Rothwell Figg Delivers Resounding Win for Petitioner Opticis in PTAB Patent Challenge Related to Optical Combiners
Rothwell Figg successfully navigated an inter partes review (IPR) proceeding before the Patent Trial and Appeal Board (“PTAB” or “Board”), delivering a resounding win for client Opticis Co., Ltd. (“Opticis”) in a matter involving optical combiners. In its Final Written Decision, the PTAB found that all challenged claims of Inneos LLC’s (“Inneos’s”) U.S. patent 7,198,416 ("the ’416 patent") were unpatentable.
Inneos initially filed a lawsuit against Opticis in the Central District of California, asserting the ’416 patent and arguing that it constituted innovative technology that made it possible to transmit multiple digital signals over a single strand of fiber optic cable. Inneos accused certain of Opticis’ optical sub-assembly (OSA) components of infringing the ’416 patent.
While the litigation was proceeding, Rothwell Figg filed an IPR petition against the ’416 patent challenging all the asserted claims in the litigation. The IPR was instituted and the district court litigation was stayed pending the outcome of the IPR proceeding.
In its Final Written Decision, the PTAB found all challenged claims unpatentable. It addressed claim construction issues, rejecting Inneos's argument to narrowly define the term “optical combiner” and agreeing with Opticis’s arguments that Inneos is impermissibly reading limitations from the specification into the challenged claims. The Board also construed the term “stopped single optical fiber.” The Board analyzed the challenged claims based on two prior art references, Kurita and Lemoff, and found Opticis’s arguments persuasive and rejected Inneos’s arguments.
The IPR Petition asserted five grounds and the Board’s Final Written Decision addressed only one of these grounds, finding that it is dispositive of all the challenged claims.
The case is Opticis Co., Ltd. v. Inneos LLC (IPR2023-01256). The district court litigation, Inneos LLC v. Opticis Co., Ltd., Case No. 8:23-cv-00185-MCS-ADS (C.D. Cal.), remains stayed.
Rothwell Figg partner Michael Jones served as lead counsel for Opticis. The Rothwell Figg team representing Opticis also included Martin Zoltick, Joo Mee Kim, and Mark Rawls.
