Platinum Optics Technology Inc. v. Viavi Solutions Inc.

United States Court of Appeals
for the Federal Circuit
______________________
PLATINUM OPTICS TECHNOLOGY INC.,
Appellant
v.
VIAVI SOLUTIONS INC.,
Appellee
______________________
2023-1227
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
00631.
______________________
Decided: August 16, 2024
______________________
ANDREW R. SOMMER, Greenberg Traurig LLP, McLean,
VA, argued for appellant. Also represented by ELANA ARAJ ,
New York, NY; VIVIAN K UO, Washington, DC.
MEGAN S. W OODWORTH , Venable LLP, Washington,
DC, argued for appellee. Also represented by J USTIN J.
O LIVER .
______________________
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PLATINUM OPTICS TECHNOLOGY INC. v.
VIAVI SOLUTIONS INC.
2
Before M OORE, Chief Judge, T ARANTO, Circuit Judge, and
CECCHI, District Judge.1
CECCHI, District Judge.
Platinum Optics Technology Inc. (PTOT) appeals from
an inter partes review (IPR) final written decision of the
Patent Trial and Appeal Board holding that PTOT failed to
prove claims 1–3, 5–8, 10–12, 14, 16–21, and 23 of U.S. Pa-
tent No. 9,354,369 are unpatentable.2 Because PTOT has
failed to establish an injury in fact sufficient to confer
standing to appeal, we dismiss.
BACKGROUND
Viavi Solutions Inc. (Viavi) owns the ’369 patent, which
relates to optical filters including layers of hydrogenated
silicon and to sensor systems comprising such optical fil-
ters. ’369 patent at 1:12–16. The ’369 patent discloses hy-
drogenated silicon with specific optical properties,
consisting of a high refractive index (n) and a low extinction
coefficient (k). Id. at 4:13–17, 6:24–28.
Historically, hydrogenated silicon has been utilized as
a high-refractive-index layer in optical filters. Id. at 2:27–
35. However, the ’369 patent explains that previous itera-
tions of the material were unable to achieve “a suitably low
extinction coefficient” over the relevant wavelength range
while maintaining a high refractive index. Id. at 2:19–45.
This difficulty arose from the prior method of reducing k—
increasing the hydrogen content—which had the known ef-
fect of also reducing n. J.A. 2299–300. Recognizing the
challenge of achieving an ideal pairing of n and k, the ’369
1 Honorable Claire C. Cecchi, District Judge, United
States District Court for the District of New Jersey, sitting
by designation.
2 PTOT does not specifically reference claim 23 in its
Notice of Appeal. See ECF No. 1-2.
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PLATINUM OPTICS TECHNOLOGY INC. v.
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patent sought to disclose an “improved hydrogenated sili-
con material” (’369 patent at 4:8–24) which would “enhance
the performance of the optical filter” (id. at 2:16–26). The
high refractive index of the claimed hydrogenated silicon
material allows for a low center wavelength shift, and the
low extinction coefficient results in a high transmissivity
within the passband. Id. at 2:16–26, 7:41–46. Specifically,
the claims disclose a hydrogenated silicon material with a
combination of a refractive index of greater than 3 and an
extinction coefficient of less than 0.0005 over the wave-
length range of 800 nm to 1100 nm. Id. at 2:49–59. The
material would result in an optical filter “particularly suit-
able for use in a sensor system, such as a proximity sensor
system, a three-dimensional (3D) imaging system, or a ges-
ture-recognition system.” Id. at 4:8–13.
Independent claims 1 and 16 are illustrative of the
challenged claims and recite:
1. An optical filter comprising:
a filter stack comprising:
a plurality of hydrogenated silicon layers,
wherein the plurality of hydrogenated sil-
icon layers have a refractive index of
greater than 3 over a wavelength range of
800 nm to 1100 nm and an extinction co-
efficient of less than 0.0005 over the wave-
length range of 800 nm to 1100 nm; and
a plurality of lower-refractive-index lay-
ers, wherein the plurality of lower-refrac-
tive-index layers each have a refractive
index of less than 3 over the wavelength
range of 800 nm to 1100 nm, and wherein
the plurality of lower-refractive-index
layers are stacked in alternation with the
plurality of hydrogenated silicon layers;
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wherein the optical filter has a passband at least
partially overlapping with the wavelength range of
800 nm to 1100 nm,
wherein the passband has a center wavelength that
shifts by less than 20 nm in magnitude with a
change in an incidence angle between 0º to 30º,
thereby providing the optical filter with a wide inci-
dence-angle acceptance range.
16. A sensor system comprising:
an optical filter, having a passband including an
emission wavelength and at least partially overlap-
ping with a wavelength range of 800 nm to 1100 nm,
being disposed to receive emitted light and transmit
the emitted light,
wherein the emitted light is, emitted from a light
source, at the emission wavelength in the wave-
length range of 800 nm to 1100 nm, and
wherein the optical filter includes a filter stack in-
cluding:
a plurality of hydrogenated silicon layers,
wherein the plurality of hydrogenated sil-
icon layers each have a refractive index of
greater than 3 over the wavelength range
of 800 nm to 1100 nm and an extinction
coefficient of less than 0.0005 over the
wavelength range of 800 nm to 1100 nm;
and
a plurality of lower-refractive-index lay-
ers, wherein the plurality of lower-refrac-
tive-index layers each have a refractive
index of less than 3 over the wavelength
range of 800 nm to 1100 nm, and wherein
the plurality of lower-refractive-index
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layers are stacked in alternation with the
plurality of hydrogenated silicon layers,
wherein a passband of the optical filter has a center
wavelength that shifts by less than 20 nm in magni-
tude with a change in an incidence angle between 0º
to 30º, thereby providing the optical filter with a
wide incidence-angle acceptance range; and
a sensor, disposed to receive the emitted light after
transmission by the optical filter, for detecting the
emitted light.
Id. at 10:20–42, 11:27–12:11 (emphasis added). Claims 2,
3, 5–8, 10–12, and 14 depend from independent claim 1. Id.
at 10:20–11:23. Claims 17–21 and 23 depend from inde-
pendent claim 16. Id. at 11:27–12:45.
Before PTOT petitioned for IPR of the ’369 patent,
Viavi sued PTOT for infringement in two civil actions in
the Northern District of California: Viavi Solutions Inc.
v. Platinum Optics Technology Inc., No. 5:20-cv-05501
(N.D. Cal.) (Viavi I) and Viavi Solutions Inc. v. Platinum
Optics Technology Inc., No. 5:21-cv-06655 (N.D. Cal.)
(Viavi II). The patent infringement claims regarding the
’369 patent were dismissed with prejudice from both mat-
ters. See Joint Stip., Viavi I, No. 5:20-cv-05501 (N.D. Cal.
Mar. 7, 2022), ECF No. 152; Notice of Voluntary Dismissal,
Viavi II, No. 5:21-cv-06655 (N.D. Cal. Mar. 7, 2022), ECF
No. 26.
Following PTOT’s IPR petition, the Board issued a fi-
nal written decision holding that PTOT failed to show the
challenged claims in the ’369 patent were unpatentable.
Platinum Optics Tech. Inc. v. Viavi Sols. Inc., No. IPR2021-
00631, 2022 WL 5056729 (P.T.A.B. Oct. 3, 2022) (Decision).
Specifically, the Board concluded that the prior art
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references of Pilgrim,3 Gibbons,4 Lairson,5 and Yoda6 did
not render the challenged claims of the ’369 patent un-
patentable for obviousness. Id. at *7–14. Recognizing the
tradeoffs between n and k and the challenge of attaining a
desired balance between the two, the Board determined
that no prior reference disclosed the specific combination of
n and k over the entire wavelength range that was claimed
in the ’369 patent. Id. at *12–14.
The Board also explained that the known method of ad-
justing the extinction coefficient would be “counterproduc-
tive to the inventors’ objective” regarding the refractive
index, and that achieving the claimed properties was not
the result of optimization of the parameters. Id. at *13.
Instead, the testimony indicated that achieving the
claimed hydrogenated silicon materials “would have in-
volved significant trial-and-error experimentation with no
expectation of success.” Id. at *14 (citation omitted).
PTOT appeals the Board’s finding that PTOT failed to
show the challenged claims of the ’369 patent were un-
patentable.
3 U.S. Patent Application Publication
No. 2012/0224061 A1.
4 K. Gibbons et al., Development and Implementation
of a Hydrogenated a-Si Reactive Sputter Deposition Pro-
cess, 50 Ann. Tech. Conf. Procs., Soc’y of Vacuum Coaters
327 (2007).
5 B.M. Lairson et al., Reduced Angle-Shift Infrared
Bandpass Filter Coatings, 6545 Proc. SPIE Window and
Dome Techs. and Materials X 65451C (2007).
6 H. Yoda et al., a-Si:H/SiO 2 Multilayer Films Fab-
ricated by Radio-Frequency Magnetron Sputtering for Op-
tical Filters, 43 Applied Optics 3548 (2004).
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PLATINUM OPTICS TECHNOLOGY INC. v.
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D ISCUSSION
This court’s jurisdiction to review final decisions of the
Board is limited to “Cases” and “Controversies” under Ar-
ticle III of the U.S. Constitution. U.S. Const. art. III, § 2,
cl. 1. To establish a case or controversy, the appellant must
meet the “irreducible constitutional minimum of standing.”
Lujan v. Defs. of Wildlife, 504 U.S. 555, 560 (1992). This
requires that the appellant: “(1) suffered an injury in fact,
(2) that is fairly traceable to the challenged conduct of the
defendant, and (3) that is likely to be redressed by a favor-
able judicial decision.” Spokeo, Inc. v. Robins, 578 U.S.
330, 338 (2016). To establish an injury in fact, the alleged
harm must be “‘concrete and particularized’ and ‘actual or
imminent, not conjectural or hypothetical.’” Id. at 339
(quoting Lujan, 504 U.S. at 560). A party does not need
Article III standing to appear before an administrative
agency, see Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261,
279 (2016), but standing is required once the party “seeks
review of an agency’s final action in a federal court.” Phi-
genix, Inc. v. Immunogen, Inc., 845 F.3d 1168, 1171–72
(Fed. Cir. 2017). The party seeking judicial review—here,
PTOT—bears the burden of proving standing. JTEKT
Corp. v. GKN Auto. LTD., 898 F.3d 1217, 1220 (Fed. Cir.
2018).
PTOT asserts it has standing to appeal the Board’s de-
cision based on potential infringement liability stemming
from (1) supplying its bandpass filters accused in Viavi II
to parts integrators overseas, and (2) developing new mod-
els of bandpass filters.
A
PTOT first argues that its continued distribution of the
bandpass filters accused in Viavi II creates a likelihood
that Viavi will sue again. Despite Viavi having dismissed
the patent infringement claims related to the ’369 patent
with prejudice from Viavi I and Viavi II, PTOT maintains
that it has suffered an injury in fact. Where a party relies
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on potential infringement liability as a basis for standing,
the party “must establish that it has concrete plans for fu-
ture activity that creates a substantial risk of future in-
fringement or [will] likely cause the patentee to assert a
claim of infringement.” JTEKT Corp., 898 F.3d at 1221.
In support of its argument, PTOT points to a letter in
which Viavi explained that “[b]ased on the broad and var-
ying scope of Viavi’s U.S. Patents’ claims, [Viavi] do[es] not
believe” it would be possible for PTOT to fulfill its supply
agreements with non-infringing products. J.A. 4498.
Based on this letter and Viavi’s history of lawsuits, PTOT
contends that it “fully expects Viavi to sue it a third time
over the ’369 patent.” Appellant’s Reply Br. at 4. But mere
speculation about a possibility of suit, without more, is in-
sufficient to confer standing. See Apple Inc. v. Qualcomm
Inc., 992 F.3d 1378, 1385 (Fed. Cir. 2021) (“At best, [appel-
lant’s] allegations are speculation and conjecture about
[patent owner’s] proclivity to assert its patent rights gen-
erally. But they are devoid of the specificity necessary to
show that [patent owner] is likely to assert these particular
patents against any particular products . . . .”).
Moreover, PTOT’s argument fails to adequately ad-
dress that Viavi’s letter was sent prior to Viavi I and
Viavi II, in which the patent infringement claims regard-
ing the ’369 patent were dismissed with prejudice. See Ap-
ple Inc., 992 F.3d at 1385 (rejecting petitioner’s argument
that previous suits for infringement created a basis for
standing where the previous suits were dismissed with
prejudice). PTOT’s unsubstantiated speculation about a
threat of future suit is insufficient to show a substantial
risk of future infringement or that Viavi is likely to assert
a claim against it for the continued distribution of band-
pass filters accused in Viavi II. Therefore, PTOT has not
established an injury in fact based on its continued distri-
bution of bandpass filters accused in Viavi II. See Prasco,
LLC v. Medicis Pharm. Corp., 537 F.3d 1329, 1338–39
(Fed. Cir. 2008) (“[A] case or controversy must be based on
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a real and immediate injury or threat of future injury that
is caused by the defendants . . . .” (emphasis in original)).
B
PTOT also argues it has suffered an injury in fact based
on its development of new bandpass filters. In support of
its argument, PTOT submitted a declaration from Yiwei
Lin, Deputy Director of Operation Management at PTOT.
J.A. 4516–20. Lin asserts that PTOT continues to develop
new models of bandpass filters and that PTOT anticipates
Viavi will again assert the ’369 patent. J.A. 4519–20. Lin,
however, fails to identify any specific, concrete plans for
PTOT to develop a product that may implicate the ’369 pa-
tent.
Lin states that “[a]s a part of PTOT’s on-going effort to
improve its bandpass filters, PTOT continues to work with
its existing customers in Asia to develop new models of
bandpass filters and anticipates selling the new models of
the bandpass filters to PTOT’s existing customers within
the next few years.” J.A. 4520 ¶ 14. But Lin’s declaration
does not provide any detailed plans for development of
these new filters. Nor does Lin explain the particulars of
these new models, or how the models may relate to the ’369
patent. For example, Lin does not identify the material of
the new models or any of their relevant properties. Of
course, “IPR petitioners need not concede infringement to
establish standing to appeal.” JTEKT Corp., 898 F.3d at
1221. But Lin’s vague and conclusory statements are in-
sufficient to establish that PTOT has concrete plans for the
development of bandpass filters. See Allgenesis Biothera-
peutics Inc. v. Cloudbreak Therapeutics, LLC, 85 F.4th
1377, 1380–81 (Fed. Cir. 2023) (dismissing appeal for lack
of standing where “conclusory” testimony that appellant
was continuing to develop products was insufficient to es-
tablish concrete plans).
Further, PTOT has not established that its develop-
ment activities will cause a substantial risk of
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infringement or will likely cause Viavi to assert a claim of
infringement. Lin states that “PTOT anticipates that Viavi
will assert the ’369 patent against PTOT’s bandpass filters
currently under development in the same way that Viavi
has sued PTOT on its prior bandpass filters . . . .” J.A. 4520
¶ 14. Lin’s contentions, however, do not pass muster to es-
tablish there is a substantial risk of a future infringement
suit. See JTEKT Corp., 898 F.3d at 1221 (“[T]hese decla-
rations do not establish that [appellant’s] planned product
would create a substantial risk of infringing . . . or likely
lead to charges of infringement” where the product was
still “in development” and “will continue to evolve.”). PTOT
again directs us to the letter from Viavi as evidence of the
threat of future suit based on the new models. However,
the letter was sent as a warning prior to the initiation of
Viavi I, in which the relevant claims were dismissed with
prejudice; it neither specifically addresses models cur-
rently in development nor forecloses the ability of PTOT to
develop a non-infringing product. PTOT has not pointed to
any other evidence that Viavi has made a threat regarding
the models still in development. See Oral Arg. at 35:00–
35:40, available at https://oralarguments.cafc.us
courts.gov/default.aspx?fl=23-1227_06052024.mp3.
Therefore, PTOT has failed to establish it has concrete
plans for future activity that create a substantial risk of
infringement or a likelihood that Viavi will assert a claim
of infringement. In turn, PTOT has failed to establish
standing to appeal.
CONCLUSION
We conclude PTOT has failed to establish an injury in
fact sufficient to confer standing on appeal. Therefore, we
dismiss the appeal and do not reach the merits of the
Board’s decision.
DISMISSED
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COSTS
No costs.
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