Paper 15
`Date: July 3, 2013
`
`
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`
`
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`Trials@uspto.gov
`571-272-7822
`
`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
`____________
`
`
`
`
`Before STEPHEN C. SIU, JUSTIN T. ARBES, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`
`ELLURU, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`I.
`
`BACKGROUND
`
`
`
`Petitioner BAE Systems Information and Electronic Systems Integration,
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`Inc. (“BAE Systems”) filed a petition on March 4, 2013, requesting inter partes
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`review of claims 1, 4, 13-15, 17, and 19 of U.S. Patent 7,633,673 (“the ’673
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`patent”). (“Pet” Paper No. 1.) The Patent Owner, Cheetah Omni, LLC
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`(“Cheetah”), filed a preliminary response opposing institution of review. (“Prelim
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`Resp.” Paper No. 12). We have jurisdiction under 35 U.S.C. §§ 6(b)(4) and 314.
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`The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a)
`
`which provides as follows:
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`THRESHOLD -- The Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information presented in
`the petition filed under section 311 and any response filed under section 313
`shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.
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`
`
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`
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`We determine based on the record that there is a reasonable likelihood that
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`BAE Systems would prevail in showing unpatentability of all the challenged
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`claims. Accordingly, we authorize an inter partes review to be instituted for the
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`’673 patent.
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`The ’673 patent is currently the subject of co-pending litigation styled,
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`Cheetah Omni, LLC v. United States, Case No. 1:11-cv-00255-FMA (Fed. Cl.)
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`(“the Federal Claims litigation”), discussed further below. (Pet. 4.)
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`A. Statutory Threshold Issues
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`1. One-year Statutory Bar
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`Cheetah alleges that BAE Systems’ petition is barred under 35 U.S.C.
`
`§ 315(b), which mandates that an inter partes review may not be instituted if the
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`petition is filed more than 1 year after the date on which the “petitioner, real party
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`
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`in interest, or privy of the petitioner” is served with a complaint alleging
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`infringement of the patent. (Prelim Resp. 7-13.) We determine that BAE Systems’
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`petition is not barred under § 315(b).
`
`Cheetah notes the following dates in support of its argument. On November
`
`12, 2010, Cheetah filed a patent infringement complaint in the U.S. District Court
`
`for the Eastern District of Texas asserting a claim for infringement of the ’673
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`patent against BAE Systems (“the Texas action”). (Ex. 1007.) Cheetah voluntarily
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`dismissed the Texas action on February 10, 2011. (Ex. 1008.) Cheetah
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`subsequently filed a complaint in the U.S. Court of Federal Claims against the
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`United States on April 22, 2011, asserting infringement of the ’673 patent and
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`identifying BAE Systems’ Boldstroke™ system as an infringing product. (Ex.
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`1003, ¶¶ 15-17.) On March 19, 2012, BAE Systems was served with a notice by
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`the Federal Claims court requesting BAE Systems to appear and assert any claims
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`or interest it may have in the subject matter of the Federal Claims litigation. (Exs.
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`1004, 1005.) BAE Systems filed the present petition on March 4, 2013. (Paper 1.)
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`Cheetah first alleges that BAE Systems’ petition was filed over two years
`
`after BAE Systems was served with a complaint in the Texas action. (Prelim.
`
`Resp. 3; Ex. 1007.) However, Cheetah voluntarily dismissed that action pursuant
`
`to Fed. R. Civ. P. 41(a) before any of the named defendants were required to
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`answer. (Pet. 6; Ex. 1008 (Stipulation of Dismissal).) As BAE Systems correctly
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`states, a voluntary dismissal of an infringement action nullifies the effect of the
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`alleged service of the complaint on the petitioner. See, e.g., Graves v. Principi,
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`294 F.3d 1350, 1356 (Fed. Cir. 2002) (“The dismissal of an action without
`
`prejudice leaves the parties as though the action had never been brought”); see also
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`IPR2012-00004 (Macauto U.S.A. v. BOS GMBH & KG at 15-16 (Paper 18, Ex.
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`1009)). Thus, the dismissal of the earlier Texas action against BAE Systems
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`
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`nullifies the effect of the alleged service of the complaint and did not trigger the
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`§ 315(b) one-year statutory bar.
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`Cheetah next alleges that BAE Systems’ petition is barred under § 315(b)
`
`because the United States is a privy of BAE Systems with regard to this matter and
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`the United States was served with the Federal Claims complaint on April 22, 2011,
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`more than 22 months before BAE Systems filed the instant petition. (Prelim. Resp.
`
`8-9.) The Federal Claims complaint alleges that the United States infringed the
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`’673 patent by using and soliciting the manufacture of infringing products,
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`including BAE Systems’ product, the Boldstroke™ system. (Ex. 1003, ¶¶ 15-17.)
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`Cheetah contends that the United States was a privy of BAE Systems pursuant to a
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`government contract wherein the United States was a customer of BAE Systems.
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`(Prelim. Resp. 10-13.) For instance, Cheetah contends that BAE Systems admits
`
`to being in privity with the United States as early as February 10, 2011, when the
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`Texas action was dismissed. In support, Cheetah refers to BAE Systems’
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`statement in the petition that the allegations of infringement in the Texas action
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`related to actions “performed solely in connection with contracts with the United
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`States government, and therefore the Patent Owner’s sole remedy was an action
`
`against the United States in the Court of Federal Claims.” (Prelim. Resp. 10; Pet
`
`6.) Cheetah also contends that BAE Systems and the United States were privies on
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`or before May 6, 2011, when BAE Systems’ attorney sent Cheetah a letter in
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`response to Cheetah’s suit against the United States. (Prelim. Resp. 10-11, Ex.
`
`1103.) In that letter, BAE Systems stated that the United States is BAE Systems’
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`customer, Boldstroke™ does not infringe the ’673 patent, and BAE Systems
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`intends to seek redress against Cheetah. (Ex. 1103.) In addition, Cheetah
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`contends that BAE Systems and the United States had established privity of
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`contract on or before January 31, 2012, when the Army awarded a contract to BAE
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`Systems pursuant to a United States solicitation, identified in the Complaint, for
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`the manufacture of allegedly infringing products. (Prelim. Resp. 11.) We are not
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`persuaded that the Unites States and BAE Systems were privies when Cheetah
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`served the complaint in the Federal Claims litigation or thereafter.
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`Cheetah’s only argument is that BAE Systems and the United States were in
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`“privity of contract” based on the fact that the United States was a customer of
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`BAE Systems. (Prelim. Resp. 10-13.) Apart from a legal dictionary definition of
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`“privity,” however, Cheetah does not provide any legal authority for this argument.
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`(See id. at 10.) Moreover, the parties’ property interests in BAE Systems’
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`allegedly infringing products, such as the Boldstrike™ identified in the Federal
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`Claims complaint, are irrelevant here because any such property interests are not at
`
`issue in this proceeding. See Shamrock Techs., Inc. v. Medical Sterilization, Inc.,
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`903 F.2d 789, 793 (Fed. Cir. 1990) (“What constitutes ‘privity’ varies, depending
`
`on the purpose for which privity is asserted.”). Patentability, not infringement, is
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`the issue before the Board in an inter partes review. See 35 U.S.C. § 311(b).
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`Thus, any privity stemming from interests in BAE Systems’ allegedly infringing
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`products does not apply to this patentability proceeding. See Int’l Nutrition Co. v.
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`Horphag Research, Ltd., 220 F.3d 1325, 1329 (Fed. Cir. 2000) (“[W]hen one party
`
`is a successor in interest to another with respect to a particular property, the parties
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`are in privity only with respect to an adjudication of rights in the property that was
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`transferred; they are not in privity for other purposes, such as an adjudication of
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`rights in other property that was never transferred between the two. Put another
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`way, the transfer of a particular piece of property does not have the effect of
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`limiting rights of the transferee that are unrelated to the transferred property”).
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`Thus, we are not persuaded on the record before us that the seller-customer
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`relationship between BAE Systems and the United States, pursuant to a
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`government contract, indicates that they were in privity as Cheetah suggests.
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`Moreover, we determine that the United States is not a privy of BAE
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`Systems with respect to this proceeding. Whether a non-party is a “privy” for
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`purposes of an inter partes review proceeding is a “highly fact-dependent
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`question” that takes into account how courts generally have used the terms to
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`“describe relationships and considerations sufficient to justify applying
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`conventional principles of estoppel and preclusion.” Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48756, 48759 (Aug. 14, 2012) (“Trial Practice Guide”).
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`Depending on the circumstances, a number of factors may be relevant to the
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`analysis, including whether the non-party “exercised or could have exercised
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`control over a party’s participation in a proceeding” or whether the non-party is
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`responsible for funding and directing the proceeding. Id. at 48759-60. Cheetah
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`neither alleges nor presents sufficient and credible evidence that the United States
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`exercises control over BAE Systems’ participation in this matter or that the United
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`States is responsible for funding and directing the proceeding. Because we
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`determine that the United States was not a privy of BAE Systems on the date the
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`United States was served with a complaint in the Federal Claims litigation or
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`thereafter, the § 315(b) statutory bar was not triggered by the service of the Federal
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`Claims complaint on the United States. We also note that on March 19, 2012,
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`BAE Systems was served with a Rule 14 Notice in the Federal Claims litigation
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`notifying BAE Systems to appear and assert any claim or interest it may have in
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`the subject matter of the litigation, and BAE Systems filed the instant petition less
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`than one year later on March 4, 2013. (Exs. 1004, 1005.) Thus, even assuming
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`that the Rule 14 Notice triggered the § 315(b) statutory bar (which we need not
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`decide for purposes of this proceeding), BAE Systems’ petition was timely filed.
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`2. Prior Consideration of Asserted Sanders Patent
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`
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`Cheetah maintains that the Board should decline to institute an inter partes
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`review of the instant petition pursuant to 35 U.S.C. § 325(d) because the Examiner
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`considered the asserted prior art during prosecution of the ’673 patent. We are not
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`persuaded by Cheetah’s argument.
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`Cheetah alleges that the Examiner considered a patent that is related to the
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`asserted Sanders patent and further that the Examiner was familiar with the entire
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`Sanders patent family, which Cheetah asserts consists of patents that are
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`substantially identical except in the claims. (Prelim Resp. 13-16.) Section 325(d)
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`provides the Director the authority not to institute inter partes review on the basis
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`that the same or substantially the same prior art or arguments were presented
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`previously to the Office, but does not mandate that result. 35 U.S.C. § 325(d).
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`Specifically, the statutory provision does not require the Director, in deciding
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`whether to institute inter partes review, to defer to a prior determination in the
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`Office, even one which considered similar prior art and arguments. As explained
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`below, we conclude that BAE Systems’ arguments with respect to the asserted
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`prior art have merit and, therefore, do not exercise our authority to decline an inter
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`partes review of the ’673 patent under § 325(d).
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`The invention of the ʼ673 patent is directed to systems and methods for
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`B. The ʼ673 Patent
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`generating infrared light with wavelength in the mid-infrared (IR) range. (Ex.
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`1001, Title, Abstract.) Some of the embodiments described by the ’673 patent use
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`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
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`device that uses the Raman effect to shift a shorter optical signal wavelength to a
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`longer optical signal wavelength. (Ex. 1001, 15:1-3.) “Raman effect” is caused by
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`inelastic scattering of a photon during an interaction with an atom or molecule,
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`causing the photon to gain or lose energy with a corresponding decrease or
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`increase in wavelength, respectively. (Pet. 13 (citing Ex. 1013).) A Raman
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`wavelength shifter may, for example, comprise a chalcogenide glass fiber that is
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`capable of shifting the shorter pump laser wavelength to a longer wavelength, such
`
`as a wavelength in the mid-IR region. (Ex. 1001, 15:6-10.)
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`
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`C. Challenged Claims
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`Claims 1 and 13 are independent claims. The remaining challenged claims
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`depend from either claim 1 or claim 13. Claim 1 is representative of the
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`challenged claims and is reproduced below:
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`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;
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`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;
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`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
`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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`Prior Art Relied Upon
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`D.
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`
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`BAE Systems relies upon the following prior art reference:
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`Patent No.
`6,229, 828
`(“Sanders”)
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`
`
`Filing Date
`July 27, 1998
`
`Issue Date
`May 8, 2001
`
`Exhibit No.
`1010
`
`(Pet. 8.) BAE Systems also relies on a declaration submitted by Dr. David A.
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`Smith (“Smith Decl.”). (Ex. 1011).
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`
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`E. The Asserted Grounds
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`BAE Systems challenges the patentability of claims 1, 4, 13-15, 17, and 19
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`of the ’763 patent based on the following grounds.
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`1.
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`Claims 1, 4, 13-15, 17, and 19 are anticipated under 35 U.S.C.
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`§ 102(b) by Sanders; and
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`2.
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`Claim 14 is rendered obvious under 35 U.S.C. § 103(a) over Sanders.
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`(Pet. 9.)
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`
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`II. ANALYSIS
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`A. Claim Construction
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`Consistent with the statute and the legislative history of the AIA, the Board
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`interprets claims by applying the broadest reasonable construction in the context of
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`the specification in which the claims reside. 37 C.F.R. § 42.100(b); see Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). The
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`words of the claim will be given their plain meaning unless the plain meaning is
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`inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
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`“There are only two exceptions to the general rule that a claim term is given its
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`ordinary meaning: 1) when a patentee sets out a definition and acts as his own
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`lexicographer, or 2) when the patentee disavows the full scope of a claim term
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`either in the specification or during prosecution.” See Thorner v. Sony Computer
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`Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
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`In assessing the merit of BAE Systems’ arguments, we have construed the
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`following claim terms in light of the specification of the ’673 patent.
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`1. “Gain fiber”
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`Independent claims 1 and 13 require “a gain fiber coupled to the multiplexer
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`and operable to receive at least the first optical signal.” BAE Systems’ declarant
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`states that “gain fiber” would have been understood by a person of ordinary skill in
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`the art to mean “an optical fiber that operates to amplify an input signal.” (Ex.
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`1011 (Smith Decl.), ¶ 22.) Consistent with this ordinary meaning, the ’673 patent
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`specification refers to “[g]ain fiber 804” as a “gain medium.” (Ex. 1001, 17:18-20,
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`17:42.) Accordingly, we adopt BAE Systems’ proposed construction for “gain
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`fiber” as “an optical fiber that functions as a gain medium (i.e., amplifies an input
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`signal).”
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`2. “Wavelength shift” phrases
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`
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`Independent claim 1 requires “a second wave guide structure . . . operable to
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`wavelength shift at least one wavelength of the first optical signal to a longer
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`wavelength optical signal” (emphasis added). Claim 1 further requires that the
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`claimed “wavelength shifting fiber operates to wavelength shift the at least one
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`wavelength of the first optical signal to a second optical wavelength,” and that the
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`“nonlinear element operates to wavelength shift the second optical wavelength to
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`the longer wavelength optical signal.” (emphasis added). Independent claim 13
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`recites similar claim features.
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`The ’673 patent specification does not expressly set forth a definition for
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`“wavelength shift,” but includes embodiments describing the “Raman wavelength
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`shifter” using the “Raman effect” to shift a shorter optical signal wavelength to a
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`
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`longer optical signal wavelength. (Ex. 1001, 15:1-3.) However, the challenged
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`claims do not recite the use of a “Raman wavelength shifter” or the “Raman effect”
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`to shift a wavelength to a longer wavelength. Thus, we do not interpret the claims
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`as limited to the use of a Raman wavelength shifter or Raman effect to so shift a
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`wavelength. Accordingly, applying the broadest reasonable interpretation, we
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`adopt BAE Systems’ proposed construction for “wavelength shift” as “receiving at
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`least one input wavelength and emitting at least one output wavelength that is
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`different from the input wavelength.” (Pet. 13-14; Ex. 1011 (Smith Decl.), ¶¶ 24-
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`25.)
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`B. Anticipation by Sanders (Ex. 1010)
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`BAE Systems contends that claims 1, 4, 13-15, 17, and 19 are anticipated by
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`Sanders. Based on our review of the record before us, we determine that there is a
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`reasonable likelihood that claims 1, 4, 13, 15, 17, and 19 are anticipated by
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`Sanders. (Pet. 15-27, 28-30, 32-44 (claim charts).) We further determine,
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`however, that there is not a reasonable likelihood that claim 14 is anticipated by
`
`Sanders.
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`Claims 1 and 13
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`Sanders describes a “mid-IR wavelength source,” such as an embodiment
`
`comprising light sources that output light having a mid-IR wavelength in the range
`
`of 2.0 µm to 5.0 µm. (Ex. 1010, 3:43-55.) In particular, Sanders describes a mid-
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`IR wavelength source 110 illustrated in Fig. 19 that incorporates high power pump
`
`source 61, illustrated in Fig. 11. (Ex. 1010, 16:53-55, 20:61-63; Figs. 11, 19.)
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`The relevant portion from figure 11 and complete figure 19 are reproduced below.
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`Figure 11
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`
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`Figure 19
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`
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`BAE Systems has made a threshold showing with respect to the “multiplexer
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`operable to combine a first laser signal and a second laser signal to generate a first
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`optical signal, the first optical signal comprising one or more wavelengths” recited
`
`in claim 1. Specifically, high power source 61 includes a beam combiner 67A that
`
`combines a first laser signal (pump wavelength λp) with a second laser signal
`
`(injection wavelength λI). (Ex. 1010, 16:66-17:3.) BAE Systems also has made a
`
`threshold showing that Sanders describes the claimed “a gain fiber coupled to the
`
`multiplexer and operable to receive at least the first optical signal,” that comprises
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`a first waveguide structure. As discussed above, “gain fiber” means “an optical
`
`
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`fiber that functions as a gain medium (i.e., amplifies an input signal).” Figure 11
`
`illustrates double clad rare-earth doped fiber amplifier 69A coupled to the beam
`
`combiner 67A. (Ex. 1010, Fig. 11.) Fiber amplifier 69A receives the optical
`
`signal from the beam combiner 67A, amplifies the signal, and further guides the
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`received signal into the inner cladding 69C and the core 69B of the first amplifier
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`69A. (Ex. 1010, Fig. 11, 16:22-28, 17:12-19.)
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`
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`In addition, BAE Systems has made a threshold showing regarding “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
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`optical signal.” As discussed above, “wavelength shift” means “receiving at least
`
`one input wavelength and emitting at least one output wavelength that is different
`
`from the input wavelength.” BAE Systems identifies a “second waveguide
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`structure” in Sanders as the combination of the fiber oscillator 112 and the
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`nonlinear frequency (NFM) device 114, which is coupled to the double clad-rare
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`earth doped fiber amplifier 69A. (Pet. 18; Ex. 1010, Fig. 19.) This structure
`
`receives the output signal from the fiber amplifier 69A having a first wavelength λ1
`
`and outputs a longer wavelength λ3. (Ex. 1010, 20:62-21:18.) Sanders discloses
`
`that the resulting longer wavelength can be in the range of 2.0 µm to 4.0 µm (Ex.
`
`1010, 18:46-53, 20:62-21:18), which satisfies the requirement that the “longer
`
`wavelength optical signal compris[es] a wavelength in the range of 1.7 microns or
`
`more.”
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`
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`Further, BAE Systems has shown a “second waveguide structure”
`
`comprising the required “wavelength shifting fiber coupled to a nonlinear element”
`
`in Sanders. As indicated above, the second waveguide structure of Sanders
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`comprises a fiber oscillator 112 coupled to nonlinear frequency mixing device 114.
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`BAE Systems also identifies the required feature that the “wavelength shifting
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`
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`fiber operates to wavelength shift the at least one wavelength of the first optical
`
`signal to a second optical wavelength.” Sanders’ fiber oscillator 112 wavelength
`
`shifts the first optical signal with wavelength λ1 (about 1.03 µm to 1.09 µm) to
`
`light with a second wavelength λ2 (about 1.44 µm). (Ex. 1010, 21:13-17; Fig. 19.)
`
`BAE Systems further identifies the required feature that the “the nonlinear element
`
`operates to wavelength shift the second optical wavelength to the longer
`
`wavelength optical signal.” Sanders states that the NFM device 114 may be a
`
`quasi-phase matching optical parametric oscillation (QPM OPO) device.
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`(Ex. 1010, 21:1-3.) With the use of a QPM OPO device, the NFM device 114 is
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`capable of wavelength shifting light with wavelength λ2 (about 1.44 µm) to light
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`with a longer wavelength, λ3 (about 2.0 µm to 4.0 µm). (Ex. 1010, 18:49-53, 21:9-
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`17.) Lastly, BAE Systems has made a threshold showing regarding the claimed
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`“wavelength shifting fiber is substantially different than the nonlinear element.”
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`For example, fiber oscillator 112 includes an optical fiber that uses the Raman
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`effect to wavelength shift light, while the NFM device 114 includes a nonlinear
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`optical crystal that generates a wavelength by mixing wavelengths. (Ex. 1010, 8:8-
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`21, 20:61-67.)
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`Claim 13 recites similar claim features as claim 1. (Pet. 22-27.) We
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`determine that BAE Systems has made a threshold showing regarding the claim
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`limitations of claim 13 for similar reasons as those provided above for claim 1.
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`
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`Cheetah argues that Sanders does not anticipate independent claims 1 and 13
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`because Sanders teaches away from the claims. (Prelim. Resp. 18.) However,
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`“whether a reference ‘teaches away’ from [an] invention is inapplicable to an
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`anticipation analysis.” Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d
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`1354, 1361 (Fed. Cir. 1998) (citation omitted). For clarity, we discuss Cheetah’s
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`14
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`“teaching away” argument in relation to the obviousness ground for claim 14
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`
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`below. Cheetah also argues that “hindsight” prevents a finding of anticipation.
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`(Prelim. Resp. 19-20.) Cheetah contends that Sanders discloses a “great variety”
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`of optical components and that the ’673 patent provides the hindsight for
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`assembling the claimed invention. We are not persuaded by this argument. While
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`Sanders does teach many optical components, BAE Systems has shown to a
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`sufficient degree that the mid-IR wavelength source 110 embodiment illustrated in
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`Figure 19, which incorporates the high power source 61 component illustrated in
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`Figure 11, discloses all the limitations of claims 1 and 13 for the reasons explained
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`above.
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`
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`Claims 4 and 17
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`Claim 4, which depends from claim 1, requires that the “nonlinear element
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`comprises an oscillator comprising one or more reflectors surrounding a material
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`with a nonlinear optical effect.” Claim 17, which depends from claim 13, requires
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`similar claim features. Sanders discloses that NFM device 114, which teaches the
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`claimed nonlinear element, may be a QPM OPO nonlinear device (Ex. 1010,
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`Abstract, 21:1-3, 22:37) and further illustrates that a QPM OMO device includes
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`reflective mirrors 73 and 75 surrounding nonlinear crystal 72. (Ex. 1010, Fig. 15,
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`18:59-67.)
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`
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`
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`Claim 14
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`Claim 14, which depends from claim 13, requires that the “first laser signal
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`operates at approximately 980 nm and the gain fiber comprises at least in part a
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`cladding pumped fiber.” Sanders discloses that pump source 65A at wavelength
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`λp, which BAE Systems equates with the “first laser signal,” is coupled into the
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`inner cladding 69C of fiber amplifier 69A, while injection source 66A at
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`15
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`wavelength λI is coupled into core 69B. (Ex. 1010, 17:12-19; Figs. 11 and 12.).
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`
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`Figure 12 is reproduced below:
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`BAE Systems refers to disclosures in Sanders relating to Er3+ doped fibers and the
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`wavelengths with which such doped fibers can interact, i.e., 980 nm, to show that
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`pump wavelength λp may be 980 nm as required by claim 14. (Pet. 28.) However,
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`Sanders does not expressly disclose that inner cladding 69C, through which
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`wavelength λp couples, is doped with Er3. Rather, Sanders discloses that core 69B,
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`through which λI couples, may be doped with rare earth ions. (Ex. 1010, 16:13-
`16.) Thus, disclosures relating to wavelengths with which Er3+ doped fibers can
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`interact do not disclose the wavelength of λp. Accordingly, we determine that
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`Sanders does not anticipate claim 14 because it fails to disclose the required feature
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`that the “first laser signal operates at approximately 980 nm.”
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`
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`
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`Claim 15
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`Claim 15, which depends from claim 13, requires that the “wavelength
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`shifting fiber comprises one or more gratings.” As discussed above with respect to
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`claims 1 and 13, BAE Systems identifies Sanders’ fiber oscillator 112 as the
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`claimed “wavelength shifting fiber.” Sanders describes fiber oscillator 112 as
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`including Bragg gratings 111 and 113 for Raman wavelength shifting. (Ex. 1010,
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`20:61-67, Fig. 19.)
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`16
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`Claim 19
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`
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`
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`Claim 19, which depends from claim 13, requires that the “gain fiber
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`comprises at least in part a cladding pumped fiber.” As discussed above, BAE
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`Systems identifies fiber amplifier 69A as the claimed “gain fiber.” Furthermore,
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`Sanders states that fiber amplifier 69A includes inner cladding 69C. (Ex. 1010,
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`17:12-19, 16:24-25 (referring to fiber amplifier 69A as “double-clad fiber 69A”),
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`Figs 11, 12.) The remaining two claim features of claim 19, that the “wavelength
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`shifting fiber comprises one or more gratings” and that the “nonlinear oscillator
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`comprises one or more reflectors surrounding a nonlinear element,” are essentially
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`the same as those required by claims 15 and 17. Accordingly, based on the same
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`reasoning provided with respect to claim 15 and 17, we determine that BAE
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`Systems has made a threshold showing with respect to those limitations of claim
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`19.
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`
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`In summary, we hold that BAE Systems has demonstrated a reasonable
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`likelihood it would prevail in establishing that claims 1, 4, 13, 15, 17, and 19 are
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`anticipated by Sanders.
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`
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`
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`C. Obviousness over Sanders (Ex. 1010)
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`BAE Systems contends that claim 14 is rendered obvious over Sanders.
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`(Pet. 30-31.) Based on our review of the record before us, we determine that there
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`is a reasonable likelihood that claim 14 would have been obvious. As discussed
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`above, we do not find that Sanders expressly discloses the required “first laser
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`signal operates at approximately 980 nm” feature of claim 14. However, we
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`determine that there is a reasonable likelihood that Sanders renders obvious that
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`claim feature.
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`17
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`Sanders discloses that pump source 65A at wavelength λp, which BAE
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`
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`Systems equates with the “first laser signal,” is coupled into the inner cladding
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`69C of fiber amplifier 69A, while injection source 66A at wavelength λI is coupled
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`into core 69B. (Ex. 1010, 17:12-19; Figs. 11 and 12.) Sanders further teaches that
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`Er3+ may be used as the dopant for an amplifying fiber, specifically core 69B of
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`fiber amplifier 69A. (Ex. 1010, 16:12-16.) BAE Systems argues that a person of
`
`ordinary skill in the art would have known that inner cladding 69C, with which
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`pump source 65A at wavelength λp is coupled, could have likewise been doped
`with Er3+. (Pet. 30-31.) Sanders further teaches that Er3+-doped fiber amplifiers
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`are often pumped with 980-nm light. (Ex. 1010, 13:20-55; Table 11.) Therefore,
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`we determine that BAE Systems has shown sufficiently that it would have been
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`obvious to a person of ordinary skill in the art that pump source wavelength λp
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`could have been 980 nm. We further credit the testimony of Dr. Smith that a
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`person of ordinary skill would have known at the time of the invention to use
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`980 nm as the pump wavelength λp for the fiber amplifier 69A. (Ex. 1011, (Smith
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`Decl.), ¶ 40.) In addition, there is a reasonable likelihood that it would have been
`
`obvious to one of ordinary skill in the art, based on Sanders’ disclosure that doping
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`fiber amplifiers with Er3+ were known in the art, to have applied a known dopant
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`such as Er3+ from a finite number of dopants. Such doping would have resulted in
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`a wavelength of 980 nm, as Sanders also discloses. Furthermore, as discussed
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`above with respect to claim 19, Sanders’ fiber amplifier 69A, i.e., the claimed
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`“gain fiber,” includes inner cladding 69C, ther