Trials@uspto.gov
`571-272-7822
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`Paper 45
`Date: June 19, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BAE SYSTEMS INFORMATION AND ELECTRONIC SYSTEMS
`INTEGRATION, INC.,
`Petitioner,
`
`v.
`
`CHEETAH OMNI, LLC,
`Patent Owner.
`____________
`
`Case IPR2013-00175
`Patent 7,633,673 B1
`____________
`
`
`
`
`Before STEPHEN C. SIU, JUSTIN T. ARBES, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`BACKGROUND
`I.
`Petitioner, BAE Systems Information and Electronic Systems Integration,
`
`Inc. (“BAE”), filed a petition on March 4, 2013, requesting inter partes review of
`claims 1, 4, 13–15, 17, and 19 of U.S. Patent No. 7,633,673 B1 (“the ’673 patent”).
`(Paper 1, “Pet.”). Patent Owner, Cheetah Omni, LLC (“Cheetah”), filed a
`preliminary response opposing institution of review. Paper 12. On July 3, 2013,
`we instituted an inter partes review of claims 1, 4, 13–15, 17, and 19 of the ’673
`patent (Paper 15) (“Dec. on Inst.”).
`
`Subsequent to institution, Cheetah filed a Patent Owner Response (Paper 27)
`(“PO Resp.”), and BAE filed a Reply (Paper 30) (“Pet. Reply”). Along with its
`Patent Owner Response, Cheetah filed a Motion to Amend (Paper 28) (“Mot.”).
`BAE filed an Opposition to Cheetah’s Motion to Amend (Paper 31) (“Opp.”), and
`Cheetah filed a Reply in support of its Motion (Paper 32) (“PO Reply”). BAE
`initially requested an oral hearing, which we granted, and Cheetah did not file a
`request for oral argument. Papers 43, 44. BAE subsequently contacted the Board
`to indicate its belief that a hearing was not necessary. Paper 44. Based on the
`parties’ representations, we determined that a hearing was not necessary for a
`decision in this trial. Id.
`The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
`decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that BAE has shown by a
`preponderance of the evidence that claims 1, 4, 13–15, 17, and 19 of the ’673
`patent are unpatentable, and we deny Cheetah’s Motion to Amend.
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`A. The ʼ673 Patent
`The ʼ673 patent is directed to systems and methods for generating infrared
`
`light with wavelength in the mid-infrared (IR) range. Ex. 1001, Title, Abstract.
`Some of the embodiments described by the ’673 patent use a Raman wavelength
`shifter that is coupled to a pump laser to produce a longer wavelength. Ex. 1001,
`14:65–67. A “Raman wavelength shifter” refers to any device that uses the Raman
`effect to shift a shorter optical signal wavelength to a longer optical signal
`wavelength. Ex. 1001, 15:1–3. “Raman effect” is caused by inelastic scattering of
`a photon during an interaction with an atom or molecule, causing the photon to
`gain or lose energy with a corresponding decrease or increase in wavelength,
`respectively. Pet. 13 (citing Ex. 1013).
`
`
`B. Challenged Claims
`Claims 1 and 13 are independent claims. The remaining challenged claims
`depend from either claim 1 or claim 13. Claim 1 is representative of the
`challenged claims and is reproduced below.
`1. A mid-infrared light source, comprising:
`
`a multiplexer operable to combine a first laser signal and a
`second laser signal to generate a first optical signal, the first optical
`signal comprising one or more wavelengths;
`
`a gain fiber coupled to the multiplexer and operable to receive
`at least the first optical signal, the gain fiber comprising a first
`waveguide structure;
`
`a second waveguide structure coupled to the gain fiber and
`operable to wavelength shift at least one wavelength of the first
`optical signal to a longer wavelength optical signal, the longer
`wavelength optical signal comprising a wavelength in the range of 1.7
`microns or more, the second waveguide structure comprising a
`wavelength shifting fiber coupled to a nonlinear element, wherein the
`wavelength shifting fiber operates to wavelength shift the at least one
`wavelength of the first optical signal to a second optical wavelength
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`and the nonlinear element operates to wavelength shift the second
`optical wavelength to the longer wavelength optical signal, and
`wherein the wavelength shifting fiber is substantially different than
`the nonlinear element.
`
`
`
`
`C. Prior Art
`The pending grounds of unpatentability in this inter partes review are based
`
`on the following prior art.
`Patent No.
`Filing Date
`6,229, 828
`July 27, 1998
`(“Sanders”)
`
`Issue Date
`May 8, 2001
`
`Exhibit No.
`1010
`
`
`Pet. 8. BAE also relies on a declaration submitted by David A. Smith, Ph.D.
`(“Smith Decl.”) (Ex. 1011).
`
`
`D. Pending Grounds of Unpatentability
`We instituted an inter partes review of the ’673 patent based on the
`following grounds:
`1.
`Claims 1, 4, 13, 15, 17, and 19 as anticipated by Sanders under
`35 U.S.C. § 102(b); and
`2.
`Claim 14 as unpatentable over Sanders under 35 U.S.C. § 103(a).
`Dec. on Inst. 20.
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`II. ANALYSIS
`
`
`
`
`
`A. Claim Construction
`Consistent with the statute and the legislative history of the AIA, the Board
`interprets claims by applying the broadest reasonable construction in the context of
`the specification in which the claims reside. 37 C.F.R. § 42.100(b); see Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). The
`words of the claim will be given their plain meaning unless the plain meaning is
`inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
`“There are only two exceptions to the general rule that a claim term is given its
`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 a claim term
`either in the specification or during prosecution.” See Thorner v. Sony Computer
`Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “Although an inventor is
`indeed free to define the specific terms used to describe his or her invention, this
`must be done with reasonable clarity, deliberateness, and precision.” In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Also, we must be careful not to
`read a particular embodiment appearing in the written description into the claim if
`the claim language is broader than the embodiment. See In re Van Geuns, 988
`F.2d 1181, 1184 (Fed. Cir. 1993) (“limitations are not to be read into the claims
`from the specification”).
`1. “Gain fiber”
`Independent claims 1 and 13 require “a gain fiber coupled to the multiplexer
`
`and operable to receive at least the first optical signal.”
`
`In our Decision to Institute, based on testimony by BAE’s declarant and the
`’673 patent Specification, we interpreted “gain fiber” in claims 1 and 13 as “an
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`optical fiber that functions as a gain medium (i.e., amplifies an input signal).”
`Dec. on Inst. 10.
`
`Cheetah argues that our construction improperly narrows the claims. PO
`Resp. 3, 12. In support, Cheetah states that the claim language contains no
`limitation indicating that the gain fiber is functioning as a gain medium. Id. at 12.
`According to Cheetah, the patentee has acted at least partially as his own
`lexicographer. Id. at 13. Cheetah points to disclosure from the ’673 patent
`Specification stating that “a gain fiber 804 [is] operable to facilitate shifting pump
`signal 810 to a desired wavelength,” “[g]ain fiber 804 may comprise any
`waveguide structure capable of wavelength shifting pump signal 810 to a longer
`wavelength,” and “[i]n this particular embodiment, gain fiber 804 comprises an
`optical fiber.” Id. at 12–13 (citing Ex. 1001, 17:18–27). With respect to the part
`of our construction “(i.e., amplifies an input signal),” Cheetah notes that the ’673
`patent Specification does not contain the terms “amplify or “amplifies.” Id. at 13.
`
`Cheetah’s proposed construction for “gain fiber” is “an optical fiber
`comprising any waveguide structure.” Id. at 14. According to Cheetah, its
`proposed construction includes language from the Specification, and is broad
`enough to include the teachings in the Specification and the understanding of a
`person of ordinary skill in the art as attested to by BAE. Id.
`
`BAE responds that Cheetah’s proposed construction renders the term “gain”
`surplusage because that construction does not require amplification of the input
`signal. Pet. Reply 9–10 (citations omitted). Further, BAE notes that the ’673
`patent Specification states that “gain fiber 804” is a “gain medium.” Id. at 10.
`Cheetah does not address this disclosure from the specification. See PO Resp. 12–
`13.
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`Cheetah’s proposed construction is incorrect because the ’673 patent
`
`Specification does not limit “gain fiber” to a waveguide structure, but rather
`discloses that a gain fiber “may comprise” any waveguide structure. Ex. 1001,
`17:18–27. We further agree that Cheetah’s proposed construction for “gain fiber”
`would read out the term “gain.”1 See Pet. Reply 9–10. BAE’s declarant states that
`“gain fiber” would have been understood by a person of ordinary skill in the art to
`mean “an optical fiber that operates to amplify an input signal.” Ex. 1011 ¶ 22.
`Cheetah does not contest this testimony. See PO Resp. 13. As we noted in our
`Decision (Dec. on Inst. 10), the ’673 patent Specification’s disclosure of “gain
`fiber” is consistent with this ordinary meaning. In particular, the ’673 patent
`Specification refers to “[g]ain fiber 804” as a “gain medium.” Ex. 1001, 17:18–27,
`17:42. As Cheetah notes, however, the ’673 patent Specification states that the
`gain fiber is “operable” to facilitate shifting a signal to a desired wavelength. Id. at
`17:18–27.
`
`Accordingly, we modify our initial construction of “gain fiber,” and interpret
`the term to mean “an optical fiber that is operable as a gain medium (i.e., amplifies
`an input signal).”
`2. Other Terms
`In the Decision on Institution, we interpreted one other claim term as
`follows. We interpreted “wavelength shift,” appearing in claims 1 and 13, as
`“receiving at least one input wavelength and emitting at least one output
`wavelength that is different from the input wavelength.” Dec. on Inst. 10–11.
`Neither party disputes that interpretation, and we apply it in this decision, for the
`reasons stated in the Decision on Institution.
`
`
`1 Moreover, as discussed below, even if we were to adopt Cheetah’s proposed
`construction of “gain fiber,” it would not change our analysis.
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`B. Anticipation by Sanders (Ex. 1010)
`With respect to our review of BAE’s contention that claims 1, 4, 13, 15, 17,
`
`and 19 are anticipated by Sanders, we have reviewed BAE’s Petition, Cheetah’s
`Patent Owner Response, and BAE’s Reply, as well as the evidence discussed in
`each of those papers. We are persuaded by a preponderance of the evidence that
`claims 1, 4, 13, 15, 17, and 19 are anticipated by Sanders. See Pet. 15–27, 28–30,
`32–44 (claim charts).
`
`Claim 13
`
`Cheetah argues that Sanders’s nonlinear frequency mixing (“NFM”) device
`(element 114 of Figure 19) does not satisfy the claimed “nonlinear oscillator” of
`independent claim 13, and thus, Sanders does not anticipate claims 13 or its
`dependent claims. PO Resp. 3, 8. Claim 13 recites “the wavelength shifting
`structure comprising a wavelength shifting fiber coupled to a nonlinear oscillator.”
`Cheetah also notes that claim 4, depending from claim 1, further limits the recited
`“nonlinear element” of claim 1 to be a “nonlinear oscillator.” Id.
`
`BAE contends that Sanders’s NFM device 114, illustrated in Figure 19,
`corresponds to the recited “nonlinear oscillator” of claim 13. Pet. 26. BAE notes
`that Sanders states that NFM device 114 shown in Figure 19 may be a quasi-phase
`matching (QPM) optical parametric oscillation (OPO) device. Id. (citing Ex. 1010,
`21:1–3) (emphasis added); see Ex. 1010, 8:13–14. Sanders expressly states the
`following.
`The combined outputs of wavelengths λ1 and λ2 from Raman fiber
`oscillator 112 is provided as input to NFM device 114, e.g., QPM
`DFM or QPM OPO devices.
`
`Ex. 1010, 21:1–3. Figure 19 of Sanders is reproduced below.
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`Figure 19 illustrates NFM device 114.
`
`Cheetah argues that Sanders’s NFM device 114 is a QPM difference
`frequency mixing (“DFM”) device, not a QPM OPO device, as BAE asserts. PO
`Resp. 3–8. Cheetah states that a QPM DFM device accepts light at two
`wavelengths and mixes them to produce light at a third wavelength (two input
`wavelengths and one output wavelength), whereas a QPM OPO device accepts
`light at one wavelength and mixes it with internally generated light at a second
`wavelength to produce light at the third wavelength (one input wavelength and one
`output wavelength). PO Resp. 5–6. Cheetah states that a NFM device comprising
`a QPM DFM device is illustrated in Figure 1A of Sanders. Id. at 4 (citing Ex.
`1010, 6:50–7:13); see Ex. 1016 ¶ 4. Figure 1A of Sanders is reproduced below.
`
`
`Sanders explains that Figure 1A illustrates a NFM device comprising a QPM DFM
`device wherein beams λ1 and λ2 from two different light sources are combined and
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`provided as input to QPM DFM device 16, which generates a frequency mixed
`beam having wavelength λ3. Ex. 1010, 6:50–7:13. Cheetah states that a NFM
`device comprising a QPM OPO device is illustrated in Figure 1D. PO Resp. 5
`(citing Ex. 1001, 8:8–20); see Ex. 1016 ¶ 4. Figure 1D is reproduced below.
`
`
`
`
`Sanders explains, with respect to Figure 1D, that pumping source 10 having a
`pumping wavelength λ1 is coupled to NFM device 16 comprising a QPM OPO
`device, which functions as an “oscillator creating within its optical cavity a second
`shifted wavelength, λ2, which is difference frequency mixed” with pumping
`wavelength λ1 to produce wavelength λ3. Ex. 1010, 8:8–20.
`
`According to Cheetah, the NFM device of Figure 19 is an embodiment of a
`QPM DFM, illustrated in Figure 1A because there are two input wavelengths, λ1
`and λ2. PO Resp. 6-7. Cheetah emphasizes (id.) the following disclosure from
`Sanders relating to Figure 19.
`The output from Raman fiber oscillator 112 is coupled into NFM
`device 114 for mixing of combined wavelengths λ1, λ2, i.e., is the
`difference between the Raman shifted beam and the transmitted pump
`beam from source 61.
`
`Ex. 1010, 21:9–13. Thus, according to Cheetah, NFM device 114 has light at λ1
`and λ2 as its input, and mixes them to produce light at wavelength λ3. PO Resp. 7.
`According to Cheetah, it is consistent with Figure 1A for Sanders to state that
`NFM device 114 could be a QPM DFM device, but that it was a “drafting error” to
`imply that NFM device 114 could be a QPM OPO because Sanders does not teach
`a QPM OPO that mixes two inputs λ1 and λ2. Id.
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`Cheetah further argues that Figure 15 of Sanders affirms that a QPM OPO
`
`device mixes one input at λ1 with internally generated light at λ2. Id. at 7–8.
`Figure 15 of Sanders is reproduced below.
`
`
`
`
`Figure 15 includes QPM OPO device 74. Ex. 1010, 18:48–65. Sanders states that
`wavelength λ1 is coupled into OPO resonator 74, which includes external cavity
`focusing mirrors 73 and 75. Id. Mirror 73 is transparent to wavelength λ1, but is
`highly reflective of internally developed wavelength λ2, whereas mirror 75 is
`transparent to developed wavelength λ3, and highly reflective of internally
`developed wavelength λ2. Id. Thus, contends Cheetah, the NFM components of
`Figures 15 and 19 are not combinable because inserting the Figure 15 QPM OPO
`into the Figure 19 system results in the Figure 19 λ2 being reflected back into the
`fiber by mirror 73 and discarded. PO Resp. 8. Cheetah states that “[i]n no case
`would the QPM OPO of Fig. 15 mix λ1 with Fig. 19 λ2.” Id.
`We agree with BAE that Cheetah’s attorney argument is not persuasive. See
`
`Pet. Reply 1. Instead, we are persuaded by the express disclosure of Sanders that
`NFM device 114 may be a QPM DFM or QPM OPO device, and do not view that
`express disclosure as merely a drafting error, as Cheetah suggests. Ex. 1010, 21:1–
`3 (“NFM device 114, e.g., QPM or QPM OPO devices”). We further find
`persuasive BAE’s testimony from Dr. David A. Smith that a person of ordinary
`skill in the art would understand that a QPM DFM device and QPM OPO device
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`operate fundamentally in the same way—“by mixing two wavelengths to generate
`a third wavelength,” and only differ with regard to the source of the second
`wavelength. Ex. 1016 ¶ 4. Dr. Smith’s uncontested testimony is that a person of
`ordinary skill in the art would recognize that NFM device 114, illustrated in Figure
`19, can function as a QPM OPO device (as Sanders expressly states) by using
`wavelength λ2 as the input wavelength to NFM device 114, internally generating
`another wavelength λ4 (not shown), and mixing λ2 with λ4 to generate λ3. Ex. 1016
`¶ 6.2
`Dr. Smith further refers to Figure 153 to explain that the additional input
`
`wavelength λ1, as illustrated in Figure 19, would not adversely affect the
`conversion of the wavelength λ2 by the NFM device functioning as a QPM OPO
`device. Id. According to Dr. Smith, the QPM OPO device, illustrated as element
`74 in Figure 15, may include crystal 72 for phase matching the input wavelength.
`Id. (citing Ex. 1010, 18:57–60). For example, asserts Dr. Smith, crystal 72 could
`be designed to receive the second wavelength λ2 (1.44 μm), generate the internal
`wavelength λ4 (e.g., 2.25 μm), and mix λ2 with λ4 to generate the third wavelength
`λ3 (e.g., 4.0 μm). Id. (citing Ex. 1010, 19:3–9, 2:59–62, 7:63–67). As Dr. Smith
`explains, a person of ordinary skill in the art would understand that λ1 would have
`no effect on the wavelength conversion from λ2 to λ3, because phase matching
`would not occur for λ1 if crystal 72 was designed to phase match with wavelength
`λ2. Id. Thus, we determine that Sanders discloses NFM device 114, illustrated in
`
`
`2 BAE notes that in Figures 1D and 15 of Sanders, the input wavelength to the
`NFM device is λ1, the mixing wavelength is λ2, and the NFM output wavelength is
`λ3, whereas in Figure 19 the input wavelength is λ2, the mixing wavelength is λ4
`(not shown), and the NFM output wavelength is λ3. Pet. Reply 3 n.1.
`3 Figure 15 is a NFM device that operates as a QPM OPO device. Ex. 1010,
`18:46–49.
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`Figure 19 of Sanders, as a QPM OPM device. Cheetah has not disputed that a
`QPM OPM device satisfies the claimed “nonlinear oscillator” of independent claim
`13.
`Cheetah further argues that Sanders does not disclose the limitations that
`
`“the wavelength shifting fiber operates to wavelength shift the at least one
`wavelength . . . to a second optical wavelength,” and that “the nonlinear oscillator
`operates to wavelength shift the second optical wavelength” to a third wavelength,
`as recited in claim 13. PO Resp. 10. Cheetah asserts that Sanders discloses
`shifting only “a portion” of the radiation beam at wavelength λ1 from the pump
`source to a second wavelength λ2, and that the output from Raman fiber oscillator
`112 is coupled into NFM device 114 for “‘mixing of combined λ1, λ2.’” Id.
`(quoting Ex. 1010, 20:63–21:11) (emphasis omitted). Cheetah contends that
`Sanders teaches a different system than the one recited in claim 13, where Raman
`fiber oscillator 112 shifts only a portion of its input wavelength because NFM
`mixing device 114 needs both λ1 and λ2. Id. at 11.
`
`We are not persuaded by Cheetah’s argument. Cheetah has not shown that
`the limitations require shifting the entire wavelength, as opposed to a portion of
`the wavelength, as admittedly disclosed by Sanders. See id. at 10–11.
`Furthermore, Cheetah’s argument that Sanders discloses a NFM device that mixes
`two input wavelengths, λ1 and λ2, as opposed to a nonlinear oscillator that shifts a
`second wavelength to a third wavelength as claimed, is based on its assertion that
`NFM device 114 is a QPM DFM device (id. at 11). As discussed above, we
`determine that NFM device 114 is not limited to a QPM DFM device.
`
`Furthermore, our construction of “gain fiber” does not affect our finding that
`Sanders discloses the claimed “gain fiber.” Dec. on Inst. 12–13. As we found in
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`our Decision on Institution, fiber amplifier 69A, illustrated in Figure 11,4 receives
`the optical signal from the beam combiner 67A, amplifies the signal, and further
`guides the received signal into the inner cladding 69C and core 69B of first
`amplifier 69A, and thus, satisfies the “gain fiber” limitation. See Ex. 1010, Fig. 11,
`16:22–28, 17:12–19.
`
`Claim 1
`
`Claim 1 recites “the nonlinear element operates to wavelength shift the
`second optical wavelength to the longer wavelength optical signal.” Cheetah
`argues that Sanders does not anticipate claim 1 based on the same arguments
`asserted in support of claim 13. Specifically, Cheetah contends that Sanders does
`not teach the claimed “nonlinear element” of claim 1. PO Resp. 11. For the
`reasons discussed above, we do not find those arguments persuasive.
`
`BAE further contends that even if the NFM device 114 of Figure 19 is a
`QPM DFM device, it corresponds to the recited “nonlinear element” of claim 1.
`Pet. Reply 7–8. We agree. Sanders explains that the output from fiber oscillator
`112, λ1 and λ2, is input into NFM device 114 for mixing of the combined
`wavelengths to output a resulting wavelength. Ex. 1010, 21:9–18. As an example,
`wavelength λ1 may be between about 1030 nm to 1090 nm, and wavelength λ2 may
`be between about 1.44 µm, and the resulting wavelength after mixing will be a
`mid-IR wavelength between about 3.6 nm and 4.5 nm.5 Id. at 21:13–18. BAE
`asserts that as its name indicates, the “nonlinear” frequency mixing device, i.e.,
`
`4 High power source 61 illustrated in Figure 11, which includes fiber amplifier
`69A, is incorporated into Figure 19. Ex. 1010, Figs. 11, 19.
`5 BAE notes that there is a typographical error in Sanders because although
`Sanders states that the resulting wavelength after mixing is between approximately
`3.6 nm and 4.5 nm, Sanders states that the resulting wavelength is a “mid-IR
`wavelength,” and thus, the units are µm, and not nm. Pet. Reply 8 n.4 (citing Ex.
`1010 at 21:17–18).
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`NFM device 114, is a “nonlinear element,” as recited in claim 1, and it shifts
`wavelength λ2 from approximately 1.44 µm to a longer wavelength of
`approximately 3.6 µm to 4.5 µm. Pet. Reply 8. Dr. Smith’s testimony supports
`BAE’s argument that NFM device 114 satisfies the “nonlinear element” recited in
`claim 1. Ex. 1011 ¶ 33. Therefore, we determine that BAE has shown by a
`preponderance of the evidence that even if NFM device 114 is a QPM DFM
`device, it satisfies the recited “nonlinear element” of claim 1.
`
`BAE’s Reply also refers to Figure 20 of Sanders as describing all of the
`limitation of claims 1, 4, 13, 15, 17, and 19. Pet. Reply 5–7. Although BAE cited
`Figure 20 in its Petition, it did not develop this particular argument in its Petition.
`See e.g., Pet. 20, 32–35 (claim chart for claim 1 showing that Sanders discloses the
`limitations of claims, 1, 4, 13, 15, 17, and 19). Thus, given that this is a newly
`raised argument, we decline to consider this argument in this decision. See 37
`C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the
`corresponding opposition or patent owner response.”)
`
`Conclusion
`Accordingly, based on the record evidence, in light of the arguments
`presented, BAE has shown, by a preponderance of the evidence, that independent
`claims 1 and 13, as well as claims 4, 15, 17, and 19 depending therefrom, are
`anticipated by Sanders.
`C. Obviousness Over Sanders (Ex. 1010)
`With respect to our review of BAE’s contention that claim 14 is rendered
`
`obvious by Sanders, we have reviewed BAE’s Petition, Cheetah’s Patent Owner
`Response, and BAE’s Reply, as well as the evidence discussed in each of those
`papers. Cheetah does not raise any arguments with respect to BAE’s challenge
`that claim 14 is rendered obvious by Sanders. See PO Resp. 2–3. We are
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`persuaded, by a preponderance of the evidence, that claim 14 would have been
`obvious over Sanders. See Pet. 40–41 (claim charts).
`D. Cheetah’s Motion to Amend
`Cheetah filed a Motion to Amend Claims. In its motion to amend, Cheetah
`
`proposes substitute claims 21–26, to replace claims 1, 4, 13, and 15. Mot. 2.
`Cheetah’s motion is contingent, meaning that a proposed substitute claim is at
`issue and would be considered only if the claim it replaces, i.e., an original claim
`or a prior proposed substitute claim, is found unpatentable. Id. Specifically,
`Cheetah proposes the following.
`If [claim 1] is found unpatentable, please replace claim 1 with
`substitute claim 21. If substitute claim 21 is found unpatentable,
`please replace claim 1 . . . with substitute claim 22. If claims 21 and 4
`are both found unpatentable, please replace claim 4 with substitute
`claim 23. If claim 13 is found unpatentable, please replace claim 13
`with substitute claim 24. If substitute claim 24 is found unpatentable,
`please replace claim 13 . . . with substitute claim 25. If claims 24 and
`15 are found unpatentable, please replace claim 15 with substitute
`claim 26.
`Id. Because we have determined that original claims 1 and 13 are unpatentable, we
`reach the merits of Cheetah’s motion.
`As the moving party, Cheetah bears the burden of proof to establish that it is
`entitled to the relief requested. 37 C.F.R. § 42.20(c). Entry of the proposed
`amendments is not automatic, but only upon Cheetah having demonstrated the
`patentability of those claims.
`Cheetah’s proposed substitute claims 21 and 22 are illustrative of the
`proposed substitute claims. Substitute claims 21 and 22, with the new claim
`language added to original claim 1 underlined, are reproduced below.
`21. A mid-infrared light source, comprising:
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`a multiplexer operable to combine a first laser signal and a
`second laser signal to generate a first optical signal, the first optical
`signal comprising one or more wavelengths;
`a gain fiber coupled to the multiplexer and operable to receive
`at least the first optical signal, the gain fiber comprising a first
`waveguide structure;
`a second waveguide structure coupled to the gain fiber and
`operable to wavelength shift at least one wavelength of the first
`optical signal to a longer wavelength optical signal, the longer
`wavelength optical signal comprising a wavelength in the range of 1.7
`microns or more, the second waveguide structure comprising a
`wavelength shifting fiber coupled to a Q-switcher further coupled to a
`nonlinear element, wherein the wavelength shifting fiber operates to
`wavelength shift the at least one wavelength of the first optical signal
`to a second optical wavelength and the nonlinear element operates to
`wavelength shift the second optical wavelength to the longer
`wavelength optical signal, and wherein the wavelength shifting fiber
`is substantially different than the nonlinear element.
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`22. A mid-infrared light source, comprising:
`a multiplexer operable to combine a first laser signal and a
`second laser signal to generate a first optical signal, the first optical
`signal comprising one or more wavelengths;
`a gain fiber coupled to the multiplexer and operable to receive
`at least the first optical signal, the gain fiber comprising a first
`waveguide structure;
`a second waveguide structure coupled to the gain fiber and
`operable to wavelength shift at least one wavelength of the first
`optical signal to a longer wavelength optical signal, the longer
`wavelength optical signal comprising a wavelength in the range of 1.7
`microns or more, the second waveguide structure comprising a
`wavelength shifting fiber coupled to a Q-switcher further coupled to a
`nonlinear element, wherein the wavelength shifting fiber operates to
`wavelength shift the at least one wavelength of the first optical signal
`to a second optical wavelength and the nonlinear element operates to
`wavelength shift the second optical wavelength to the longer
`wavelength optical signal, and wherein the wavelength shifting fiber
`is substantially different than the nonlinear element, and wherein the
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`Q switcher produces an output signal having a pulse width in the
`range of two (2) nanoseconds to one hundred (100) milliseconds.
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`1. Written Description Support
`Cheetah’s substitute claim 21 is identical to original claim 1, except for the
`additional recital that the second waveguide structure comprises “a wavelength
`shifting fiber coupled to a Q-switcher further coupled to a nonlinear element.”
`Substitute claim 22 adds the same limitation, and also adds the limitation “and
`wherein the Q switcher produces an output signal having a pulse width in the range
`of two (2) nanoseconds to one hundred (100) milliseconds.” Mot. 3–7.
`In its motion, Cheetah contends that the subject matter of its proposed
`substitute claims have written description support in the specification of the ’673
`patent. Mot. 7. Rules 42.121(b)(1) and (2), however, require that a motion to
`amend set forth the support in the original disclosure of the patent for each claim
`that is added and the support in an earlier-filed disclosure for each claim for which
`the benefit of the filing date of the earlier filed disclosure is sought. 37 C.F.R.
`§ 42.121(b)(1), (2). For written description support for the proposed substitute
`claims, Cheetah refers to portions of the ’673 patent Specification only for the
`added limitations in its proposed substitute claims. Specifically, Cheetah refers to
`Figure 8D, and column 19, lines 20–39 of the ’673 patent Specification. Mot. 7.
`Such reference does not satisfy the requirements of Rule 42.121(b)(1) because the
`specification is not the original disclosure. Moreover, Cheetah cites alleged
`support in the specification for only the added Q-switcher limitations. Cheetah
`does not identify support in the original disclosure “for each claim” in its motion to
`amend, as a whole and including the Q-switcher limitations, as required by Rule
`42.121(b)(1). Cheetah, therefore, has not made a sufficient showing that its
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`proposed substitute claims, as a whole, have written description support in the
`original disclosure of the ’673 patent, and we deny the motion on that basis.
`2. Patentability of Substitute Independent Claims 21 and 24
`Even if Cheetah had satisfied the requirement to show sufficient written
`description support, it has not shown that proposed substitute claims 21 and 24 are
`patentable. In its motion, Cheetah states that in the related litigation in the United
`States Court of Federal Claims, BAE provided Cheetah with prior art references.
`Mot. 9.6 Cheetah asserts that it searched those prior art references for the term “Q
`switch,” and argues that those references disclose broad coverage of the use of Q-
`switchers, at a different point in their disclosed devices and for different purposes
`than those of the ’673 patent. Id. According to Cheetah, those references teach
`using Q-switchers within laser sources (e.g., Sanders’s Fig. 11, element 66A)