a term in the relevant art during
the relevant time period. See, e.g., Seymour v. Osborne, 11 Wall. 516, 546 (1871)
(a patent may be “so interspersed with technical terms and terms of art that the
testimony of scientific witnesses is indispensable to a correct understanding of its
meaning”). In cases where those subsidiary facts are in dispute, courts will need to
make subsidiary factual findings about that extrinsic evidence. These are the
“evidentiary underpinnings” of claim construction that we discussed in Markman,
and this subsidiary factfinding must be reviewed for clear error on appeal.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331–32 (2015).
B.

Departing from the Ordinary Meaning of a Claim Term

There are “only two exceptions to [the] general rule” that claim terms are construed according
to their plain and ordinary meaning: “1) when a patentee sets out a definition and acts as his own
lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the
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specification or during prosecution.” 3 Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365
(Fed. Cir. 2014) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed.
Cir. 2012)); see also GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir.
2014) (“[T]he specification and prosecution history only compel departure from the plain meaning
in two instances: lexicography and disavowal.”). The standards for finding lexicography or
disavowal are “exacting.” GE Lighting Solutions, 750 F.3d at 1309.
To act as his own lexicographer, the patentee must “clearly set forth a definition of the
disputed claim term,” and “clearly express an intent to define the term.” Id. (quoting Thorner, 669
F.3d at 1365); see also Renishaw, 158 F.3d at 1249. The patentee’s lexicography must appear
“with reasonable clarity, deliberateness, and precision.” Renishaw, 158 F.3d at 1249.
To disavow or disclaim the full scope of a claim term, the patentee’s statements in the
specification or prosecution history must amount to a “clear and unmistakable” surrender. Cordis
Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1329 (Fed. Cir. 2009); see also Thorner, 669 F.3d at
1366 (“The patentee may demonstrate intent to deviate from the ordinary and accustomed meaning
of a claim term by including in the specification expressions of manifest exclusion or restriction,
representing a clear disavowal of claim scope.”). “Where an applicant’s statements are amenable
to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 3M
Innovative Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013).
C.

Functional Claiming and 35 U.S.C. § 112, ¶ 6 (pre-AIA) / § 112(f) (AIA)

A patent claim may be expressed using functional language. See 35 U.S.C. § 112, ¶ 6;
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347–49 & n.3 (Fed. Cir. 2015) (en banc in

3

Some cases have characterized other principles of claim construction as “exceptions” to the
general rule, such as the statutory requirement that a means-plus-function term is construed to
cover the corresponding structure disclosed in the specification. See, e.g., CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1367 (Fed. Cir. 2002).
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relevant portion). Section 112, Paragraph 6, provides that a structure may be claimed as a “means
. . . for performing a specified function” and that an act may be claimed as a “step for performing
a specified function.” Masco Corp. v. United States, 303 F.3d 1316, 1326 (Fed. Cir. 2002).
But § 112, ¶ 6 does not apply to all functional claim language. There is a rebuttable
presumption that § 112, ¶ 6 applies when the claim language includes “means” or “step for” terms,
and that it does not apply in the absence of those terms. Masco Corp., 303 F.3d at 1326;
Williamson, 792 F.3d at 1348. The presumption stands or falls according to whether one of
ordinary skill in the art would understand the claim with the functional language, in the context of
the entire specification, to denote sufficiently definite structure or acts for performing the function.
See Media Rights Techs., Inc. v. Capital One Fin. Corp., 800 F.3d 1366, 1372 (Fed. Cir. 2015)
(§ 112, ¶ 6 does not apply when “the claim language, read in light of the specification, recites
sufficiently definite structure” (quotation marks omitted) (citing Williamson, 792 F.3d at 1349;
Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014))); Williamson, 792 F.3d
at 1349 (§ 112, ¶ 6 does not apply when “the words of the claim are understood by persons of
ordinary skill in the art to have sufficiently definite meaning as the name for structure”); Masco
Corp., 303 F.3d at 1326 (§ 112, ¶ 6 does not apply when the claim includes an “act” corresponding
to “how the function is performed”); Personalized Media Communications, L.L.C. v. International
Trade Commission, 161 F.3d 696, 704 (Fed. Cir. 1998) (§ 112, ¶ 6 does not apply when the claim
includes “sufficient structure, material, or acts within the claim itself to perform entirely the recited
function . . . even if the claim uses the term ‘means.’” (quotation marks and citation omitted)).
When it applies, § 112, ¶ 6 limits the scope of the functional term “to only the structure,
materials, or acts described in the specification as corresponding to the claimed function and
equivalents thereof.” Williamson, 792 F.3d at 1347. Construing a means-plus-function limitation

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involves multiple steps. “The first step . . . is a determination of the function of the means-plusfunction limitation.” Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311
(Fed. Cir. 2001). “[T]he next step is to determine the corresponding structure disclosed in the
specification and equivalents thereof.” Id. A “structure disclosed in the specification is
‘corresponding’ structure only if the specification or prosecution history clearly links or associates
that structure to the function recited in the claim.” Id. The focus of the “corresponding structure”
inquiry is not merely whether a structure is capable of performing the recited function, but rather
whether the corresponding structure is “clearly linked or associated with the [recited] function.”
Id. The corresponding structure “must include all structure that actually performs the recited
function.” Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed.
Cir. 2005). However, § 112 does not permit “incorporation of structure from the written
description beyond that necessary to perform the claimed function.” Micro Chem., Inc. v. Great
Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
For § 112, ¶ 6 limitations implemented by a programmed general-purpose computer or
microprocessor, the corresponding structure described in the patent specification must include an
algorithm for performing the function. WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339,
1349 (Fed. Cir. 1999). The corresponding structure is not a general-purpose computer but rather
the special purpose computer programmed to perform the disclosed algorithm. Aristocrat Techs.
Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
D.

Definiteness Under 35 U.S.C. § 112, ¶ 2 (pre-AIA) / § 112(b) (AIA)

Patent claims must particularly point out and distinctly claim the subject matter regarded as
the invention. 35 U.S.C. § 112, ¶ 2. A claim, when viewed in light of the intrinsic evidence, must
“inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus
Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). If it does not, the claim fails § 112, ¶ 2
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and is therefore invalid as indefinite. Id. at 901. Whether a claim is indefinite is determined from
the perspective of one of ordinary skill in the art as of the time the application for the patent was
filed. Id. at 911. As it is a challenge to the validity of a patent, the failure of any claim in suit to
comply with § 112 must be shown by clear and convincing evidence. BASF Corp. v. Johnson
Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). “[I]ndefiniteness is a question of law and in
effect part of claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed.
Cir. 2012).
When a term of degree is used in a claim, “the court must determine whether the patent
provides some standard for measuring that degree.” Biosig Instruments, Inc. v. Nautilus, Inc., 783
F.3d 1374, 1378 (Fed. Cir. 2015) (quotation marks omitted). Likewise, when a subjective term is
used in a claim, “the court must determine whether the patent’s specification supplies some
standard for measuring the scope of the [term].” Datamize, LLC v. Plumtree Software, Inc., 417
F.3d 1342, 1351 (Fed. Cir. 2005). The standard “must provide objective boundaries for those of
skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).
In the context of a claim governed by 35 U.S.C. § 112, ¶ 6, the claim is invalid as indefinite
if the claim fails to disclose adequate corresponding structure to perform the claimed function.
Williamson, 792 F.3d at 1351–52. The disclosure is inadequate when one of ordinary skill in the
art “would be unable to recognize the structure in the specification and associate it with the
corresponding function in the claim.” Id. at 1352.

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III.

CONSTRUCTION OF DISPUTED TERMS
A.

“port(s)” and “fiber collimators . . . providing . . . port(s)”

Disputed Term 4
“port(s)”
•
•

Defendants’ Proposed
Construction
plain and ordinary meaning

fiber collimators providing
and serving as port(s)

plain and ordinary meaning

’905 Patent Claims 1, 15,
16, 19, 23, 47, 49, 51
’906 Patent Claims 61,
115, 133

“fiber collimators . . .
providing . . . port(s)”
•

Plaintiff’s Proposed
Construction
fiber collimator port(s)

’906 Patent Claims 1, 21,
31, 37, 44, 68, 89, 100,
115
Because the parties’ arguments and proposed constructions with respect to these terms are

related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits: The “ports” of the claims are limited to fiber-collimator ports and do not
encompass “the openings on ‘circulators.’” This nature of the claimed ports is specified as a feature
of the “present invention” of the ’905 and ’906 Patents (citing ’905 Patent col.3 l.66 – col.4 l.2).
And in all the described embodiments in the patents, “fiber collimators serve as the physical
structure of the claimed ports.” The only discussion of circulators in the patents is in the
background section, which disparages circulators and structurally distinguishes circulators from
the ports to which they may be coupled. Finally, Plaintiff reiterated in Inter Partes Reviews of
patents’ parents that the claimed ports are fiber-collimator ports. Dkt. No. 72 at 8–15. 5

4

For all term charts in this order, the Court includes the highest-level claims of each dependency
chain that include the term and that is identified by the parties in their Patent Rule 4-5(d) Joint
Claim Construction Chart (Dkt. No. 90).
5
All docket citations in the Construction of Disputed Terms section are to the ’077 Case.
16

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In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’905 figs.1A, 1D, col.2 ll.44–45, col.2 ll.48–
49, col.2 l.59, col.3 ll.2–5, col.3 ll.13–32, col.3 l.66 – col.4 l.2, col.4 ll.37–38, col.7 ll.4–7, col.8
ll.36–37, col.9 ll.20–21, col.9 ll.38–39, col.10 ll.32–33, col.10 ll.39–40, col.10 ll.49–52, col.11
ll.5–7; POR IPR2014-01166 6 at 2, 6–7, 31–32 (Plaintiff’s Ex. 13, Dkt. No. 72-19 at 10, 14–15,
39–40); Appeal Brief 7 at 12–13 (Plaintiff’s Ex. 15, Dkt. No. 72-21 at 22–23). Extrinsic evidence:
Merriam-Webster Dictionary Online, “provide” 8 (Plaintiff’s Ex. 5, Dkt. No. 72-11); Sergienko
Dep. 9 at 67:12 – 68:21 (Plaintiff’s Ex. 14, Dkt. No. 72-20 at 4–8); Sergienko Decl. 10 ¶¶ 158, 167–
68 (Dkt. No. 72-1).
Defendants respond: The term “port” in the ’905 and ’906 Patents is used according to its
ordinary meaning (a “point of entry or exit of light”), which is not limited to a fiber-collimator
port and plainly encompasses circulator ports. Similarly, a fiber collimator “providing” a port is
broader than a fiber collimator “providing and serving as” a port. The claims specify where a port
is limited to a fiber-collimator port and otherwise allow that a port is not so limited. Indeed, in
Inter Partes Review of the ’905 and ’906 Patents’ parents, the PTAB expressly rejected: (1) that
“port” in the claims is limited to a fiber-collimator port and (2) that a fiber collimator “providing”
a port is limited to a fiber collimator serving as a port. The PTAB further held that “port” plainly
encompasses circulator ports, and subsequently held claims invalid. These rulings were affirmed

6

Patent Owner Response to the Petition, Cisco Systems, Inc. v. Capella Photonics, Inc.,
IPR2014-01166 (Patent No. RE42,368) (P.T.A.B. May 7, 2015), paper 19.
7
Principal Brief for Appellant, Capella Photonics, Inc. v. Cisco Systems, Inc. et al., Nos. 20162394, 2016-2395, 2017-1105, 2017-1106, 2017-1107, 2017-1108 (Fed. Cir. Feb. 13, 2017), Dkt.
No. 48.
8
https://www.merriam-webster.com/dictionary/provide#
9
Remote Videoconferenced Videotaped Deposition of Dr. Alexander Sergienko (Nov. 18,
2020).
10
Declaration of Alexander Sergienko (Nov. 6, 2020).
17

Case 2:20-cv-00077-JRG Document 99 Filed 02/09/21 Page 18 of 66 PageID #: 6263

by the Federal Circuit. In subsequent reissue proceedings, claims were modified or added to
specify that some, but not all, claimed ports were fiber-collimator ports. The surrendered patents
then reissued as the ’905 and ’906 Patents. Dkt. No. 80 at 8–19.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’905 Patent, at [57] Abstract, fig.1A, col.5
ll.54–61, col.7 ll.1–10, col.11 ll.25–38, col.11 l.57 – col.12 l.11, col.12 l.62 – col.13 l.3, col.13
ll.40–53; ’906 Patent col.1 ll.34–36; ’905 Patent File Wrapper 11 June 29, 2018 Reissue Application
Declaration by the Assignee (Defendants’ Ex. K, Dkt. No. 80-12 at 28), March 25, 2019
Preliminary Amendment at Appendix (Defendants’ Ex. K, Dkt. No. 80-12 at 7), June 26, 2019
Office Action at 5 (Defendants’ Ex. K, Dkt. No. 80-12 at 4), July 30, 2019 Response at 13
(Defendants’ Ex. K, Dkt. No. 80-12 at 2); ’906 Patent File Wrapper 12 June 29, 2018 Reissue
Application Declaration by the Assignee (Defendants’ Ex. L, Dkt. No. 80-13 at 37), March 25,
2019 Preliminary Amendment at 41 (Defendants’ Ex. L, Dkt. No. 80-13 at 9), June 26, 2019 Office
Action at 10 (Defendants’ Ex. L, Dkt. No. 80-13 at 6), July 30, 2019 Response at 29 (Defendants’

11

Defendants’ Exhibit K (Dkt. No. 80-12) is a variety of document segments that are ostensibly
from the ’905 Patent file wrapper. Dkt. No. 80-1 at ¶ 12. In many instances, the Court was
unable to ascertain the nature of the various documents from the exhibit because Defendants did
not submit sufficient portions of the documents. The Court’s characterization of the individual
documents in Exhibit K comes from the Court’s review of the file wrapper available on the
USPTO’s Public Patent Application Information Retrieval database, available at
https://portal.uspto.gov/pair/PublicPair, and on the USPTO’s Patent Center database, available at
https://patentcenter.uspto.gov/#!/.
12
Defendants’ Exhibit L (Dkt. No. 80-13) is a variety of document segments that are ostensibly
from the ’906 Patent file wrapper. Dkt. No. 80-1 at ¶ 13. In many instances, the Court was
unable to ascertain the nature of the various documents from the exhibit because Defendants did
not submit sufficient portions of the documents. The Court’s characterization of the individual
documents in Exhibit L comes from the Court’s review of the file wrapper available on the
USPTO’s Public Patent Application Information Retrieval database, available at
https://portal.uspto.gov/pair/PublicPair, and on the USPTO’s Patent Center database, available at
https://patentcenter.uspto.gov/#!/.
18

Case 2:20-cv-00077-JRG Document 99 Filed 02/09/21 Page 19 of 66 PageID #: 6264

Ex. L, Dkt. No. 80-13 at 3); U.S. Patent Application No. 60/277,217 at 3, fig.9 (Defendants’ Ex.
B, Dkt. No. 80-3 at 5, 8); Sergienko IPR Dep. 13 at 95:14–17 (Defendants’ Ex. Q, Dkt. No. 80-18
at 20); Final Written Decision IPR2014-01166 14 at 12–16, 26–28 (Defendants’ Ex. E, Dkt. No.
80-6 at 13–17, 27–29); Final Written Decision IPR2014-01276 15 at 12–16, 27–28 (Defendants’
Ex. F, Dkt. No. 80-7 at 13–17, 28–29). Extrinsic evidence: Willner Decl. 16 ¶¶ 126–50 (Dkt. No.
80-41); Willner Decl. Ex. C (Dkt. No. 80-44); Willner Decl. Ex. D (Dkt. No. 80-45); Sergienko
Dep. at 64:7–16, 79:20 – 80:19, 91:18 – 92:1, 92:17 – 93:11, 94:1–5, 96:3–14, 103:21 – 104:10,
114:14 – 117:1 (Defendants’ Ex. R, Dkt. No. 80-19 at 5–11, 13–15, 19–22); Wilde Dep. 17 at 44:5
– 45:11 (Defendants’ Ex. T, Dkt. No. 80-21 at 7–8).
Plaintiff replies: The PTAB’s IPR rulings that the ports of the claims are not limited to fibercollimator ports were based on the Broadest Reasonable Interpretation claim-construction standard
rather than the litigation standard that governs here. During the Reissue proceedings, the claims
were amended “merely to clarify that claims from the original [RE42,368] and [RE42,678] patents
were limited to fiber collimators providing and serving as input and output ‘ports.’” “The edits to
the claims make this clear, but do not change the scope of the claims under Phillips.” In fact, in
seeking reissue of the RE42,368 and RE42,768 patents, Plaintiff declared to the USPTO that the
claims were being amended to express limitations that are implied under the Phillips claimconstruction standard. Dkt. No. 83 at 4–10.

13

Videotaped Deposition of Alexander V. Sergienko, Cisco Systems, Inc. v. Capella Photonics,
Inc., IPR2014-01166 (Patent No. RE42,368) (P.T.A.B. June 30, 2015), exhibit 1039.
14
Final Written Decision, Cisco Systems, Inc. et al. v. Capella Photonics, Inc., IPR2014-01166
(Patent No. RE42,368) (P.T.A.B. Jan. 28, 2016), paper 44.
15
Final Written Decision, Cisco Systems, Inc. et al. v. Capella Photonics, Inc., IPR2014-01276
(Patent No. RE42,678) (P.T.A.B. Feb. 17, 2016), paper 40.
16
Declaration of Dr. Alan Willner Regarding Claim Construction (Nov. 6., 2020).
17
Deposition of Jeffrey Wilde (Dec. 10, 2020) (Rough Draft, Uncertified Transcript).
19

Case 2:20-cv-00077-JRG Document 99 Filed 02/09/21 Page 20 of 66 PageID #: 6265

Plaintiff cites further intrinsic evidence to support its position: ’905 Patent figs. 2A–2B, 3–
4B, col. 3 l.63 – col.6 l.37, col.7 ll.1–10, col.8 ll.58–59, col.9 ll.34–40, col.9 ll.62–65, col.10 ll.52–
54, col.11 ll.28–30, col.11 ll.63–66, col.13 ll.44–47; ’905 Patent File Wrapper June 29, 2018
Reissue Application Declaration by the Assignee at 2 (Defendants’ Ex. K, Dkt. No. 80-12 at 29),
June 29, 2018 Preliminary Amendment at 11–15 (Defendants’ Ex. K, Dkt. No. 80-12 at 19–23),
June 26, 2019 Office Action at 6–7 (Defendants’ Ex. K, Dkt. No. 80-12 at 5–6). July 30, 2019
Response at 13–14 (Defendants’ Ex. K, Dkt. No. 80-12 at 2–3); ’906 Patent File Wrapper June 29,
2018 Reissue Application Declaration by the Assignee at 2 (Defendants’ Ex. L, Dkt. No. 80-13 at
38), June 29, 2018 Preliminary Amendment at 19–22 (Defendants’ Ex. L, Dkt. No. 80-13 at 29–
32), June 26, 2019 Office Action at 10–11 (Defendants’ Ex. L, Dkt. No. 80-13 at 6–7), July 30,
2019 Response at 28–29 (Defendants’ Ex. L, Dkt. No. 80-13 at 3); POR IPR2014-01166
(Plaintiff’s Ex. 13, Dkt. No. 72-19); POR IPR2014-01276 18 (Plaintiff’s Ex. 29, Dkt. No. 72-35);
POR IPR2015-00726 19 (Plaintiff’s Ex. 30, Dkt. No. 72-36); POR IPR2015-00727 20 (Plaintiff’s
Ex. 31, Dkt. No. 72-37); POR IPR2015-00731 21 (Plaintiff’s Ex. 32, Dkt. No. 72-38); POR
IPR2015-00739 22 (Plaintiff’s Ex. 33, Dkt. No. 72-39); POPR IPR2015-00816 23 (Plaintiff’s Ex. 34,

18

Patent Owner Response to the Petition, Cisco Systems, Inc. v. Capella Photonics, Inc.,
IPR2014-01276 (Patent No. RE42,678) (P.T.A.B. May 7, 2015), paper 15.
19
Patent Owner Response, Fujitsu Network Communications, Inc. v. Capella Photonics, Inc.,
IPR2015-00726 (Patent No. RE42,368) (P.T.A.B. Dec. 23, 2015), paper 22.
20
Patent Owner Response, Fujitsu Network Communications, Inc. v. Capella Photonics, Inc.,
IPR2015-00727 (Patent No. RE42,678) (P.T.A.B. Dec. 23, 2015), paper 20.
21
Patent Owner Response, JDS Uniphase Corp. v. Capella Photonics, Inc., IPR2015-00731
(Patent No. RE42,368) (P.T.A.B. Dec. 1, 2015), paper 17.
22
Patent Owner Response, JDS Uniphase Corp. v. Capella Photonics, Inc., IPR2015-00739
(Patent No. RE42,678) (P.T.A.B. Dec. 1, 2015), paper 16.
23
Patent Owner Preliminary Response, Ciena Corp. et al. v. Capella Photonics, Inc.,
IPR2015-00816 (Patent No. RE42,368) (P.T.A.B. June 18, 2015), paper 10.
20

Case 2:20-cv-00077-JRG Document 99 Filed 02/09/21 Page 21 of 66 PageID #: 6266

Dkt. No. 72-40); POPR IPR2015-00894 24 (Plaintiff’s Ex. 35, Dkt. No. 72-41); Final Written
Decision IPR2015-00726 25 (Defendants’ Ex. C, Dkt. No. 80-4); Final Written Decision IPR201500727 26 (Defendants’ Ex. D, Dkt. No. 80-5); Final Written Decision IPR2014-01166 (Defendants’
Ex. E, Dkt. No. 80-6); Final Written Decision IPR2014-01276 (Defendants’ Ex. F, Dkt. No. 80-7);
Final Written Decision IPR2015-00731 27 (Defendants’ Ex. G, Dkt. No. 80-8); Final Written
Decision IPR2015-00739 28 (Defendants’ Ex. H, Dkt. No. 80-9); Appeal Brief (Plaintiff’s Ex. 15,
Dkt. No. 72-21); Appeal Reply Brief 29 (Plaintiff’s Ex. 36, Dkt. No. 72-42).
Analysis
There are two issues in dispute. First, whether “port” in the Asserted Patents is limited to
“fiber collimator port.” It is not. Second, whether a fiber collimator “providing” a port means that
the port is necessarily a fiber collimator port. It does not.
The Court is not convinced that the “ports” of the invention described in the Asserted Patents
are necessarily fiber collimator ports. To begin, the evidence of record establishes that “port” has
a customary meaning that is not limited to fiber collimator ports. For example, Plaintiff’s expert
testified as follows:
Q. If we are talking about optical switching, what is the ordinary and customary
meaning of the word “port” to a person of ordinary skill?
24

Patent Owner Preliminary Response, Ciena Corp. et al. v. Capella Photonics, Inc.,
IPR2015-00894 (Patent No. RE42,678) (P.T.A.B. July 7, 2015), paper 10.
25
Final Written Decision, Fujitsu Network Communications, Inc. v. Capella Photonics, Inc.,
IPR2015-00726 (Patent No. RE42,368) (P.T.A.B. Sept. 28, 2016), paper 38.
26
Final Written Decision, Fujitsu Network Communications, Inc. v. Capella Photonics, Inc.,
IPR2015-00727 (Patent No. RE42,678) (P.T.A.B. Sept. 28, 2016), paper 16.
27
Final Written Decision, Lumentum Holdings Inc. et al. v. Capella Photonics, Inc.,
IPR2015-00731 (Patent No. RE42,368) (P.T.A.B. Sept. 29, 2016), paper 51.
28
Final Written Decision, Lumentum Holdings Inc. et al. v. Capella Photonics, Inc.,
IPR2015-00739 (Patent No. RE42,678) (P.T.A.B. Oct. 14, 2016), paper 50.
29
Reply Brief for Appellant, Capella Photonics, Inc. v. Cisco Systems, Inc. et al., Nos. 20162394, 2016-2395, 2017-1105, 2017-1106, 2017-1107, 2017-1108 (Fed. Cir. June 23, 2017), Dkt.
No. 61.
21

Case 2:20-cv-00077-JRG Document 99 Filed 02/09/21 Page 22 of 66 PageID #: 6267

A. The port is the entry or points of entry or exit from this particular device that
you are talking about. If it’s a switch, it’s entry of the switch or exit out of the
switch. That’s what port provides.
Sergienko Dep. at 64:7–16, Dkt. No. 80-19 at 5; see also, id. at 91:18 –92:1 (“Q. But the output
port does not have to be a fiber collimator; correct? A. . . . It will be a poor quality port. Q. . . . but
it would still be a port; correct? . . . A. For the output only.”), Dkt. No. 80-19 at 8–9; Willner Decl.
¶¶ 147–49 (citing various dictionary definitions), Dkt. No. 80-41. The fact that “port” as
customarily used in the art was not limited to “fiber collimator port” was recognized by the PTAB
during the IPR proceedings. See, e.g., Final Written Decision IPR2014-01166 at 12 (“There is no
dispute that the ordinary and customary meaning of ‘port’ encompasses circulator ports, and,
indeed, any ‘point of entry or exit of light.’ See Dr. Sergienko Deposition Transcript (Ex. 1039),
43:16-23 45:12-13 (‘The circulator ports are ports with constraints.’).”), Dkt. No. 80-6 at 13.
The intrinsic record does not rise to the exacting standard required to limit “port” to “fiber
collimator port.” Plaintiff heavily relies on the following passage from the Asserted Patents:
The present invention provides a wavelength-separating-routing (WSR) apparatus
and method which employ an array of fiber collimators serving as an input port and
a plurality of output ports; a wavelength-separator; a beam-focuser; and an array of
channel micromirrors.
’905 Patent col.3 l.66 – col.4 l.3. At first glance, this appears to suggest that the ports of the
invention are inherently fiber collimator ports. Other portions of the patents suggest otherwise,
however. For example, the patents explain that “the WSR apparatus 100 comprises multiple input/
output ports which may be in the form of an array of fiber collimators 110, providing an input
port 110-1 and a plurality of output ports.” Id. at col.7 ll.4–7 (emphasis added). Thus, one passage
states that the “present invention provides . . . an array of fiber collimators serving as an input port
and a plurality of output ports” while the other clarifies that providing the input and output ports
as an “array of fiber collimators” is optional. This suggests the “present invention” language should
22

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not be read to state an inherent property of the invention. Further, cancelled Claims 1, 7, and 8 of
the ’905 Patent provided:
1. An optical add-drop apparatus comprising
an input port for an input multi-wavelength optical signal having first spectral
channels;
one or more other ports for second spectral channels;
an output port for an output multi-wavelength optical signal;
a wavelength-selective device for spatially separating said spectral channels;
a spatial array of beam-deflecting elements positioned such that each element
receives a corresponding one of said spectral channels, each of said elements
being individually and continuously controllable in two dimensions to reflect
its corresponding spectral channel to a selected one of said ports and to
control the power of the spectral channel reflected to said selected port.
7. The optical add-drop apparatus of claim 1 further comprising alignment
mirrors for adjusting alignment of said input and output multi-wavelength
optical signals and said second spectral channels with said wavelength-selective
device.
8. The optical add-drop apparatus of claim 7 further comprising collimators
associated with said alignment mirrors, and imaging lenses in a telecentric
arrangement with said alignment mirrors and said collimators.
Id. at col.14 ll.29–43, col.14 l.66 – col.15 l.3 (emphasis added). This largely tracks the following
described embodiment:
The WSR apparatus of the present invention may further comprise an array of
collimator-alignment mirrors, in optical communication with the wavelengthseparator and the fiber collimators, for adjusting the alignment of the input multiwavelength signal and directing the spectral channels into the selected output ports
by way of angular control of the collimated beams. Each collimator-alignment
mirror may be rotatable about one or two axes. The collimator-alignment mirrors
may be arranged in a one-dimensional or two-dimensional array. First and second
arrays of imaging lenses may additionally be optically interposed between the
collimator-alignment mirrors and the fiber collimators in a telecentric
arrangement, thereby “imaging” the collimator-alignment mirrors onto the
corresponding fiber collimators to ensure an optimal alignment.
Id. at col.4 ll.42–56. This description is in the context of the earlier passage providing that “the
present invention provides . . . an array of fiber collimators serving as an input port and a plurality
of output ports.” Id. at col.4 ll.4 ll.1–2. Claim 8, read in light of the described embodiments, further

23

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suggests that the ports are not limited to collimators, else there would be no need to specify the
apparatus “further comprising” collimators in Claim 8.
The Reissue proceedings also suggest that the claimed ports are not necessarily fiber
collimator ports. Notably, Plaintiff modified some—but not all—claim-recited ports to specify that
they are fiber collimator ports. For example, Claim 23 of the ’905 Patent provides:
23. An optical add-drop apparatus comprising an output port and fiber
collimators serving as an input port and one or more other ports, the apparatus
comprising:
the fiber collimator input port for an input multi-wavelength optical signal
having first spectral channels;
the fiber collimator one or more other ports for second spectral channels;
the output port for an output multi-wavelength optical signal;
a wavelength-selective device for spatially separating said spectral channels;
a spatial array of beam-deflecting elements positioned such that each element
receives a corresponding one of said spectral channels, each of said elements
being individually and continuously controllable in two dimensions to reflect
its corresponding spectral channel to a selected one of said output port or the
fiber collimator ports and to control the power of the spectral channel
reflected to said output port or the fiber collimator selected port.
Id. at col.16 ll.38–58 (original emphasis omitted; emphasis added). The addition of “fiber
collimator” to the claims ostensibly was to express an implied limitation. ’905 Patent File Wrapper
June 29, 2018 Reissue Application Declaration by the Assignee at 2 (Dkt. No. 80-12 at 29). But if
the Patents’ provision that “[t]he present invention provides a wavelength-separating-routing
(WSR) apparatus and method which employ an array of fiber collimators serving as an input port
and a plurality of output ports” states that the input and output ports of the invention are necessarily
fiber collimator ports, then the “output port” of Claim 23 should also have been recited as a fiber
collimator port. The fact that it was not further suggests that the ports of the invention are not
necessarily fiber collimator ports. 30
30

At the hearing, Plaintiff advanced the position that the Asserted Patents defined “ports” as
fiber collimator ports for only the wavelength-separating-routing apparatus (WSR) aspect of the
invention. According to Plaintiff, other “ports” in the claims, such as the “output port” in ’905
24

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The Court is also not convinced that a fiber collimator “providing” a port necessitates that the
provided port is a fiber collimator port (i.e., that the fiber collimator serves as the port). Plaintiff
has not identified any intrinsic evidence that establishes “providing” should be narrowly
interpreted as “serving as.” Indeed, the Asserted Patents use “providing” according to its broad
plain meaning. See, e.g., ’905 Patent at col.11 ll.15–22 (“a WSR apparatus of the present invention
may incorporate a servo-control assembly, for providing dynamic control of the coupling of the
spectral channels into the respective output ports” (emphasis added)).
Ultimately, the “port” of the Patents’ invention is not clearly limited to a fiber collimator port,
even when provided by a fiber collimator, such that “fiber collimator . . . port” should be read into
claims where it is not specified.
Accordingly, the Court rejects Plaintiff’s position and determines that these terms have their
plain and ordinary meanings without the need for further construction.

Patent Claim 23, are not necessarily fiber collimator ports. As explained by the Court, the
Asserted Patents describe that forming the WSR input and output ports with an “array of fiber
collimators” is expressly optional and the collimators “further” provided by dependent Claim 8
naturally align with the WSR collimator ports of the exemplary embodiments. Thus, Plaintiff’s
hearing position that the patents allow that ports that are not WSR ports may not be fiber
collimator ports does not change the Court’s analysis and conclusion.
25

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B.

“beam-deflecting element(s)”

Disputed Term

Plaintiff’s Proposed
Construction

“beam-deflecting
element(s)”
•

’905 Patent Claim 23

Defendants’ Proposed Construction
35 U.S.C. § 112, ¶ 6 applies as follows:

Function:
• (1) “each element receives a
corresponding one of said spectral
channels”; (2) “each of said elements
Plain and ordinary
being individually and continuously
meaning. Capella
controllable in two dimensions”; (3)
specifically disagrees
each of said elements “reflect its
that construction under
corresponding spectral channel to a
35 U.S.C. §112(f)/¶6
selected one of said output port or the
is appropriate.
fiber collimator ports”; and (4) each
of said elements “control the power
Alternatively,
of the spectral channel reflected to
• deflective parts,
said output port or the fiber
including but not
collimator selected port.”
limited to mirrored
or reflective parts, Structure:
• Movable silicon micromachined
of a beam
mirrors, movable reflective ribbons,
deflector
or movable reflective membranes.
Alternatively,
• indefinite
Alternatively, if § 112, ¶ 6 does not
apply:
• movable reflective element(s) of a
beam deflector

26

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Disputed Term

Plaintiff’s Proposed
Construction

“beam-deflecting
element(s)”
•

Defendants’ Proposed Construction
35 U.S.C. § 112, ¶ 6 applies as follows:
Function:
• (1) “each element receives a
corresponding one of said spectral
channels”; (2) “each of said elements
being individually and continuously
controllable in two dimensions”; (3)
each of said elements “reflect its
corresponding spectral channel to a
selected one of said output port or the
fiber collimators serving as said
ports”; and (4) each of said elements
“control the power of the spectral
channel reflected to said output port
of the fiber collimator serving as said
selected port.” See ’905 Patent at
18:31-42.

’905 Patent Claim 47

Structure:
• Movable silicon micromachined
mirrors, movable reflective ribbons,
or movable reflective membranes.
Alternatively,
• indefinite
Alternatively, if § 112, ¶ 6 does not
apply:
• movable reflective element(s) of a
beam deflector

27

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Disputed Term

Plaintiff’s Proposed
Construction

“beam-deflecting
element(s)”
•

Defendants’ Proposed Construction
35 U.S.C. § 112, ¶ 6 applies as follows:
Function:
• (1) “each element receives a
corresponding one of said spectral
channels”; (2) “each of said elements
being individually and continuously
controllable in two dimensions”; (3)
each of said elements “reflect its
corresponding spectral channel to a
selected one of said output port or the
fiber collimator ports”; and (4) each
of said elements “control the power
of the spectral channel reflected to
said output port or said fiber
collimator serving as said selected
port.

’905 Patent Claim 49

Structure:
• Movable silicon micromachined
mirrors, movable reflective ribbons,
or movable reflective membranes.
Alternatively,
• indefinite
Alternatively, if § 112, ¶ 6 does not
apply:
• movable reflective element(s) of a
beam deflector

28

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Disputed Term

Plaintiff’s Proposed
Construction

“beam-deflecting
element(s)”
•

Defendants’ Proposed Construction
35 U.S.C. § 112, ¶ 6 applies as follows:
Function:
• (1) “imaging each of sad spectral
channels onto a corresponding beamdeflecting element”; (2) “controlling
dynamically and continuously said
beam-deflecting elements in two
dimensions so as to combine selected
ones of said spectral channels into an
output multi-wavelength optical
signal”; (3) “to control the power of
the spectral channels combined into
said output multiwavelength optical
signal”; and (4) controlling the beamdefecting elements “comprises
reflecting said non-selected ones of
said spectral channels to one or more
fiber collimator serving as drop
ports.”

’905 Patent Claim 51

Structure:
• Movable silicon micromachined
mirrors, movable reflective ribbons,
or movable reflective membranes.
Alternatively,
• indefinite
Alternatively, if § 112, ¶ 6 does not
apply:
• movable reflective element(s) of a
beam deflector

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Disputed Term

Plaintiff’s Proposed
Construction

“beam-deflecting
element(s)”
•

Defendants’ Proposed Construction
35 U.S.C. § 112, ¶ 6 applies as follows:
Function:
• (1) “each beam-deflecting element
receives one of said spectral
channels”; (2) “dynamically and
continuously controlling said beamdeflecting elements in two
dimensions”; (3) controlling the
beam-deflecting elements “to direct
said spectral channels into any
selected ones of output ports”; and
(4) controlling the beam-deflecting
elements “to control the power of the
spectral channels coupled into said
selected output ports to receive one
of said spectral channels.”

’906 Patent Claim
133

Structure:
• Movable silicon micromachined
mirrors, movable reflective ribbons,
or movable reflective membranes.
Alternatively,
• indefinite
Alternatively, if § 112, ¶ 6 does not
apply:
• movable reflective element(s) of a
beam deflector
The Parties’ Positions
Plaintiff submits: The meaning of “beam deflecting elements” is plain without construction.
It refers to “mirrored or reflective parts of a beam deflector array.” These elements are not
necessarily “movable.” And, as known in the art, the elements refer to a broad class of structures
and are not governed by 35 U.S.C. § 112, ¶ 6. Dkt. No. 72 at 15–17.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’905 Patent figs.1A, 1B, col.9 ll.22–25.
Extrinsic evidence: Sergienko Decl. ¶¶ 91, 95 (Dkt. No. 72-1).
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Defendants respond: The term “beam-deflecting element” is nothing more than a black-box
recitation of structure, ostensibly covering any structure that deflects a beam of light and is thus
subject to § 112, ¶ 6. Each claim at issue specifies the function of the claimed beam-deflecting
elements and the only disclosed structure for performing these functions are “(1) movable silicon
micromachined mirrors, (2) movable reflective ribbons, [and] (3) movable reflective membranes.”
Even if § 112, ¶ 6 does not apply, the beam-deflecting elements are necessarily movable. As
recited in the claims, the elements are controllable to reflect spectral channels to selected ports.
Indeed, the ’905 and ’906 Patents express the importance of the motion capabilities of the mirrors
(citing ’905 Patent col.9 l.26). Dkt. No. 80 at 23–26.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’905 Patent col.4 ll.34–36, col.9 ll.22–26;
U.S. Patent Application No. 60/277,217 at 4, fig.12 (Defendants’ Ex. B, Dkt. No. 80-3 at 6, 9).
Extrinsic evidence: Sergienko Dep. at 48:6 – 49:2, 121:5 – 123:9, 123:22 – 124:3, 132:10 – 133:9
(Defendants’ Ex. R, Dkt. No. 80-19 at 3–4, 23–26, 34–35); Willner Decl. ¶¶ 52–54, 56–61, 73
(Dkt. No. 80-41); U.S. Patent 8,867,917 col.1 ll.30–48 (Defendants’ Ex. W, Dkt. No. 80-24).
Plaintiff replies: The beam-deflecting elements are not limited to movable mirrored or
reflective elements. As is known in the art, the “reflective ribbons” described in the patents include
“multiple surfaces that parallelly displace relative to each other to create a diffraction grating” and
are “not . . . moved to direct a light beam” (Plaintiff’s emphasis). Dkt. No. 83 at 10–11.
Plaintiff cites further extrinsic evidence to support its position: Sergienko Decl. ¶ 91–95 (Dkt.
No. 72-1); Sergienko Dep. at 120:3 – 121:25, 127:24 – 132:8, 132:16 – 136:18, 201:17 – 202:16
(Plaintiff’s Ex. 38, Dkt. No. 83-2 at 2–10) (Defendants’ Ex. R, Dkt. No. 80-19 at 29–34); Silicon

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Lighting Machines, Grating Light Valve Technology Brief at 1–3 (June 2001) (Plaintiff’s Ex. 39,
Dkt. No. 83-3 at 2–4).
Analysis
There are three issues in dispute. First, whether these terms should be governed by 35 U.S.C.
§ 112, ¶ 6. Second, if the terms are governed by § 112, ¶ 6, whether the Asserted Patents limit the
term as Defendants suggest. Third, if the terms are not governed by § 112, ¶ 6, whether the beamdeflecting elements are necessarily movable. The Court determines that these terms are not
governed by § 112, ¶ 6 and therefore does not address the second issue. The Court further
determines that beam-deflecting elements are not inherently movable.
Defendants have not overcome the presumption against applying § 112, ¶ 6. The Court begins
with the presumption that § 112, ¶ 6 does not apply because the terms do not include the “means”
language traditionally used to signal application of the statute. Williamson v. Citrix Online, LLC,
792 F.3d 1339, 1347–49 & n.3 (Fed. Cir. 2015) (en banc in relevant portion). This “presumption
can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term
fails to recite sufficiently definite structure or else recites function without reciting sufficient
structure for performing that function.” Id. at 1349 (quotation marks omitted). “[T]he mere fact
that the disputed limitations incorporate functional language does not automatically convert the
words into means for performing such functions.” Zeroclick, LLC v. Apple Inc., 891 F.3d 1003,
1008 (Fed. Cir. 2018). “The question whether [a term] invokes section 112, paragraph 6, depends
on whether persons skilled in the art would understand the claim language to refer to structure,
assessed in light of the presumption that flows from the drafter’s choice not to employ the word
‘means.’” Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1354 (Fed. Cir. 2020).

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Based on the evidence of record, “beam-deflecting elements” refers to a class of known
structures and therefore does not invoke § 112, ¶ 6. For example, the Asserted Patents provide that
“[t]he channel micromirrors may be provided by silicon micromachined mirrors, reflective ribbons
(or membranes), or other types of beam-deflecting elements known in the art.” ’905 Patent col.9
ll.22–25. This indicates that “beam-deflecting element” refers to a class of structures known in the
art and that, therefore, it is not governed by § 112, ¶ 6. See Personalized Media Communs., L.L.C.
v. ITC, 161 F.3d 696, 705 (Fed. Cir. 1998) (“Even though the term ‘detector’ does not specifically
evoke a particular structure, it does convey to one knowledgeable in the art a variety of structures
known as ‘detectors.’ We therefore conclude that the term ‘detector’ is a sufficiently definite
structural term to preclude the application of § 112, P 6”)
The Court is not convinced that a beam-deflecting element is necessarily movable.
Specifically, the Court rejects that a beam-deflecting element is a species of channel micromirror,
as Defendants contend. Rather, the patents explain that “channel micromirrors may be provided
by . . . types of beam-deflecting elements.” ’905 Patent col.9 ll.22–25. As Defendants (correctly)
argued with respect to a fiber collimator “providing” a port, the term “providing” does not narrowly
mean “is” or “serves as.” In other words, that beam-deflecting elements may provide channel
micromirrors does not mean a beam-deflecting element is a subset of channel micromirrors any
more than a port is a subset of fiber collimators. Thus, even if the channel micromirrors are
necessarily movable, this is not sufficient reason to read such a limitation into “beam-deflecting
element.” And Defendants have not identified other evidence sufficient to establish that beamdeflecting elements such as mirrors or membranes are necessarily movable.
Further, the Court is not convinced that a beam-deflecting element is necessarily reflective.
There is a clear distinction between reflection and deflection in the art, where reflection is a special

33

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case of deflection. Defendants have not identified sufficient evidence to limit beam-deflecting
elements to beam-reflecting elements.
Accordingly, the Court rejects Defendants’ proposed constructions and determines that these
terms have their plain and ordinary meanings without the need for further construction.
C.

“. . . controllable” and “controlling . . .”

Disputed Term
“said elements being . . .
controllable”
•

’905 Patent Claim 23, 47,
49

“controlling . . . said beamdeflecting elements”
•

Plaintiff’s Proposed
Construction
Plain and ordinary meaning.
Alternatively, “controllable”
means:
• capable of being
controlled

moving said other beamdeflecting elements

’905 Patent Claim 52

“said channel micromirrors
being . . . controllable”
•

said channel micromirrors
being movable

’906 Patent Claims 68,
89, 100, 115

“controlling said beamdeflecting elements”
•

moving said beam-deflecting
elements

’905 Patent Claim 51

“controlling said other beamdeflecting elements”
•

Defendants’ Proposed
Construction
said elements being movable

moving said beam-deflecting
elements

’906 Patent Claim 133
Because the parties’ arguments and proposed constructions with respect to these terms are

related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits: “[C]ontrollable does not mean movable.” Rather, the Asserted Patents
specify when motion is required. Dkt. No. 72 at 17–18.
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In addition to the claims themselves, Plaintiff cites the following intrinsic evidence to support
its position: ’905 Patent col.7 ll.20–21.
Defendants respond: The claims specify that the control of the beam-deflecting elements
necessarily entails movement of the elements. For instance, the claims require controlling the
elements “dynamically,” “to reflect,” or “to direct,” each of which indicates movement of the
elements. Control of the elements is consistently and solely described in the patents as involving
movement of the elements. In fact, Plaintiff represented to the USPTO that movement of the
elements was inherent to control of the elements. Dkt. No. 80 at 26–28.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’905 Patent col.4 ll.19–23, col.4 ll.33–37,
col.6 l.66 – col.7 l.1, col.7 ll.20–25, col.8 ll.22–41, col.8 ll.38–48, col.9 ll.22–31, col.9 ll.57–61,
col.10 ll.48–67; POR IPR2014-01276 31 at 13, 45–46, 51 (Defendants’ Ex. X, Dkt. No. 80-25 at 7,
9–10, 13); POR IPR2014-01166 32 at 7, 13–14, 49–50, 58 (Defendants’ Ex. Y, Dkt. No. 80-26 at
4, 7–8, 11–12, 16). Extrinsic evidence: Willner Decl. ¶¶ 75–76, 80–90 (Dkt. No. 80-41);
Sergienko IPR Dep. 33 at 84:24 – 86:1 (Defendants’ Ex. Q, Dkt. No. 80-18 at 12–14).
Plaintiff replies: The Asserted Patents describe embodiments that are expressly “controllable
and movable,” indicating that “movable” is not inherent to “controllable.” The distinction made in
IPR was not that controlling elements required moving the elements but rather that the prior art
element (mirror) was continuously controlled. “Explaining how a particular reference (that used

31

Patent Owner Response to the Petition, Cisco Systems, Inc. v. Capella Photonics, Inc.,
IPR2014-001276 (Patent No. RE42,678) (P.T.A.B. May 18, 2015), paper 15.
32
Patent Owner Response to the Petition, Cisco Systems, Inc. v. Capella Photonics, Inc.,
IPR2014-001166 (Patent No. RE42,368) (P.T.A.B. May 7, 2015), paper 19.
33
Videotaped Deposition of Alexander V. Sergienko, Cisco Systems, Inc. v. Capella Photonics,
Inc., IPR2014-01166 (Patent No. RE42,368) (P.T.A.B. June 30, 2015), exhibit 1039.
35

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movable mirrors) did not provide ‘continuous’ control is not an admission that continuous control
(let alone the term controllable by itself) requires movement.” Dkt. No. 83 at 12.
Plaintiff cites further intrinsic evidence to support its position: ’905 Patent col.4 ll.11–14;
POR IPR2014-01166 at 46–50 (Plaintiff’s Ex. 13, Dkt. No. 72-19 at 54–58); POR IPR2014-01276
at 44–53 (Plaintiff’s Ex. 29, Dkt. No. 72-35 at 53–62); Sergienko IPR Dep. at 83–84 (Defendants’
Ex. Q, Dkt. No. 80-18 at 8–12).
Analysis
The issue in dispute is whether “controllable” and “controlling” in the claims is limited to
“movable” and “moving,” respectively. They are not.
Defendants have not identified anything that rises to the exacting standard for lexicography
or disclaimer such that “controllable” and “controlling” should be recast as “movable” and
“moving.” And as stated above, Defendants have not established that all beam-deflecting elements
are necessarily movable. Notably, the extrinsic evidence indicates that one disclosed variant of a
beam-deflecting element (ribbons), can deflect through diffraction. Sergienko Dep. at 121:16–21
(“there are several physical ways of changing the direction of light, such as reflection, refraction,
interference, and diffraction”), Dkt. No. 83-2 at 3; id. at 133:1–3 (“deflection by ribbons is based
on [a] different physical effect than mirrors. It is diffraction rather than reflection”), Dkt. No. 83-2
at 5. Further evidence suggests that it was understood in the art that one can control deflection
through diffraction other than by moving diffraction elements. Id. at 133:21–25, Dkt. No. 83-2 at
5. Indeed, the Asserted Patents describe spatial positioning of spectral channels using diffraction
gratings. ’905 Patent col.7 ll.11–20. And the patents suggest that controllable and movable are
separate concepts. See e.g., ’905 Patent col.7 ll.21–22 (“The channel micromirrors 103 are
individually controllable and movable . . ..” (emphasis added)). In this light, the intrinsic evidence

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identified by Defendants is not sufficient to limit control to motion. Defendants arguments are
more properly addressed to written description or enablement issues than to claim-construction
issues.
Accordingly, the Court rejects Defendants’ proposed construction and determines that these
terms have their plain and ordinary meanings without the need for further construction.
D.

“. . . continuously controllable,” “controlling . . . continuously . . .,” and
“continuously controlling . . .”

Disputed Term
“said elements being . . .
continuously controllable”
•

’905 Patent Claim 23, 47,
49

“controlling . . . continuously
said beam-deflecting
elements”
•

Plaintiff’s Proposed
Construction
Plain and ordinary meaning.
Alternatively, “continuously
controllable” means
• capable of constant or
uninterrupted control

moving by analog and not
step-wise control said beamdeflecting elements

’906 Patent Claim 133

“said channel micromirrors
being . . . continuously
controllable”
•

moving by analog and not
step-wise control said beamdeflecting elements

’905 Patent Claim 51

“continuously controlling
said beam-deflecting
elements”
•

Defendants’ Proposed
Construction
said elements being movable
by analog and not step-wise
control

said channel micromirrors
being movable by analog and
not step-wise control

’906 Patent Claim 68,
100, 115
Because the parties’ arguments and proposed constructions with respect to these terms are

related, the Court addresses the terms together.

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The Parties’ Positions
Plaintiff submits: The word “continuously” in these terms is used according to its plain
meaning, to “indicate uninterrupted control of the” beam-deflecting elements. “This was a major
improvement over two-state on/off ‘digital’ systems.” This does not exclude “stepwise” control
Dkt. No. 72 at 18–20.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’905 Patent fig.1A, col.4 ll.19–26, col.8 ll.38–
45. Extrinsic evidence: Sergienko Decl. ¶¶ 100–103 (Dkt. No. 72-1); Sergienko Dep. at 169:20 –
170:10 (Plaintiff’s Ex. 14, Dkt. No. 72-20 at 6–7); B&C Consulting Services, Components for ROADMs – 2005 at 18–19 34 (March 2005) (Sergienko Decl. Ex. B, Dkt. No. 72-3); MerriamWebster Dictionary Online, “continuous” 35 (Plaintiff’s Ex. 6, Dkt. No. 72-12); Google English
dictionary result from Google search for “continuous” 36 (Plaintiff’s Ex. 7, Dkt. No. 72-13).
Defendants respond: The Asserted Patents state that the continuous nature of the control of
the beam-deflecting elements refers to analog control, and that this is a feature of the “present
invention” that distinguishes it over the prior art (citing ’905 Patent col.4 ll.19–26). In fact, analog
control and continuous control are interchangeably used in the patents. This plainly excludes
stepwise control, which point Plaintiff made to distinguish prior art during IPR proceedings. Dkt.
No. 80 at 28–29.

34

Plaintiff cites pages 118–19, but the submitted document includes only pages 1 through 24.
Pages 18 and 19 discuss the “Digital Approach” and the “Analog Approach” to MEMS
switching of light waves. Dkt. No. 72-3 at 19–20.
35
https://www.merriam-webster.com/dictionary/continuous
36
https://www.google.com/search?q=continuous&rlz=1C1GCEB_enUS890US890&oq=
continuous&aqs=chrome.0.69i59l2j0l4j69i60l2.2943j0j4&sourceid%E2%80%A6
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In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’905 Patent col.4 ll.19–26, col.7 ll.20–25,
col.8 ll.22–41, col.9 ll.22–31; POR IPR2014-01276 at 7 (Defendants’ Ex. X, Dkt. No. 80-25 at 4);
POR IPR2014-01166 at 7, 57–58 (Defendants’ Ex. Y, Dkt. No. 80-26 at 4, 15–16). Extrinsic
evidence: Willner Decl. ¶¶ 98–105, 108 (Dkt. No. 80-41); Sergienko IPR Dep. at 92:20 – 93:19
(Defendants’ Ex. Q, Dkt. No. 80-18 at 17–19).
Plaintiff replies: The continuous control of the beam-deflecting elements indicates
“uninterrupted control” of the elements, which enables “on-the-fly switching to any of a
multiplicity of output” ports (Plaintiff’s emphasis). This is distinct over the prior-art two-state
systems but does not exclude stepwise control of the elements and is not limited to analog control
of the elements. Plaintiff’s argument in IPR was not that continuous control required analog
control, or excluded stepwise control, but rather “was addressing the Petitioner’s construction.”
Dkt. No. 83 at 12–13.
Plaintiff cites further intrinsic and extrinsic evidence to support its position: Intrinsic
evidence: ’905 Patent col.2 l.38, col.3 ll.12–28, col.3 l.35, col.7 l.22, col.9 ll.28–31; POR
IPR2014-01166 at 44–45, n.5 (Plaintiff’s Ex. 13, Dkt. No. 72-19 at 54–55); POR IPR2014-01276
at 46, n.8 (Plaintiff’s Ex. 29, Dkt. No. 72-35 at 53). Extrinsic evidence: Sergienko Decl. ¶¶ 100–
104 (Dkt. No. 72-1).
Analysis
The issue in dispute is whether continuous control entails analog, rather than stepwise, control.
The Asserted Patents teach that continuous control entails analog control of the element position
but explains this analog nature as a continuous adjustability of the element rather than as a specific
type of control signal.

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The Asserted Patents equate continuous (or analog) control with control for continuous
adjustment of the element. For instance, the patents provide:
A distinct feature of the channel micromirrors in the present invention, in contrast
to those used in the prior art, is that the motion, e.g., pivoting (or rotation), of each
channel micromirror is under analog control such that its pivoting angle can be
continuously adjusted. This enables each channel micromirror to scan its
corresponding spectral channel across all possible output ports and thereby direct
the spectral channel to any desired output port.
’905 Patent col.4 ll.19–26 (emphasis added). The patents further provide:
The channel micromirrors 103 are individually controllable and movable, e.g.,
pivotable (or rotatable) under analog (or continuous) control, such that, upon
reflection, the spectral channels are directed into selected ones of the output
ports 110-2 through 110-N by way of the focusing lens 102 and the diffraction
grating 101.
Id. at col.7 ll.20–25 (emphasis added). See also, id. at col.9 ll.26–31 (“What is important is
that the pivoting (or rotational) motion of each channel micromirror be individually
controllable in an analog manner, whereby the pivoting angle can be continuously adjusted so
as to enable the channel micromirror to scan a spectral channel across all possible output
ports.”). Plaintiff distinguished analog control from “step-wise digital control” in IPR
proceedings. Specifically, Plaintiff made the following argument to the PTAB:
Petitioner first says Smith teaches continuous control because Smith teaches analog
control. But Smith, along with several other patent applications and patents in the
Smith family, indicates that the Smith mirror operates under step-wise digital
control (i.e., not analog control).
POR IPR2014-01166 at 7 (emphasis added), Dkt. No. 72-19 at 15. Plaintiff further argued:
Smith discloses tilting mirrors at both large and small angles. (See Smith, 18:12-14
(“Tilting about the major axis can be performed both at the large angles
corresponding to the positions of the mirrors and at finer angular resolution within
the large angles.”).) Also, Smith says that the control is preferably performed by
pulse width modulation (“PWM”). (See id. at 11:22-23.) A POSA would view
tilting according to large angles and small angles and PWM more akin to step-wise
digital control than analog control. (Sergienko Dec., ¶ 176.)

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Id. at 44–45 (emphasis added), Dkt. No. 72-19 at 52–53. Plaintiff further clarified that whether
control is continuous is not simply a function of input signal, but rather is a function of how the
controlled elements are adjusted.
Continuous control cannot be shown by the input signal (i.e., analog vs. digital)
alone. (Sergienko Dec., ¶ 181.) To determine whether Lin’s mirrors—or any
mirrors—are continuously controllable, Petitioner would have to look at the
structure of the mirror and how the voltage affects movement of the mirror. (See
Marom Depo. Tr., 154:13-155:8; Sergienko Dec., ¶¶ 181-82.) Petitioner fails to do
so. (See Petition, pp. 29-31. See also Marom Depo. Tr. 169:21-170:10, 171:17172:6 (saying step-wise control could produce the curve in Lin Figure 3B.)
Id. at 49, Dkt. No. 72-19 at 57. Ultimately, the meaning of “step-wise digital control” is not clear.
On the record before the Court, not “step-wise digital control” may be consistent with Plaintiff’s
“uninterrupted control.” And the patents do not use “step-wise” to describe any control. In the IPR
proceedings the PTAB construed “continuously controllable” in light of the above-quoted
passages from the Asserted Patents and in light of Plaintiff’s arguments and determined as
follows:
Based on all of the evidence presented, we are not persuaded that “continuously
controllable” is limited to “analog control,” or that “analog control” necessarily
corresponds to “continuous” control under all circumstances. Indeed, counsel
for Petitioner suggested that although the art at issue disclosed analog control
that provided continuous control, counsel further recognized that it may operate
differently outside of that art. See Paper 43, 30:24–31-6. We determine that
“continuously controllable,” in light of the specification of the ’368 patent,
encompasses “under analog control such that it can be continuously adjusted.”
Final Written Decision IPR2014-01166 at 10–12 (emphasis added), Dkt. No. 80-6 at 11–13. The
Court agrees with the PTAB’s understanding of this term. Thus, continuous control is not defined
by whether an analog or digital signal is used to control the element, but rather whether the element
is controllable such that it can be continuously adjusted.
Accordingly, the Court construes these terms as follows:

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•

“said elements being . . . continuously controllable” means “said elements being .
. . controllable such that they can be continuously adjusted”;

•

“controlling . . . continuously said beam-deflecting elements” means “controlling .
. . said beam-deflecting elements such that they can be continuously adjusted”;

•

“continuously controlling said beam-deflecting elements” means “controlling said
beam-deflecting elements such that they can be continuously adjusted”; and

•

“said channel micromirrors being . . . continuously controllable” means “said
channel micromirrors being . . . controllable such that they can be continuously
adjusted.”

E.

“said [beam-deflecting] elements being . . . controllable in two dimensions”
and “controlling . . . said beam-deflecting elements in two dimensions”

Disputed Term
“said [beam-deflecting]
elements being . . .
controllable in two
dimensions”
•

Plaintiff’s Proposed
Construction
Plain and ordinary meaning.
Alternatively, “dimension”
means:
• a direction or quality

’905 Patent Claim 23, 47,
49

“controlling . . . said beamdeflecting elements in two
dimensions”
•
•

Defendants’ Proposed
Construction
said [beam-deflecting]
elements (as construed) are
rotatable about two axes

rotating said beam-deflecting
elements (as construed) about
two axes

’905 Patent Claim 51
’906 Patent Claim 133
Because the parties’ arguments and proposed constructions with respect to these terms are

related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits: “[T]he term ‘dimension’ is used in the ordinary sense to refer to a direction
or quality.” Thus, control in two dimensions is not limited to require movement about two axes
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and encompasses any two dimensions, “e.g., X, Y, Z, time, etc.” Some claims expressly require
that mirrors are “pivotal about two axes.” Others do not. And the Asserted Patents describe
“ribbons” as exemplary beam-deflecting elements and ribbons “do not rotate about two axes.” Dkt.
No. 72 at 20–21.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’905 Patent col.9 ll.22–25. Extrinsic
evidence: Sergienko Decl. ¶¶ 106–08 (Dkt. No. 72-1); Merriam-Webster Dictionary Online,
“dimension” 37 (Plaintiff’s Ex. 8, Dkt. No. 72-14).
Defendants respond: In the Asserted Patents, “controllable in two dimensions” is used
interchangeably with “pivotal about two axes” to “explain how the elements or mirrors may be
physically adjusted.” There is no description of control of elements in two dimensions other than
rotation of the elements about two axes. Further, the patent owner represented to the USPTO in
reissue declarations that controlling in two dimensions means the same as pivoting about two axes
and argued in IPR that a mirror rotatable along one axis is controllable in only one dimension. Dkt.
No. 80 at 31–32.
In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: ’905 Patent col.9 ll.22–26; U.S. Patent No. RE42,368 File Wrapper 38 June
15, 2010 Preliminary Amendment at 2 (Defendants’ Ex. LL, Dkt. No. 80-39 at 15), March 1, 2011

37

https://www.merriam-webster.com/dictionary/dimension
Defendants’ Exhibit LL (Dkt. No. 80-39) is a variety of document segments that are ostensibly
from the RE42,368 file wrapper. Dkt. No. 80-1 at ¶ 39. In some instances, the Court was unable
to ascertain the nature of the various documents from the exhibit because Defendants did not
submit sufficient portions of the documents. The Court’s characterization of the individual
documents in Exhibit LL comes from the Court’s review of the file wrapper available on the
USPTO’s Public Patent Application Information Retrieval database, available at
https://portal.uspto.gov/pair/PublicPair, and on the USPTO’s Patent Center database, available at
https://patentcenter.uspto.gov/#!/.
38

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Replacement Reissue Application Declaration by Assignee at 2–3 (Defendants’ Ex. LL, Dkt. No.
80-39 at 3–4); U.S. Patent No. RE42,678 File Wrapper 39 June 15, 2010 Preliminary Amendment
at 2, 16 (Defendants’ Ex. MM, Dkt. No. 80-40 at 3–4), January 31, 2011 Second Replacement
Reissue Application Declaration by Assignee at 2 ((Defendants’ Ex. MM, Dkt. No. 80-40 at 2);
POR IPR2014-01166 at 7, 51 (Defendants’ Ex. Y, 40 Dkt. No. 80-26 at 4, 14).
Plaintiff replies: The invention is not limited to movable beam-deflecting elements and
controlling the elements in two dimensions does not require rotating the elements about two axes.
Dkt. No. 83 at 13.
Plaintiff cites further intrinsic evidence to support its position: ’905 Patent col.4 l.21, col.4
l.35.
Analysis
The issue in dispute is whether “controlling . . . in two dimensions” and “controllable in two
dimensions” are necessarily limited to rotation about two axes. They are not.
Defendants have not identified anything that rises to the exacting standard for lexicography
or disclaimer such that control in two dimensions should be recast as rotation about two axes. As
stated above, Defendants have not established that all beam-deflecting elements are necessarily

39

Defendants’ Exhibit LL (Dkt. No. 80-40) is a variety of document segments that are ostensibly
from the RE42,678 file wrapper. Dkt. No. 80-1 at ¶ 40. The Court was unable to ascertain the
nature of the various documents from the exhibit because Defendants did not submit sufficient
portions of the documents. The Court’s characterization of the individual documents in Exhibit L
comes from the Court’s review of the file wrapper available on the USPTO’s Public Patent
Application Information Retrieval database, available at https://portal.uspto.gov/pair/PublicPair,
and on the USPTO’s Patent Center database, available at https://patentcenter.uspto.gov/#!/.
40
Defendants cite pages 7 and 51 of their “Ex. M.” Dkt. No. 80 at 32. Defendants’ Ex. M (Dkt.
No. 80-14) includes only excerpts from the Sergienko IPR2014-01166 Declaration and does not
include a page 7 or a page 51. The quotation Defendants present as found on page 7 of Ex. M is
found on page 7 of Ex. Y and the characterization of the argument purportedly on page 51 of Ex.
M appears applicable to the argument on page 51 of Ex. Y.
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movable or that control of elements necessarily entails moving the elements. Further, the Asserted
Patents expressly provide that pivoting or rotation is an example of motion of the elements rather
than being definitional of the motion. See, e.g., ’905 Patent col.4 ll. 28–32 (“A distinct feature of
the channel micromirrors in the present invention, in contrast to those used in the prior art, is that
the motion, e.g., pivoting (or rotation), of each channel micromirror is under analog control such
that its pivoting angle can be [continuously] adjusted.” (emphasis added)).
The Court rejects that the “dimensions” recited in the claims refers broadly to any quality of
a beam-deflecting element rather than spatial dimensions, as Plaintiff argues. Plaintiff’s position
does not comport with the use of “dimension” in the Asserted Patents. Rather, the patents use
“dimension” according to its customary “spatial” sense. See, e.g., ’905 Patent col.7 ll.59–63 (“The
corresponding spectral channels diffracted from the diffraction grating 101 are generally elliptical
in cross-section; they may be of the same size as the input beam in one dimension and elongated
in the other dimension.”), col.8 ll.23–26 (“By way of example, the channel micromirrors 103 are
arranged in a one-dimensional array along the x-axis (i.e., the horizontal direction in the figure) .
. ..”), col.9 ll.38–40 (“The fiber collimators serving as the input and output ports may be arranged
in a one-dimensional array, a two-dimensional array, or other desired spatial pattern.”); MerriamWebster Dictionary Online, “dimension” (defining “dimension” as “the quality of spatial
extension” and “measure in one direction . . . specifically: one of three coordinates”), Dkt. No.
72-14. The Court understands that “dimension” may have other customary meanings relating to
things such as time, properties of mathematical entities, lifelike qualities, and personality elements.
See Merriam-Webster Dictionary Online, “dimension”). But in the context of the Asserted Patents,
“dimension” refers to spatial dimensions. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed.
Cir. 2005) (en banc) (“The construction that stays true to the claim language and most naturally

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aligns with the patent’s description of the invention will be, in the end, the correct construction.”
(quotation marks omitted)); Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed.
Cir. 2016) (“The only meaning that matters in claim construction is the meaning in the context of
the patent.”).
Accordingly, the Court construes these terms as follows:
•

“said [beam-deflecting] elements being . . . controllable in two dimensions”
means “said [beam-deflecting] elements being . . . controllable in two spatial
dimensions”; and

•

“controlling . . . said beam-deflecting elements in two dimensions” means
“controlling . . . said beam-deflecting elements in two spatial dimensions.”

F.

“a control unit for controlling each of said beam-deflecting elements”

Disputed Term
“a control unit for controlling
each of said beam-deflecting
elements”
•

’905 Patent Claim 24

Plaintiff’s Proposed
Construction
Plain and ordinary meaning.
Capella specifically disagrees
that construction under 35
U.S.C. §112(f)/¶6 is
appropriate.
Alternatively,
• a controller capable of
manipulating each beamdeflecting element

Defendants’ Proposed
Construction
35 U.S.C. § 112(6) applies as
follows:
Function:
• controlling each of said
beam-deflecting elements
Structure:
• indefinite
Alternatively, if § 112, ¶ 6
does not apply:
• a control unit for
controlling (as construed)
each of said beamdeflecting elements (as
construed)

The Parties’ Positions
Plaintiff submits: To one of ordinary skill in the art, a “control unit” refers to known structure,
“namely a controller.” “In computing and especially computer hardware, a controller is a chip
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(such as a microcontroller), an expansion card, or a stand-alone device that interfaces with a more
peripheral device.” As such, this term is not governed by 35 U.S.C. § 112, ¶ 6. Dkt. No. 72 at 21–
23.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’905 Patent figs.4A, 4B, col.11 ll.42–56,
col.12 ll.6–8. Extrinsic evidence: Sergienko Decl. ¶¶ 109–12, 115–19 (Dkt. No. 72-1); Wikipedia,
The Free Encyclopedia, Controller (computing) 41 (Oct. 10, 2020) (Plaintiff’s Ex. 9, Dkt. No.
72-15).
Defendants respond: The terms “‘control unit,’ ‘processing unit,’ ‘power management
system,’ and ‘servo-control assembly’ are all indefinite means-plus-function terms.” “Each of
these black boxes is a general-purpose computer or performs recited functions via a generalpurpose computer.” And since the Asserted Patents fail to provide any algorithms for performing
the claim-recited functions, the term renders ’905 Patent Claim 24 indefinite. Dkt. No. 80 at 34–
35.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’905 Patent figs.4A, 4B, col.11 l.25 – col.12
l.26, col.12 ll.30–33. Extrinsic evidence: Sergienko Dep. at 176:18 – 177:22, 180:12 – 181:12
(Defendants’ Ex. R, Dkt. No. 80-19 at 41–44); Sergienko IPR Dep. at 80:12–23, 193:7–13
(Defendants’ Ex. Q, Dkt. No. 80-18 at 8, 23); Willner Decl. ¶¶ 114–15 (Dkt. No. 80-41).
Analysis
There appear to be three issues in dispute. First, whether this term should be governed by 35
U.S.C. § 112, ¶ 6. Second, if the term is governed by § 112, ¶ 6, whether the ’905 Patent satisfies

41

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the disclosure requirements of the statute. Third, if the term is not governed by § 112, ¶ 6, whether
the control unit controls beam-deflecting elements as Defendants construe “controlling” and
“beam-deflecting elements.” The Court determines that this term is not governed by § 112, ¶ 6 and
therefore does not address the second issue. With respect to the third issue, the Court reiterates its
above rulings on “beam-deflecting element” and what it means to control a beam-deflecting
element.
Defendants have not overcome the presumption against applying § 112, ¶ 6. Specifically, the
Court understands that “control unit” refers to a well-known class of structures also known as
controllers. See Sergienko Decl. ¶¶ 110, 112, Dkt. No. 72-1. Indeed, the term “control unit” was
in claims that were addressed in the various IPR and Reissue proceedings and there is no indication
in the record that the term was treated as anything other than a name for structure.
Accordingly, the Court rejects Defendants’ proposed construction and determines that this
term has its plain and ordinary meaning without the need for further construction.

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G.

“a processing unit . . . for . . .”

Disputed Term

Plaintiff’s Proposed
Construction

“a processing unit
responsive to said power
levels for controlling said
beam-deflecting
elements”
•

Defendants’ Proposed
Construction
35 U.S.C. § 112(6) applies as
follows:
Function:
• responsive to said power
levels for controlling said
beam-deflecting elements
responsive said power levels

’905 Patent Claim 25

Structure:
• indefinite
Plain and ordinary meaning.
Capella specifically disagrees
that construction under 35
U.S.C. §112(f)/¶6 is
appropriate.
“a processing unit
responsive to said power
levels for providing
control of said channel
micromirrors”
•

Alternatively,
• a processor capable of
manipulating each beamdeflecting element

’906 Patent Claims 70,
90, 117

Alternatively, if § 112, ¶ 6 does
not apply:
• a processing unit responsive
to said power levels for
controlling (as construed)
said beam-deflecting
elements (as construed)
35 U.S.C. § 112(6) applies as
follows:
Function:
• responsive to said power
levels for providing control
of said channel micro
mirrors
Structure:
• indefinite
Alternatively, if § 112, ¶ 6 does
not apply:
• a processing unit responsive
to said power levels for
providing control (as
construed) of said channel
micromirrors (as construed)

Because the parties’ arguments and proposed constructions with respect to these terms are
related, the Court addresses the terms together.

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The Parties’ Positions
Plaintiff submits: To one of ordinary skill in the art, a “processing unit” refers to known
structure, “namely a processor.” “In computing, a processor or processing unit is a digital circuit
which performs operations on some external data source, usually memory or some other data
stream.” As such, this term is not governed by 35 U.S.C. § 112, ¶ 6. Dkt. No. 72 at 23–25.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’905 Patent figs.4A, 4B, col.11 l.25 – col.12
l.61. Extrinsic evidence: Sergienko Decl. ¶¶ 120–23, 126–30 (Dkt. No. 72-1); Wikipedia, The
Free Encyclopedia, Processor (computing) 42 (Nov. 7, 2020) (Plaintiff’s Ex. 10, Dkt. No. 72-16).
Defendants respond: The terms “‘control unit,’ ‘processing unit,’ ‘power management
system,’ and ‘servo-control assembly’ are all indefinite means-plus-function terms.” “Each of
these black boxes is a general-purpose computer or performs recited functions via a generalpurpose computer.” And since the Asserted Patents fail to provide any algorithms for performing
the claim-recited functions, the terms render claims indefinite. Dkt. No. 80 at 34–35.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’905 Patent figs.4A, 4B, col.11 l.25 – col.12
l.26, col.12 ll.30–33. Extrinsic evidence: Sergienko Dep. at 176:18 – 177:22, 180:12 – 181:12
(Defendants’ Ex. R, Dkt. No. 80-19 at 41–44); Sergienko IPR Dep. at 80:12–23, 193:7–13
(Defendants’ Ex. Q, Dkt. No. 80-18 at 8, 23); Willner Decl. ¶¶ 114–15 (Dkt. No. 80-41).
Analysis
There appear to be three issues in dispute. First, whether these terms should be governed by
35 U.S.C. § 112, ¶ 6. Second, if the terms are governed by § 112, ¶ 6, whether the Asserted Patents

42

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satisfies the disclosure requirements of the statute. Third, if the terms are not governed by § 112,
¶ 6, whether the processing unit controls beam-deflecting elements or channel micromirrors as
Defendants construe “controlling,” “beam-deflecting elements,” and “channel micromirrors.” The
Court determines that these terms are not governed by § 112, ¶ 6 and therefore does not address
the second issue. With respect to the third issue, the Court reiterates its above rulings on “beamdeflecting element” and what it means to control a beam-deflecting element/channel micromirror
and refers to the ruling below regarding “channel micromirrors.”
Defendants have not overcome the presumption against applying § 112, ¶ 6. Specifically, the
Court understands that “processing unit” refers to a well-known class of structures also known as
processors. See Sergienko Decl. ¶¶ 121, 128, Dkt. No. 72-1. Indeed, the term “processing unit”
was in claims that were addressed in the various IPR and Reissue proceedings and there is no
indication in the record that the term was treated as anything other than a name for structure.
Accordingly, the Court rejects Defendants’ proposed constructions and determines that these
terms have their plain and ordinary meanings without the need for further construction.

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H.

“a power-management system configured to manage power levels of at least
one of the first spectral channels and the second spectral channels”

Disputed Term

Plaintiff’s Proposed
Construction
“a power-management
Plain and ordinary meaning.
system configured to manage Capella specifically disagrees
power levels of at least one of that construction under 35
the first spectral channels and U.S.C. §112(f)/¶6 is
the second spectral channels” appropriate.
•

’905 Patent Claim 44

Alternatively,
• controller (manager) to
manage power levels

Defendants’ Proposed
Construction
35 U.S.C. § 112(6) applies as
follows:
Function:
• manage power levels of at
least one of the first
spectral channels and the
second spectral channels
Structure:
• indefinite
Alternatively, if § 112, ¶ 6
does not apply:
• plain and ordinary
meaning

The Parties’ Positions
Plaintiff submits: To one of ordinary skill in the art, a “power-management system” refers to
sufficiently definite structure. As such, this term is not governed by 35 U.S.C. § 112, ¶ 6. Dkt. No.
72 at 25–26.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’905 Patent figs.4A, 4B, col.11 l.25 – col.12
l.61. Extrinsic evidence: Sergienko Decl. ¶¶ 131–32 (Dkt. No. 72-1).
Defendants respond: The terms “‘control unit,’ ‘processing unit,’ ‘power management
system,’ and ‘servo-control assembly’ are all indefinite means-plus-function terms.” “Each of
these black boxes is a general-purpose computer or performs recited functions via a generalpurpose computer.” And since the Asserted Patents fail to provide any algorithms for performing
the claim-recited functions, the terms render claims indefinite. Dkt. No. 80 at 34–35.

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In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’905 Patent figs.4A, 4B, col.11 l.25 – col.12
l.26, col.12 ll.30–33. Extrinsic evidence: Sergienko Dep. at 176:18 – 177:22, 180:12 – 181:12
(Defendants’ Ex. R, Dkt. No. 80-19 at 41–44); Sergienko IPR Dep. at 80:12–23, 193:7–13
(Defendants’ Ex. Q, Dkt. No. 80-18 at 8, 23); Willner Decl. ¶¶ 114–15 (Dkt. No. 80-41).
Analysis
There appear to be two issues in dispute. First, whether this term should be governed by 35
U.S.C. § 112, ¶ 6. Second, if the term is governed by § 112, ¶ 6, whether the ’905 Patent satisfies
the disclosure requirements of the statute. The Court determines that this term is not governed by
§ 112, ¶ 6 and therefore does not address the second issue.
Defendants have not overcome the presumption against applying § 112, ¶ 6. Specifically, the
Court understands that “power management system” refers to a well-known class of structures.
See Sergienko Decl. ¶¶ 131–32, Dkt. No. 72-1. Indeed, the term “power-management system” was
in claims that were addressed in the Reissue proceedings and there is no indication in the record
that the term was treated as anything other than a name for structure.
Accordingly, the Court rejects Defendants’ proposed construction and determines that this
term has its plain and ordinary meaning without the need for further construction.

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I.

“a servo-control assembly . . . for . . .”

Disputed Term

Plaintiff’s Proposed
Construction

“a servo-control assembly . . .
for monitoring power levels
of selected ones of selected
channels”
•

•

Function:
• monitoring power levels of
selected ones of said spectral
channels

’905 Patent Claim 25

“a servo-control assembly . . .
for providing control of said
channel micromirrors and
thereby maintaining a
predetermined coupling of
each reflected spectral
channel into one of said fiber
collimator output ports”
’906 Patent Claim 69

Defendants’ Proposed
Construction
35 U.S.C. § 112(6) applies as
follows:

Plain and ordinary
meaning. Capella
specifically disagrees that
construction under 35
U.S.C. §112(f)/¶6 is
appropriate.
Alternatively,
• “servo” means: a
controller that uses
feedback to control
power
• “assembly” means “a
collection of parts or
components”

Structure:
• indefinite
Alternatively, if § 112, ¶ 6 does
not apply:
• plain and ordinary meaning
35 U.S.C. § 112(6) applies as
follows:
Function:
• providing control of said
channel micromirrors and
thereby maintaining a
predetermined coupling of
each reflected spectral
channel into one of said fiber
collimator output ports
Structure:
• indefinite
Alternatively, if § 112, ¶ 6 does
not apply:
• plain and ordinary meaning

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Disputed Term

Plaintiff’s Proposed
Construction

“a servo-control assembly . . .
for maintaining a
predetermined coupling of
each reflected spectral
channel into one of said fiber
collimator output ports”
•

Defendants’ Proposed
Construction
35 U.S.C. § 112(6) applies as
follows:
Function:
• maintaining a predetermined
coupling of each reflected
spectral channel into one of
said fiber collimator output
port

’906 Patent Claim 89

Structure:
• indefinite
Alternatively, if § 112, ¶ 6 does
not apply:
• plain and ordinary meaning
“a servo-control assembly, in
communication with said
channel micromirrors and
said output ports, for
providing control of said
channel micromirrors and
thereby maintaining a
predetermined coupling of
each reflected spectral
channel into one of said
output ports”

35 U.S.C. § 112(6) applies as
follows:

•

Structure:
• indefinite

Function:
• providing control of said
channel micromirrors and
thereby maintaining a
predetermined coupling of
each reflected spectral
channel into one of said
output ports

’906 Patent Claim 116

Alternatively, if § 112, ¶ 6 does
not apply:
• plain and ordinary meaning
Because the parties’ arguments and proposed constructions with respect to these terms are
related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits: To one of ordinary skill in the art, a “servo-control assembly” refers to
known structure, “namely a servo.” “A servo is a foundational building block of optical systems,

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and is well-known in the art. Servos provide corrective control based on feedback.” As such, this
term is not governed by 35 U.S.C. § 112, ¶ 6. Dkt. No. 72 at 26–27.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’905 Patent figs.4A, 4B, col.11 l.25 – col.12
l.61. Extrinsic evidence: Sergienko Decl. ¶¶ 141, 143, 146–48 (Dkt. No. 72-1); Merriam-Webster
Dictionary Online, “assembly” 43 (Plaintiff’s Ex. 11, Dkt. No. 72-17).
Defendants respond: The terms “‘control unit,’ ‘processing unit,’ ‘power management
system,’ and ‘servo-control assembly’ are all indefinite means-plus-function terms.” “Each of
these black boxes is a general-purpose computer or performs recited functions via a generalpurpose computer.” And since the Asserted Patents fail to provide any algorithms for performing
the claim-recited functions, the terms render claims indefinite. Dkt. No. 80 at 34–35.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’905 Patent figs.4A, 4B, col.11 l.25 – col.12
l.26, col.12 ll.30–33. Extrinsic evidence: Sergienko Dep. at 176:18 – 177:22, 180:12 – 181:12
(Defendants’ Ex. R, Dkt. No. 80-19 at 41–44); Sergienko IPR Dep. at 80:12–23, 193:7–13
(Defendants’ Ex. Q, Dkt. No. 80-18 at 8, 23); Willner Decl. ¶¶ 114–15 (Dkt. No. 80-41).
Analysis
There appear to be two issues in dispute. First, whether these terms should be governed by 35
U.S.C. § 112, ¶ 6. Second, if these terms are governed by § 112, ¶ 6, whether the Asserted Patents
satisfy the disclosure requirements of the statute. The Court determines that these terms are not
governed by § 112, ¶ 6 and therefore does not address the second issue.

43

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Defendants have not overcome the presumption against applying § 112, ¶ 6. Specifically, the
Court understands that “servo-control assembly” refers to a well-known class of structures. See
Sergienko Decl. ¶¶ 142–43, Dkt. No. 72-1. Indeed, the term “servo-control assembly” was in
claims that were addressed in the various IPR and Reissue proceedings and there is no indication
in the record that the term was treated as anything other than a name for structure.
Accordingly, the Court rejects Defendants’ proposed constructions and determines that these
terms have their plain and ordinary meanings without the need for further construction.
J.

“channel micromirrors,” “mirror[s],” “micromirror[s],” and
“micromachined mirror[s]”

Disputed Term
“channel micromirrors”
•

’906 Patent Claims 68,
89, 100, 115

“mirror[s]”
•

’905 Patent Claim 29

“micromirror[s]”
•

’905 Patent Claim 46

“micromachined mirror[s]”
•

’905 Patent Claim 35

Plaintiff’s Proposed
Construction
Mirrored or reflective
surfaces for reflecting light.
One of ordinary skill in the
art would understand
“micromirrors” and
“micromachined mirrors” to
mean small mirrored or
reflective surfaces for
reflecting light. A “channel
micromirror,” in light of the
specifications and claims,
means a small mirror that is
positioned to receive one of
the spectral channels.

Defendants’ Proposed
Construction
[a movable mirror] /
[movable mirrors, each]
assigned to a specific spectral
channel

Because the parties’ arguments and proposed constructions with respect to these terms are
related, the Court addresses the terms together.
The Parties’ Positions
Plaintiff submits: A “mirror” is a mirrored or reflective surface for reflecting light. The terms
“micromirror” and “micromachined mirror” each refers to small mirrors. And a “channel
micromirror” is “a small minor or reflective surface[] that [is] positioned to receive one of the
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spectral channels.” None of these mirrors are necessarily movable or assigned to a specific spectral
channel. Dkt. No. 72 at 28–29.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’905 Patent col.4 ll.9–16, col.9 ll.22–25.
Extrinsic evidence: Sergienko Decl. ¶¶ 150–51 (Dkt. No. 72-1).
Defendants respond: The ordinary meaning of “channel micromirror” is a “movable mirror
assigned to a specific spectral channel.” The Asserted Patents acknowledge and expressly reiterate
this meaning and its importance to the invention (citing, e.g., ’905 Patent col.4 ll.9–16, col.4 ll.19–
22). And the patents describe that micromachined mirrors and other beam-deflecting elements are
species of channel micromirrors and thus have the characteristics of the channel micromirrors
(citing id. at col.9 ll.22–25). Dkt. No. 80 at 19–23.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’905 Patent, at [57] Abstract, col.4 ll.9–16,
col.4 ll.19–26, col.7 ll.20–23, col.8 ll.30–32, col.8 ll.38–41, col.8 ll.64–67, col.9 ll.22–31, col.9
ll.43–48. Extrinsic evidence: Sergienko Dep. at 142:16 – 144:16 (Defendants’ Ex. R, Dkt. No.
80-19 at 36–38); Sergienko IPR2014-01166 Decl. 44 ¶ 58 (Defendants’ Ex. M, Dkt. No. 80-14);
Sergienko IPR2014-01276 Decl. 45 ¶ 58 (Defendants’ Ex. N, Dkt. No. 80-15); Sergienko IPR2015-

44

Declaration of Dr. Alexander V. Sergienko in Support of the Patent Owner Response, Cisco
Systems, Inc. v. Capella Photonics, Inc., IPR2014-01166 (Patent No. RE42,368) (P.T.A.B. May
7, 2015), exhibit 2004.
45
Declaration of Dr. Alexander V. Sergienko in Support of the Patent Owner Response, Cisco
Systems, Inc. v. Capella Photonics, Inc., IPR2014-01276 (Patent No. RE42,678) (P.T.A.B. May
18, 2015), exhibit 2004.
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00726 Decl. 46 ¶ 69 (Defendants’ Ex. U, Dkt. No. 80-22); Sergienko IPR2015-00727 Decl. 47 ¶ 69
(Defendants’ Ex. V, Dkt. No. 80-23).
Plaintiff replies: Defendants seek to improperly limit claim scope to an exemplary
embodiment. Dkt. No. 83 at 11.
Analysis
There appear to be two issues in dispute. First, whether all the mirror terms necessarily refer
to “channel micromirrors.” They do not. Second, whether each of the various mirrors are: (1)
movable and (2) assigned to a specific spectral channel. While the channel micromirrors
necessarily have these attributes, the others are not so limited.
Not all mirrors in the Asserted Patents are “channel micromirrors.” For example, the Asserted
Patents provide that “[t]he channel micromirrors may be provided by silicon micromachined
mirrors, reflective ribbons (or membranes), or other types of beam-deflecting elements known in
the art.” ’905 Patent col.9 ll.22–25. As set forth above in the section on beam-deflecting elements,
the Court is not convinced that micromachined mirrors, ribbons, and beam-deflecting elements are
species of channel micromirrors. Rather, these are elements that can “provide” the channel
micromirrors. The patents also describe mirrors that work with channel micromirrors but are not,
and do not provide, the channel micromirrors. See, e.g., id. at fig.2A, col.9 l.57 – col.10 l.11
(describing “collimator-alignment mirrors 220-1 through 220-N” that are distinct from the channel
micromirrors). Finally, the fact that some claims recite “channel micromirrors” and others claims

46

Declaration of Dr. Alexander V. Sergienko in Support of the Patent Owner Response, Cisco
Systems, Inc. v. Capella Photonics, Inc., IPR2015-00726 (Patent No. RE42,368) (P.T.A.B. Dec.
23, 2015), exhibit 2033.
47
Declaration of Dr. Alexander V. Sergienko in Support of the Patent Owner Response, Cisco
Systems, Inc. v. Capella Photonics, Inc., IPR2015-00727 (Patent No. RE42,678) (P.T.A.B. Dec.
23, 2015), exhibit 2033.
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recite other types of mirrors suggest that not all mirrors in the claims are channel micromirrors.
See Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012)
(recognizing “when different words are used in separate claims, they are presumed to have
different meanings” (internal citation omitted)).
The Asserted Patents describe movability and assignment to a specific spectral channel as
inherent features of the channel micromirrors of the present invention. For instance, the patents
provide:
The channel micromirrors are individually controllable and movable, e.g.,
continuously pivotable (or rotatable), so as to reflect the spectral channels into
selected ones of the output ports. As such, each channel micromirror is assigned
to a specific spectral channel, hence the name “channel micromirror”. And each
output port may receive any number of the reflected spectral channels.
A distinct feature of the channel micromirrors in the present invention, in
contrast to those used in the prior art, is that the motion, e.g., pivoting (or
rotation), of each channel micromirror is under analog control such that its pivoting
angle can be continuously adjusted. This enables each channel micromirror to scan
its corresponding spectral channel across all possible output ports and thereby direct
the spectral channel to any desired output port.
’905 Patent col.4 ll.11–26 (emphasis added); see also, id. at col.7 ll.26–29 (“As such, each channel
micromirror is assigned to a specific spectral channel, hence the name “channel micromirror”.);
id. at col.8 ll.38–40 (“As described above, a unique feature of the present invention is that the
motion of each channel micromirror is individually and continuously controllable . . ..”). These
passages clearly establish that the term “channel micromirror” inherently carries the meaning that
it is assigned to a specific spectral channel and that the channel micromirrors of the “present
invention” are inherently movable.
Accordingly, the Court rejects Defendants’ proposed constructions, determines that
“mirror[s],” “micromirror[s],” and “micromachined mirror[s]” have their plain and ordinary

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meanings without the need for further construction, and construes “channel micromirror” as
follows:
•

“channel micromirror” means “movable micromirror assigned to a specific
spectral channel.”

K.

“corresponding”

Disputed Term
“corresponding”
•
•

’905 Patent Claims 23,
47, 49, 51
’906 Patent Claims 68,
89, 100, 115, 133

Plaintiff’s Proposed
Construction
Plain and ordinary meaning.

Defendants’ Proposed
Construction
in one-to-one correspondence

Alternatively,
• assigned

The Parties’ Positions
Plaintiff submits: The term “corresponding” is used in a variety of contexts in the Asserted
Patents and is not limited to a “one-to-one correspondence.” Limiting “corresponding” to a oneto-one correspondence would improperly limit language in some claims and render language in
other claims superfluous. And the patents express “one-to-one correspondence” where that
meaning is intended. Dkt. No. 72 at 29–30.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’905 col.7 ll.42–45, col.7 ll.57–61, col.10
ll.2–9, col.13 ll.16–21. Extrinsic evidence: Sergienko Decl. ¶¶ 152–54 (Dkt. No. 72-1).
Defendants respond: The language of the claims requires one-to-one correspondence. And as
described in the Asserted Patents, each spectral channel is necessarily associated with one beamdeflecting element. Dkt. No. 80 at 32–34.

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In addition to the claims themselves, Defendants cite the following intrinsic evidence to
support their position: ’905 Patent col.4 ll.14–16, col.4 ll.23–26, col.7 ll.12–20, col.7 ll.26–27,
col.8 ll.42–45, col.8 ll.64–67, col.10 ll.2–9, col.13 ll.16–21.
Analysis
The issue in dispute distills to whether “corresponding” in the claims necessarily requires a
one-to-one correspondence. It does not.
Defendants have not identified anything that rises to the exacting standard for lexicography
or disclaimer such that “corresponding” should be limited to one-to-one correspondence. The
Asserted Patents use the term “one-to-one correspondence” in describing certain embodiments.
See, e.g., ’905 Patent col.7 ll.12–17 (“The diffraction grating 101 angularly separates the multiwavelength optical signal into multiple spectral channels, which are in turn focused by the focusing
lens 102 into a spatial array of distinct spectral spots (not shown in FIG. 1A) in a one-to-one
correspondence.”), col.10 ll.2–5 (“The collimator-alignment mirrors 220-2 through 220-N are
designated to the output ports 110-2 through 110-N in a one-to-one correspondence . . ..”). The
fact that this correspondence is expressed as “one-to-one” correspondence suggests that
“correspondence” is not inherently one-to-one. See Phillips v. AWH Corp., 415 F.3d 1303, 1314
(Fed. Cir. 2005) (en banc) (noting that the use of the term “steel baffles” “strongly implies that the
term ‘baffles’ does not inherently mean objects made of steel”). This distinction also shows up in
the claims. For example, Claim 133 of the ’906 Patent provides “focusing said spectral channels
onto a spatial array of corresponding beam-deflecting elements, whereby each beam-deflecting
element receives one of said spectral channels.” ’906 Patent col.26 ll.10–13. This language
expresses that each “corresponding” element “receives one of” the channels. That such a limitation
is expressed in the claims suggests that it is not inherent to “corresponding,” as would be the case

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if corresponding necessarily required one-to-one correspondence. On balance, the evidence
suggests that “corresponding” alone does not carry the meaning Defendants advocate.
Accordingly, the Court rejects Defendants’ proposed construction and determines that
“corresponding” has its plain and ordinary meaning without the need for further construction.
L.

“. . . individually . . . controllable,” “. . . individually pivotable”

Disputed Term
“said elements being
individually . . . controllable”
•

Plaintiff’s Proposed
Construction
plain an ordinary meaning

’905 Patent Claims 23,
47, 49

“said channel micromirrors . .
. being individually . . .
controllable”
•

Defendants’ Proposed
Construction
each [channel micromirror (as
construed) / beam-deflecting
element (as construed)] being
[controlled (as construed) /
pivoted] separately from all
other [channel micromirrors
(as construed) / beamdeflecting elements (as
construed)]

’906 Patent Claims 68,
115

“said channel micromirrors
being individually
controllable”
•

’906 Patent Claim 89

“said channel micromirrors
being individually . . .
controllable”
•

’906 Patent Claim 100

“said auxiliary channel
micromirrors are individually
pivotable”
•

’906 Patent Claim 127
Because the parties’ arguments and proposed constructions with respect to these terms are

related, the Court addresses the terms together.

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The Parties’ Positions
Plaintiff submits: The word “individually” in these terms “is used in a normal sense to mean
that each element can be controlled.” While the individual beam-deflecting elements may be
controlled separately from the other beam-deflecting elements, “separate control is not required.”
Dkt. No. 72 at 30–31.
In addition to the claims themselves, Plaintiff cites the following intrinsic and extrinsic
evidence to support its position: Intrinsic evidence: ’905 Patent col.4 ll.11–14, col.5 l.64 – col.6
l.2. Extrinsic evidence: Sergienko Decl. ¶¶ 155–56 (Dkt. No. 72-1).
Defendants respond: The word “individually” in these terms “is used in its ordinary sense to
mean that each element or micromirror is being controlled separately from the other elements or
micromirrors.” Dkt. No. 80 at 30–31.
In addition to the claims themselves, Defendants cite the following intrinsic and extrinsic
evidence to support their position: Intrinsic evidence: ’905 Patent col.5 l.64 – col.6 l.2, col.9 ll.26–
29. Extrinsic evidence: The American Heritage Dictionary at 658 (2d college ed. 1991),
“individually” (Defendants’ Ex. Z, Dkt. No. 80-27 at 4); Webster’s New World Dictionary at 688
(3d college ed. 1994), “individually” (Defendants’ Ex. AA, Dkt. No. 80-28 at 4).
Analysis
The issue in dispute appears to distill to whether individually controllable elements are
necessarily controlled separately from other elements. They are not necessarily controlled
separately, but they are necessarily separately controllable.
Each of these terms is directed to capability rather than action. As recited, each of the elements
(or micromirrors or channel micromirrors) is individually “controllable” or “pivotable.” This
plainly does not require actual control, individual or otherwise. Thus, the Court rejects Defendants’

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proposed “being controlled” and “being pivoted” language. Further, the claim language does not
preclude any capability. Thus, elements that are controllable both individually and collectively are
still controllable individually. Even if at times, in operation, they are controlled collectively.
Accordingly, the Court construes these terms as follows:
•

“said elements being individually . . . controllable” means “each of the elements
being controllable separately from the other elements”;

•

“said channel micromirrors . . . being individually . . . controllable” means “each
of the micromirrors being controllable separately from the other micromirrors”;

•

“said channel micromirrors being individually controllable” means “each of the
channel micromirrors being controllable separately from the other channel
micromirrors”;

•

“said channel micromirrors being individually . . . controllable” means “each of
the channel micromirrors being controllable separately from the other channel
micromirrors”; and

•

“said auxiliary channel micromirrors are individually pivotable” means “each of
the auxiliary channel micromirrors being pivotable separately from the other
auxiliary channel micromirrors.”

IV.

CONCLUSION
The Court adopts the constructions above for the disputed terms. Furthermore, the parties

should ensure that all testimony that relates to the terms addressed in this Order is constrained by
the Court’s reasoning. However, in the presence of the jury the parties should not expressly or
implicitly refer to each other’s claim construction positions and should not expressly refer to any
portion of this Order that is not an actual construction adopted by the Court. The references to the

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claim construction process should be limited to informing the jury of the constructions adopted by
the Court.
SIGNED this 3rd day of January, 2012.
SIGNED this 9th day of February, 2021.

____________________________________
ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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