- Filed
- Sep 26, 2025
- Last modified
- Sep 25, 2026
- Petitioner
- Accelight Technologies, Inc. et al.
- Inventor
- I-Lung HO et al
Invalidity dossier
US 10042116
Techniques for direct optical coupling of photodetectors to optical demultiplexer outputs and an optical transceiver using the same
Current assignee: Cambridge Industries USA, Inc.
Added 5/13/2026, 6:00:30 AM
Active provider: DeepSeek · deepseek-v4-flash
Auto-generating section 1 of 2: Extensions…
Each section takes ~30-60s with web-search grounding. Keep this tab open — sections will fill in below as they complete.
Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
Here's a concise summary of US Patent 10042116:
US Patent 10042116 Summary
- Title: Techniques for direct optical coupling of photodetectors to optical demultiplexer outputs and an optical transceiver using the same
- Assignee: Applied Optoelectronics Inc. (As of 2026-05-24, the patent is assigned to Applied Optoelectronics Inc., with BOKF, NA D/B/A BOK FINANCIAL holding a security interest filed on 2025-08-01.)
- Inventors: I-Lung Ho, Zhengyu Miao, Qin Li
- Filing Date: 2016-04-25
- Issue Date: 2018-08-07
- Abstract: The patent describes an arrayed waveguide grating (AWG) device designed for use in optical transceivers. This device demultiplexes an optical signal into multiple channel wavelengths. The AWG chip within the device features a planar lightwave circuit (PLC) that demultiplexes the wavelengths and directs them into output waveguides. A tapered region at one end of the AWG chip is configured to reflect light from these output waveguides towards an exposed output interface region. This design allows detector devices to directly couple to the AWG chip's output, thereby eliminating insertion losses typically associated with intermediate fiber arrays or other physical coupling devices.
Plain-Language Overview of Independent Claims:
- Independent Claim 1 (AWG Chip): This claim describes an arrayed waveguide grating (AWG) chip. It includes a first end for connecting to an optical input, a substrate, and a planar lightwave circuit (PLC) on the substrate that separates incoming channel wavelengths. Multiple output waveguides are connected to the PLC, guiding the separated light along a first path towards a second end of the chip. At this second end, there's a tapered region designed to reflect the light towards an exposed output interface region of the chip. Crucially, this output interface emits the reflected light from the same side as the substrate, without the light passing through the substrate itself.
- Independent Claim 12 (Optical Transceiver Module): This claim describes an optical transceiver module. It includes a housing containing a multi-channel receiver optical sub-assembly (ROSA) and a multi-channel transmitter optical sub-assembly (TOSA). The ROSA incorporates an AWG chip, similar to that described in Claim 1, but with additional detail that the first end for coupling to the optical receptacle includes an angled surface to reduce back reflections. The AWG chip's tapered region directs light to an output interface region, which is adjacent to an array of detector devices. The TOSA contains at least one laser package for transmitting optical signals at different wavelengths.
USPTO and CAFC 2026 Dockets:
US Patent 10042116 is currently Active, with an anticipated expiration date of 2036-04-25.
The patent family has been involved in litigation, including:
- A "First worldwide family litigation filed".
- Two PTAB (Patent Trial and Appeal Board) cases:
- IPR2025-00435, which was filed but "Not Instituted - Procedural".
- IPR2025-01566, which was filed and is currently "Pending - Instituted".
- Multiple US cases filed in the California Northern District Court (e.g., 5:24-cv-01010, 4:24-cv-09041, 4:23-cv-04787, 3:24-cv-09041, 3:24-cv-01010).
- A US case filed in the Court of Appeals for the Federal Circuit (CAFC) with case ID 26-101.
Generated 5/24/2026, 12:46:07 PM
Cases on file (2)
Group view →Specific litigation cases in our database that name US patent 10042116. The free-form analysis below may also discuss cases beyond this list.
- IPR2025-00435Patent Trial and Appeal Board (PTAB)Not Instituted - Procedural
Defendants: Applied Optoelectronics, Inc.
- IPR2025-01566Patent Trial and Appeal Board (PTAB)Pending - Instituted
Defendants: Applied Optoelectronics, Inc.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
Known litigation involving US patent 10042116 is listed below. The current assignee of US10042116 is Applied Optoelectronics Inc..
PTAB Case IPR2025-00435
- Plaintiff(s)/Petitioner: Cambridge Industries USA, Inc.
- Defendant(s)/Patent Owner: Applied Optoelectronics, Inc.
- Jurisdiction: Patent Trial and Appeal Board (PTAB)
- Case Number: IPR2025-00435
- Filing Date: Petition filed in 2025 (institution decision dated June 26, 2025)
- Outcome/Current Status: Not Instituted - Procedural.
PTAB Case IPR2025-01566
- Plaintiff(s)/Petitioner: Not explicitly identified in search results.
- Defendant(s)/Patent Owner: Applied Optoelectronics, Inc. (as the patent owner).
- Jurisdiction: Patent Trial and Appeal Board (PTAB)
- Case Number: IPR2025-01566
- Filing Date: Filed in 2025.
- Outcome/Current Status: Pending - Instituted.
US Case in Court of Appeals for the Federal Circuit
- Plaintiff(s): Not explicitly identified in search results.
- Defendant(s): Not explicitly identified in search results.
- Jurisdiction: Court of Appeals for the Federal Circuit (CAFC)
- Case Number: 26-101
- Filing Date: Not explicitly identified in search results.
- Outcome/Current Status: Active.
US Case in California Northern District Court (1)
- Plaintiff(s): Applied Optoelectronics, Inc. (implied as patent owner enforcing the patent).
- Defendant(s): Not explicitly identified in search results.
- Jurisdiction: California Northern District Court
- Case Number: 5:24-cv-01010
- Filing Date: Not explicitly identified in search results.
- Outcome/Current Status: Active.
US Case in California Northern District Court (2)
- Plaintiff(s): Applied Optoelectronics, Inc. (implied as patent owner enforcing the patent).
- Defendant(s): Not explicitly identified in search results.
- Jurisdiction: California Northern District Court
- Case Number: 4:24-cv-09041
- Filing Date: October 3, 2025.
- Outcome/Current Status: Active.
US Case in California Northern District Court (3)
- Plaintiff(s): Applied Optoelectronics, Inc. (implied as patent owner enforcing the patent).
- Defendant(s): Not explicitly identified in search results.
- Jurisdiction: California Northern District Court
- Case Number: 4:23-cv-04787
- Filing Date: Not explicitly identified in search results.
- Outcome/Current Status: Settled.
US Case in California Northern District Court (4)
- Plaintiff(s): Applied Optoelectronics, Inc. (implied as patent owner enforcing the patent).
- Defendant(s): Not explicitly identified in search results.
- Jurisdiction: California Northern District Court
- Case Number: 3:24-cv-09041
- Filing Date: Not explicitly identified in search results.
- Outcome/Current Status: Active.
US Case in California Northern District Court (5)
- Plaintiff(s): Applied Optoelectronics, Inc. (implied as patent owner enforcing the patent).
- Defendant(s): Implied to be related to "CIG Litigation" (potentially CIG Optics, Inc. or similar).
- Jurisdiction: California Northern District Court
- Case Number: 3:24-cv-01010
- Filing Date: Not explicitly identified in search results.
- Outcome/Current Status: Active.
Generated 5/24/2026, 12:46:27 PM
Proceedings on file (1)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
Current assignee: Cambridge Industries USA, Inc.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll start by pulling the live docket and decision records for the AIA proceedings on this patent.
Now let me verify the CAFC 26-101 disposition and pull the institution details for IPR2025-01566.
Let me pin down the institution decision date, panel, and any trial-stage milestones for IPR2025-01566.
PTAB / AIA Trial Analysis — US Patent 10042116
Data-integrity flag (read first). The structured "PTAB proceedings on file" block in this prompt lists one proceeding (IPR2025-01566). Live research confirms two AIA proceedings have been filed against the '116 patent, plus one Federal Circuit mandamus proceeding. I am not inventing IPR2025-00435 — it is verified by a Federal Circuit order of 2025-12-09 that names it expressly (
IPR2025-00433 and IPR2025-00435, Fed. Cir. No. 2026-101) and by multiple secondary sources. The most likely explanation is that the Open Data Portal pull that produced the structured block excludes institution-denied proceedings, or was filtered by status. I treat the structured block as canonical for anything it lists, and flag IPR2025-00435 as a verified omission rather than silently merging it. The previously generated "Litigation summary" section did list IPR2025-00435 — so the structured block and the earlier generated section contradict each other, and the earlier section is the more accurate one on this point.
Proceedings overview
Two AIA trial proceedings have been filed against US 10042116: one instituted and live (IPR2025-01566, Accelight Technologies, status "Trial Instituted") and one institution-denied (IPR2025-00435, Cambridge Industries USA, denied 2025-06-27 by Acting Director Stewart on "settled expectations"). Zero claims have been canceled, zero claims have been sustained on the merits, and no Final Written Decision has issued in any proceeding. A Federal Circuit mandamus petition challenging the '00435 non-institution was denied on 2025-12-09.
Bottom-line defensive posture: the '116 patent is not hardened by an IPR survivor's shield — it simply has never been tested on the merits at the PTAB. All 19 claims (1–19) remain intact and enforceable. But the patent is also not free of an active invalidity vehicle: a live instituted IPR (IPR2025-01566) is running on claims 1–4, 10–13, 15, and 16. Two important asymmetries for a defendant: (1) the earlier challenger's art is not estopped (no institution = no § 315(e) estoppel), so it remains available to you; and (2) a fresh petition now runs into the "settled expectations" wall that killed Cambridge's petition — but Accelight proved that wall is surmountable with the right petition architecture.
IPR2025-01566 — Accelight Technologies, Inc. et al. v. Applied Optoelectronics, Inc.
- Type: Inter Partes Review
- Filed: 2025-09-26
- Patent: US 10,042,116 (application 15/137,823; Tech Center 2600)
- Status: Trial Instituted (per the canonical structured ODP block, last modified 2026-09-10). Gloss: institution was granted; the case is in trial and awaiting a Final Written Decision. Note that third-party trackers are stale/inconsistent on this case — one tracker still shows "Preliminary response waived" (an interim pre-institution status) as of its 2026-08-02 refresh, while the ODP block shows instituted.
- Judge panel: Not confirmed. I could not locate the institution decision or the assigned APJ panel in public sources. Do not assume a panel.
- Petition grounds (as publicly filed): § 103 challenges to claims 1–4, 10–13, 15, and 16 — i.e., both independent claims (1 and 12) plus selected dependents. Art asserted across the grounds: Kim (US 2014/0169389), Ho (US 2014/0341578), Lee (US 2014/0183344), Bernasconi (ECOC 2012, Tu.4.E.3), Soldano (US 9,768,901), and Yoshikawa (US 2005/0286839), combined in four grounds (Lee+Kim; Ho+Lee+Kim+Yoshikawa; Bernasconi+Soldano; Ho+Bernasconi+Soldano+Yoshikawa). Caveat: the exhibit-number-to-reference mapping in the publicly posted Accelight papers is not internally consistent across the '116 and '301 petitions, so treat the specific ground-to-reference pairings as party-paper summaries rather than Board-confirmed grounds. I have not seen the Board's institution decision text and therefore cannot confirm which grounds (or which subset of claims) were actually instituted.
- Procedural timeline (docket, confirmed):
- 2025-09-26 — Petition filed.
- 2025-10-07 — PTAB Notice of Filing Date Accorded to Petition (Paper 3).
- 2025-10-13 — Patent Owner Mandatory Notice / Power of Attorney.
- 2025-11-20 — Petitioner's stipulation: will not pursue any § 102 or § 103 invalidity challenge in the parallel N.D. Cal. case if IPR is instituted (a Sotera-type stipulation, cutting against discretionary denial).
- 2025-11-24 — Petitioner's Motion to Seal / Request for In Camera Review re a Voluntary Search Disclosure Declaration (favorable discretionary factor under the 2025-11-17 Director memorandum).
- 2025-12-04 — Patent Owner's Request to the Director for Discretionary Denial (AOI's "settled expectations" play — the same play that worked in IPR2025-00435).
- 2026-01-27 — Docket entry categorized as "Director Discretionary Decision: Refer." The referral did not stop institution; self-evidently the patent owner's discretionary-denial request failed in this proceeding.
- Also on file: a joint administrative motion to stay the N.D. Cal. case pending IPR institution decisions (filed 2025-10-03 in Applied Optoelectronics, Inc. v. Accelight Technologies, Inc., No. 4:24-cv-09041-HSG).
- Institution decision: Instituted, but I could not confirm the date or the panel's reasoning. Bounding the date: the notice of filing date accorded issued 2025-10-07, and the Director-referral paper is dated 2026-01-27, so institution fell between those dates and no later than the § 314(b) six-month window. Practically, expect an institution date in the first quarter of 2026.
- Final Written Decision: None issued as of 2026-09-21. Under the statutory one-year clock running from institution, the FWD is due no later than roughly Q1 2027. No claim of the '116 patent has been canceled or sustained on the merits.
- Settlement / termination: None reported. The proceeding is live.
- Appeal: None. There is no appealable FWD yet. (The CAFC 26-101 matter discussed below is a different petitioner's mandamus on a different non-institution decision.)
- Defensive value: This is the only live path to invalidating the '116 patent at the PTAB, and it covers both independent claims — so a favorable FWD would be materially useful. But it is not yet a defensive asset: as of today there is no estoppel and no cancellation. If you are being asserted against and you want PTAB cover, you must either (a) file your own petition and accept the risk of a settled-expectations discretionary denial, or (b) plan to ride Accelight's FWD (which is not binding on you but is persuasive).
IPR2025-00435 — Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc.
Verified via Federal Circuit order No. 2026-101 (2025-12-09) and multiple secondary sources; absent from the structured ODP block — see flag above.
- Type: Inter Partes Review
- Filed: January 2025 (Cambridge filed five IPR petitions in January 2025 against five AOI patents; IPR2025-00433 through IPR2025-00437).
- Patent: US 10,042,116 — the '116 patent.
- Status: Institution denied on discretionary grounds — Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc., IPR2025-00435, Paper 11 (2025-06-27), Decision Granting Patent Owner's Request for Discretionary Denial and Denying Institution of Inter Partes Review (Acting Director Coke Morgan Stewart). ⚠️ Date discrepancy to flag: the previously generated Litigation summary in this prompt states the institution decision was 2025-06-26; the CAFC order, the Banner Witcoff PTAB-highlights write-up, and the Jeffer/Mondaq client alerts all cite 2025-06-27 for Paper 11. I use 2025-06-27.
- Judge panel: N/A — decided by the Acting Director (Coke Morgan Stewart) under the Director's March 26, 2025 "Interim Processes for PTAB Workload Management" memorandum, not by a three-APJ merits panel.
- Petition grounds: § 102/§ 103 grounds against claims of the '116 patent. I did not locate the specific claim list or art in the public record for this petition. It is worth noting that Accelight's later petition cited Cambridge's IPR2025-00435 papers as exhibits and argued "CIG's IPR did not address the distinct prior art references and additional facts presented here" — indicating Cambridge's art was different from Accelight's.
- Institution decision: DENIED — discretionary, not merits. The Acting Director agreed with AOI in part. The lone dispositive factor in the pair ('00433 and '00435) was "settled expectations": the challenged patents "have been in force for nine and seven years, respectively," and therefore "Patent Owner's settled expectations… are stronger and discretionary denial is appropriate as to these proceedings." The parallel N.D. Cal. litigation was cited but was not decisive because "[t]here is no currently scheduled trial date." The Director expressly rejected several of AOI's other discretionary arguments — over-reliance on expert testimony and § 325(d). In the same set of decisions, the Director declined to discretionarily deny three companion petitions against newer AOI patents issued in 2019–2020 ("have not been in force for a significant period of time"), demonstrating that patent age alone drove the outcome for the '116 patent.
- Final Written Decision: N/A — never reached the merits.
- Settlement / termination: N/A.
- Appeal: Yes — Federal Circuit mandamus, denied. In re Cambridge Industries USA Inc., No. 2026-101 (Fed. Cir. 2025-12-09) (nonprecedential) (Prost, Chen, Hughes, JJ.), on petition for writ of mandamus to the USPTO in Nos. IPR2025-00433 and IPR2025-00435. Cambridge argued the "settled expectations" practice exceeded the PTO's authority and violated the APA (improper retroactivity, no notice-and-comment) and due process. The court denied mandamus, holding Cambridge had not shown a "clear and indisputable right to relief" given § 314(d)'s insulation of institution decisions from review, and that Cambridge's non-constitutional arguments "could have been raised in an APA action." The court expressly reserved the merits: "We reiterate that we do not decide whether the PTO's actions are correct or whether the use of this factor is permitted under the statutes." Parallel orders that day denied mandamus in In re Sandisk Technologies (No. 2025-152) and In re HighLevel (No. 2025-148).
- Defensive value: Two-sided. Good for you: the denial means no estoppel attaches to Cambridge or its privies on the '116 patent (no FWD was ever reached), and the denial is not a merits ruling — so the art Cambridge found is neither adjudicated nor barred for a different petitioner. Bad for you: the decision is a binding-on-the-office precedent-by-practice that this specific patent, now eight years in force (issued 2018-08-07), is a strong candidate for settled-expectations discretionary denial. If your petition looks like Cambridge's, expect Paper 11 to look like Cambridge's.
Strategic summary
Claim status across all proceedings — there is no narrowing. No claim of US 10042116 has been canceled, and none has been sustained on the merits. Claims 1–19 stand unamended and unadjudicated. The only claims that have been challenged in a live proceeding are 1–4, 10–13, 15, and 16 (IPR2025-01566, on the petition as filed). That means claims 5, 6, 7, 8, 9, 14, 17, 18, and 19 are entirely UNTESTED — including the "about 50 microns" spacing claim (14), the angled-interface-between-sidewalls claims (15–18, if not instituted), and, most importantly, independent-claim-12's dependents and claim 19's SFP/25 Gbps-per-channel limitation. If your accused product practices the 50-micron air-gap coupling or the SFP/25 Gbps configuration, a petitioner's win in IPR2025-01566 on claims 1–4/10–13/15–16 would leave a viable asserted claim standing. Verify the instituted claim set before relying on this — institution can be partial.
Estoppel landscape. Because no FWD has issued in any proceeding, § 315(e)(1)/(2) estoppel is currently zero across the board. Cambridge is not estopped by the IPR2025-00435 denial (estoppel attaches only after a final written decision). Practically, for a defendant being asserted today: all prior art remains available — Cambridge's '00435 art, Accelight's '01566 art (Kim, Ho '578, Lee, Bernasconi, Soldano, Yoshikawa), and anything else. Two live caveats: (i) if IPR2025-01566 reaches an FWD, Accelight and its privies will be estopped under § 315(e)(2) as to grounds raised or reasonably raisable, but you are not; (ii) art that the Board already considered in '00435 or '01566 invites a § 325(d) discretionary denial against a duplicative later petition, so a new petition should be built on new art or a genuinely new theory, not a re-run of Kim/Ho/Lee.
Pattern signals — this is a coordinated operating-company enforcement campaign, not a one-off. AOI (an operating company, Nasdaq: AAOI) has sued Molex (4:23-cv-04787, since dismissed/settled), Cambridge Industries USA (3:24-cv-01010), Accelight Technologies (4:24-cv-09041), and Eoptolink (5:24-cv-08165) on overlapping transceiver patent sets. The '116 patent is asserted in the Cambridge and Accelight cases and in the CIG-connected matters. On the PTAB side: Cambridge filed five petitions in January 2025 (a § 325(d)/Fintiv-coordinated campaign against the whole family), and Accelight filed at least three in September 2025 — IPR2025-01566 ('116), IPR2025-01567 ('301, related subject matter — the same "AWG with angled/tapered surface" direct-coupling architecture), and IPR2025-01570 ('690). Accelight later filed more (IPR2026-00019, IPR2026-00093) which were discretionarily denied. There is no defensive aggregator (Unified Patents, RPX, etc.) in the chain on the PTAB side — every challenger here is a direct litigation adversary. Accelight is clearly the more sophisticated repeat player; it is the petitioner that actually got through.
The single most useful piece of intelligence for a defendant: the Accelight petition got in against a patent that Cambridge's petition had been denied on. The publicly filed Accelight papers show the recipe it used: (a) a broad stipulation not to pursue any § 102/§ 103 invalidity ground in the parallel district court if instituted; (b) a Voluntary Search Disclosure Declaration showing the asserted art was missed by the Office's own search; (c) an argument that AOI's prior institution denial in IPR2025-00435 rested on different art and different grounds and therefore should not control; and (d) leveraging the complexity/interrelatedness of AOI's six-patent litigation to argue the PTAB is the better forum. If your petition is built differently, expect the settled-expectations disposition that befell Cambridge.
Recommended next steps
- Do not treat the "claims invalidated" story as available — it isn't. No claims of the '116 patent have been canceled. Any representation that a prior petitioner knocked out claims 1–4 or 12 is wrong. The two independent claims (1 and 12) are both live and both asserted in Applied Optoelectronics v. Accelight, No. 4:24-cv-09041 (N.D. Cal.) (asserted as claims 1 and 12; '116 Patent, col. 11:18, col. 12:48).
- Pull the IPR2025-01566 institution decision itself. It is the single most important document for sizing your exposure. Confirm (a) the institution date, (b) the APJ panel, (c) whether institution was on all four grounds or a subset, and (d) exactly which of claims 1–4, 10–13, 15, 16 were instituted. I could not verify these from public sources; the docket entries I did verify are listed above. Docket access: https://ptacts.uspto.gov/ptacts/ and the case page at https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2025-01566.
- Calendar the trial milestones. Institution effective ~2026-Q1; FWD due no later than 12 months from institution (statutory, § 316(a)(11) — expect roughly 2027-Q1); oral hearing typically ~2–3 months before the FWD; 3-month PO response and petitioner reply/opposition windows in between. If you are in parallel district court, the FWD date is your natural stay/summary-judgment anchor — note AOI and Accelight already jointly moved to stay the N.D. Cal. case pending institution decisions (2025-10-03), a signal the court is receptive to IPR-driven sequencing.
- Scope your petition to the untested claims if you can. Claims 5–9, 14, and 17–19 appear not to be challenged in IPR2025-01566. If your infringement theory turns on those limitations, a parallel IPR attacking them is not duplicative and is far less exposed to § 325(d). Confirm from the institution decision before relying on this.
- Plan around "settled expectations." The '116 patent issued 2018-08-07 and is now over eight years in force. It has already been the subject of one settled-expectations denial that the Federal Circuit declined to disturb (2025-12-09), and the CAFC expressly left the merits of the doctrine open — with Supreme Court petitions on the issue pending (a second petition was reported in 2026). Two implications: (a) build the Accelight-style record (stipulation + search disclosure declaration + compelling merits + a different art set than Kim/Ho/Lee), and (b) monitor the pending Supreme Court petitions, because a grant there could reopen the door for Cambridge-style petitions against older patents.
- Preserve the § 314(d) / mandamus record. If you do get a discretionary denial, the Federal Circuit's 2025-12-09 order in In re Cambridge Industries is the controlling template — non-constitutional APA arguments "could have been raised in an APA action" and will not support mandamus. A district-court APA action, or a colorable due-process framing with identified property/retroactivity interests, is the path the CAFC left open.
Generated 9/21/2026, 1:55:28 PM
Ownership chain (4)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
2016-04-25 · recorded 2016-04-26 · reel 037624/0113 · ASSIGNMENT OF ASSIGNORS INTEREST
I-LUNG HO, ZHENGYU MIAO, QIN LIAPPLIED OPTOELECTRONICS, INC.
Correspondent: LUNG HSIANG CHENG
transfer-to-employer
2022-11-22 · recorded 2022-11-28 · reel 055745/0418 · SECURITY AGREEMENT
APPLIED OPTOELECTRONICS, INC.CIT NORTHBRIDGE CREDIT LLC
Correspondent: JENNIFER TONG · SIDLEY AUSTIN
securitization
2023-11-20 · reel 057039/0418 · TERMINATION AND RELEASE OF SECURITY INTEREST
CIT NORTHBRIDGE CREDIT LLCAPPLIED OPTOELECTRONICS, INC.
Correspondent: JENNIFER TONG · SIDLEY AUSTIN
release
2025-08-01 · recorded 2025-08-20 · reel 058862/0583 · SECURITY AGREEMENT
APPLIED OPTOELECTRONICS, INC.BOKF, NA D/B/A BOK FINANCIAL
Correspondent: RUTH L. WILLIAMS · SNELL & WILMER
securitization
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
Inventors
- I-Lung Ho (Employer: Applied Optoelectronics Inc)
- Zhengyu Miao (Employer: Applied Optoelectronics Inc)
- Qin Li (Employer: Applied Optoelectronics Inc)
All inventors were employees of Applied Optoelectronics Inc at the time of filing, as evidenced by the assignment of their interest to the company on the application filing date (recorded 2016-04-26, Reel 037624/0113). The correspondent for this initial assignment was an individual associated with AOI, Inc..
Original assignee
Applied Optoelectronics Inc. (AOI) is the original assignee. AOI is an operating company that develops and manufactures fiber-optic access network products for markets such as internet data centers, cable television (CATV), and fiber-to-the-home (FTTH). The patent describes techniques used in optical transceivers, which are products that AOI ships. For example, the patent states that "the optical transceiver 400 may be configured to transmit and receive at a line rate of at least 100 Gb/s... particularly advantageous when using the optical transceiver in, for example, a 100GBASE-LR4 application" (US10042116B2, Abstract, Description). AOI is currently an active, operating company.
Assignment timeline
2016-04-25 (executed) / recorded 2016-04-26 — Reel 037624/0113
- Conveyance: ASSIGNMENT OF ASSIGNORS INTEREST
- Assignor: I-LUNG HO, ZHENGYU MIAO, QIN LI
- Assignee: APPLIED OPTOELECTRONICS, INC.
- Correspondent: LUNG HSIANG CHENG, AOI, INC., M/S C, 11116 WEST LITTLE YORK RD, SUITE B, HOUSTON, TX 77041
- Context: Transfer of invention rights from the individual inventors to their employer.
2022-11-22 (executed) / recorded 2022-11-28 — Reel 055745/0418
- Conveyance: SECURITY AGREEMENT
- Assignor: APPLIED OPTOELECTRONICS, INC.
- Assignee: CIT NORTHBRIDGE CREDIT LLC
- Correspondent: JENNIFER TONG, SIDLEY AUSTIN LLP, 2021 SPRING ROAD, SUITE 700, OAK BROOK, IL 60523
- Context: Securitization of the patent as collateral for a loan.
2023-11-20 (executed) / recorded 2023-11-20 — Reel 057039/0418
- Conveyance: TERMINATION AND RELEASE OF SECURITY INTEREST
- Assignor: CIT NORTHBRIDGE CREDIT LLC
- Assignee: APPLIED OPTOELECTRONICS, INC.
- Correspondent: JENNIFER TONG, SIDLEY AUSTIN LLP, 2021 SPRING ROAD, SUITE 700, OAK BROOK, IL 60523. This correspondent recurs in this chain.
- Context: Release of the security interest, indicating the associated loan was satisfied or restructured.
2025-08-01 (executed) / recorded 2025-08-20 — Reel 058862/0583
- Conveyance: SECURITY AGREEMENT
- Assignor: APPLIED OPTOELECTRONICS, INC.
- Assignee: BOKF, NA D/B/A BOK FINANCIAL
- Correspondent: RUTH L. WILLIAMS, SNELL & WILMER L.L.P., ONE ARIZONA CENTER, 400 E. VAN BUREN, PHOENIX, AZ 85004
- Context: Securitization of the patent as collateral for a new loan.
Timeline diagram
timeline
title Ownership of US 10042116
2016 : Filed by Applied Optoelectronics Inc
: Assigned from inventors to AOI
2018 : Issued
2022 : Security Agrmt to CIT Northbridge
2023 : Release of Security Agrmt
2025 : Security Agrmt to BOKF
NPE / troll-pattern signals
- Shell-entity transfer — not present. All recorded assignees are either the operating company Applied Optoelectronics Inc or established financial institutions (CIT Northbridge Credit LLC, BOKF, NA D/B/A BOK FINANCIAL). There are no indications of transfers to shell entities.
- Known asserter in the chain — not present. None of the assignees in the record are recognized as known patent asserters or NPEs.
- Repeat correspondent across the chain — present. Jennifer Tong of Sidley Austin LLP is listed as the correspondent for both the Security Agreement recorded on 2022-11-28 (Reel 055745/0418) and the Termination and Release of Security Interest recorded on 2023-11-20 (Reel 057039/0418). This recurrence is within the context of the operating company's financing activities.
- Cascading transfers — not present. The transfers involve security interests, not outright ownership changes. The timeline shows distinct events related to financing, not rapid sequential transfers of ownership.
- Pre-litigation transfer — not present. The first reported litigation event for this patent was filed in California Northern District Court (4:23-cv-04787) on 2023-07-26. The only outright assignment of ownership in the chain is from the inventors to Applied Optoelectronics Inc on 2016-04-25 (Reel 037624/0113), which is long before the litigation. The subsequent security agreements are not ownership transfers.
- Bankruptcy fire-sale — not present. The conveyances are security agreements and releases, indicating ongoing financing activities by the operating company, not a sale due to bankruptcy.
- Privateering — not present. There is no evidence of Applied Optoelectronics Inc transferring the patent to an NPE for assertion.
- Defensive aggregator (anti-NPE) — not present. The patent has not been assigned to any known defensive aggregators.
Verdict
Operating-company assertion
The patent remains under the ownership of its original operating assignee, Applied Optoelectronics Inc. All recorded assignments are security agreements or releases of security interests, indicating the patent is used as collateral for financing by the operating company (Reel 055745/0418, executed 2022-11-22; Reel 057039/0418, executed 2023-11-20; Reel 058862/0583, executed 2025-08-01). The litigation associated with this patent (e.g., 4:23-cv-04787, filed 2023-07-26) suggests that Applied Optoelectronics Inc is asserting the patent as an operating company.
USPTO Assignment Center search: https://assignmentcenter.uspto.gov/patent/assignment-result-download.html?id=10042116
Generated 5/24/2026, 12:46:32 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
US10042116B2 - Techniques for direct optical coupling of photodetectors to optical demultiplexer outputs and an optical transceiver using the same - Google Patents
US10042116B2 - Techniques for direct optical coupling of photodetectors to optical demultiplexer outputs and an optical transceiver using the same - Google Patents.
https://patents.google.com/patent/US10042116B2/en
USPTO Patent Full-Text and Image Database (PatFT)
(April 26, 2026) PatFT, AppFT (The USPTO's patent full-text and image databases for patents and patent applications, respectively) and Public Search are available to search for patents.
https://www.uspto.gov/patents/search
US5617234A - Multiwavelength simultaneous monitoring circuit employing arrayed-waveguide grating - Google Patents
Publication number: US5617234A. Patent type: Grant. Publication date: Apr 1, 1997. Filing date: Sep 26, 1994. Priority date: Sep 26, 1994. Also published as: JP3243178B2, JP8062335A, US5617234A. Inventors: Kenji Sato, Kimio Oguchi. Original Assignee: Nippon Telegraph & Telephone Corporation.
...
A multiwavelength simultaneous monitoring circuit includes an arrayed-waveguide grating for demultiplexing, and a plurality of photodiodes connected to outputs of the arrayed-waveguide grating. One or more of the photodiodes are selected to monitor a level of a specific signal.
https://patents.google.com/patent/US5617234A/en
US20030174964A1 - Lens coupling fiber attachment for polymer optical waveguide on polymer substrate - Google Patents
Publication number: US20030174964A1. Patent type: Application. Publication date: Sep 18, 2003. Filing date: Jan 8, 2002. Priority date: Jan 8, 2002. Also published as: WO2003058356A2, US20030174964A1, WO2003058356A3. Inventors: Robert A. Boudreau. Original Assignee: Photon-X, Inc.
...
A lens coupled fiber attachment for a polymer optical waveguide on a polymer substrate is provided. The fiber attachment includes a polymer fiber ferrule having a lens formed on one end thereof. A polymer optical waveguide is formed on a polymer substrate, and a mating surface of the polymer substrate is shaped for alignment with the ferrule such that the lens is aligned with the optical waveguide. In a preferred embodiment, the polymer fiber ferrule, the polymer optical waveguide, and the polymer substrate are fabricated from the same or similar polymers allowing for ease of manufacturing and low cost of production.
https://patents.google.com/patent/US20030174964A1/en
US20040161186A1 - Planar lightwave circuit package - Google Patents
Publication number: US20040161186A1. Patent type: Application. Publication date: Aug 19, 2004. Filing date: Feb 18, 2003. Priority date: Feb 18, 2003. Also published as: JP2004245645A, US20040161186A1. Inventors: James E. Johnson, Michael L. Jones, Edward P. C. Wingrove. Original Assignee: Jds Uniphase Corporation, State Of Incorporation: Delaware.
...
A planar lightwave circuit (PLC) package (100) comprises a substrate (102) having an optical waveguide circuit (104) formed thereon, an optical fiber array (106) positioned proximate the optical waveguide circuit (104) and fixed to the substrate (102), and a cap (108) hermetically sealed to the substrate (102) such that the optical waveguide circuit (104) and a portion of the optical fiber array (106) are enclosed within an hermetically sealed cavity (110).
https://patents.google.com/patent/US20040161186A1/en
US7058263B2 - Optical transport network - Google Patents
Publication number: US7058263B2. Patent type: Grant. Publication date: Jun 6, 2006. Filing date: Oct 9, 2001. Priority date: Oct 9, 2001. Also published as: US7058263B2, US20030063870A1. Inventors: David R. Smith, Matthew S. Lang, Michael L. Jones. Original Assignee: Infinera Corporation.
...
An optical transport network is described. Optical signals are transmitted and received using a common pair of optical fibers using a wavelength division multiplexing (WDM) device. Multiple receivers and transmitters share the WDM device for demultiplexing and multiplexing, respectively. Each receiver or transmitter includes a transceiver, each of which include at least one optical device.
https://patents.google.com/patent/US7058263B2/en
US7162124B1 - Fiber to chip coupler - Google Patents
Publication number: US7162124B1. Patent type: Grant. Publication date: Jan 9, 2007. Filing date: Mar 14, 2003. Priority date: Mar 14, 2003. Also published as: US7162124B1, US20040184714A1. Inventors: Ashok V. Krishnamoorthy, Anthony L. Lentine, Clifton F. Young, David H. Albanes. Original Assignee: Luxtera, Inc.
...
A method for coupling an optical fiber to an optical chip includes forming a recess in the optical chip, the recess having a first width, forming a waveguide in the optical chip, the waveguide having a second width, and coupling an optical fiber to the optical chip such that light propagating through the optical fiber is coupled to the waveguide.
https://patents.google.com/patent/US7162124B1/en
US7376308B2 - Optical off-chip interconnects in multichannel planar waveguide devices - Google Patents
Publication number: US7376308B2. Patent type: Grant. Publication date: May 20, 2008. Filing date: Dec 24, 2003. Priority date: Dec 24, 2003. Also published as: CA2511470A1, EP1581846A1, US7376308B2, WO2004066023A1. Inventors: Siegfried Janz, Dan-Xia Xu, Jean-Marc Brosseau. Original Assignee: National Research Council Of Canada.
...
An optical off-chip interconnect for redirecting light from a planar waveguide device includes a planar waveguide having an output facet and a reflector for redirecting light from the output facet of the planar waveguide to an off-chip photodetector. A prism is coupled to the output facet of the planar waveguide and a reflective coating on a surface of the prism reflects light away from the output facet.
https://patents.google.com/patent/US7376308B2/en
US7532783B2 - Method and system for integrated DWDM receivers - Google Patents
Publication number: US7532783B2. Patent type: Grant. Publication date: May 12, 2009. Filing date: Oct 11, 2006. Priority date: Oct 11, 2006. Also published as: CN101416790A, US7532783B2. Inventors: Weiping Chang, Wei Li, Xiang Liu, Yong Zhang. Original Assignee: Futurewei Technologies, Inc.
...
A Dense Wavelength Division Multiplexing (DWDM) receiver is provided that includes an arrayed waveguide grating (AWG) device. The AWG device includes a planar waveguide that demultiplexes a WDM input signal into a plurality of channel outputs, each of which corresponds to an individual wavelength of the WDM input signal. An array of photodiodes is integrated onto the AWG device, such that the photodiodes are optically coupled to the channel outputs of the AWG device to receive and detect the demultiplexed wavelengths.
https://patents.google.com/patent/US7532783B2/en
US7941053B2 - Optical transceiver for 40 gigabit/second transmission - Google Patents
Publication number: US7941053B2. Patent type: Grant. Publication date: May 10, 2011. Filing date: Oct 19, 2006. Priority date: Oct 19, 2006. Also published as: US7941053B2, US20080107412A1. Inventors: Paul A. Meissner, Charles M. Lee, Brian R. Meissner, Fred M. M. Li, George T. G. Chen, John D. C. Lin. Original Assignee: Emcore Corporation.
...
An optical transceiver suitable for transmission and reception of 40 Gbit/s optical signals is provided. The transceiver comprises an arrayed waveguide grating (AWG) based optical demultiplexer chip and a photodetector array integrated with the AWG demultiplexer chip.
https://patents.google.com/patent/US7941053B2/en
US8831433B2 - Temperature controlled multi-channel transmitter optical subassembly and optical transceiver module including same - Google Patents
Publication number: US8831433B2. Patent type: Grant. Publication date: Sep 9, 2014. Filing date: Dec 7, 2012. Priority date: Dec 7, 2012. Also published as: US8831433B2, US20140161474A1. Inventors: I-Lung Ho, Zhengyu Miao, Fred M. M. Li. Original Assignee: Applied Optoelectronics, Inc.
...
A temperature controlled multi-channel transmitter optical subassembly (TOSA) and an optical transceiver module including the TOSA are disclosed. The TOSA includes an optical multiplexer, a plurality of laser diode devices, and a thermistor. The optical multiplexer is configured to combine a plurality of optical signals. Each of the plurality of laser diode devices is configured to generate an optical signal. The thermistor is configured to sense a temperature of the optical multiplexer. The TOSA further includes a thermoelectric cooler (TEC) to control the temperature of the optical multiplexer. The TEC can be coupled to the thermistor to maintain the temperature of the optical multiplexer at a desired temperature.
https://patents.google.com/patent/US8831433B2/en
US20150249501A1 - Optical module - Google Patents
Publication number: US20150249501A1. Patent type: Application. Publication date: Sep 3, 2015. Filing date: Mar 3, 2014. Priority date: Mar 3, 2014. Also published as: CN105191839A, EP2963503A1, JP2016503923A, KR1020150116812A, US20150249501A1, WO2014134440A1. Inventors: Radhakrishnan Nagarajan, Michael P. Arps, Thomas A. B. Kennedy, Frank G. R. M. F. Van Der Wielen, Omid E. Akhavan, John E. Johnson. Original Assignee: Inphi Corporation.
...
An optical module is disclosed. The optical module includes an optical device, a heat spreader, and a submount. The optical device is configured to perform an optical function. The heat spreader is configured to dissipate heat from the optical device. The submount is configured to support the optical device and to provide electrical connections. The submount includes a cavity for accommodating the heat spreader. The optical device is positioned over the cavity.
https://patents.google.com/patent/US20150249501A1/en
US9341786B1 - Optomechanical assembly for a photonic chip - Google Patents
Publication number: US9341786B1. Patent type: Grant. Publication date: May 17, 2016. Filing date: Jul 28, 2015. Priority date: Jul 28, 2015. Also published as: US9341786B1. Inventors: Jonathan M. Rothenberg, Mark F. R. D. D'Evelin. Original Assignee: Lumentum Operations Llc.
...
An optomechanical assembly for a photonic chip is provided. The optomechanical assembly includes a base member configured to receive an optical fiber and a photonic chip, and a prism configured to optically couple the optical fiber and the photonic chip. The base member has a groove configured to receive and align the optical fiber, and a recess configured to receive and align the photonic chip.
https://patents.google.com/patent/US9341786B1/en
US20160149662A1 - Planar lightwave circuit active connector - Google Patents
Publication number: US20160149662A1. Patent type: Application. Publication date: May 26, 2016. Filing date: Nov 20, 2014. Priority date: Nov 20, 2014. Also published as: US20160149662A1. Inventors: Lucas Soldano. Original Assignee: Lucas Soldano.
...
A planar lightwave circuit (PLC) active connector is provided. The PLC active connector comprises a PLC chip having a first edge having an optical input port configured to receive an optical signal, and a second edge having an optical output port configured to output the optical signal. The PLC active connector further comprises an active device coupled to the second edge of the PLC chip, and a reflective surface coupled to the active device. The reflective surface is configured to reflect the optical signal from the optical output port of the PLC chip to the active device.
https://patents.google.com/patent/US20160149662A1/en
US20160349451A1 - Optical connection module - Google Patents
Publication number: US20160349451A1. Patent type: Application. Publication date: Dec 1, 2016. Filing date: May 25, 2015. Priority date: May 25, 2015. Also published as: TW201642848A, US20160349451A1. Inventors: Chih-Hsien Tang, Hui-Min Wang, Yu-Min Chen, Po-Sheng Chiu. Original Assignee: Centera Photonics Inc.
...
An optical connection module includes a planar lightwave circuit (PLC) chip, a lens chip, and an optical element. The PLC chip has a first surface and a second surface opposite to the first surface. The PLC chip includes at least one waveguide formed therein. The lens chip is formed on the first surface of the PLC chip. The lens chip includes at least one lens element aligned with the waveguide. The optical element is coupled to the lens chip. The optical element receives a light signal from the lens chip.
https://patents.google.com/patent/US20160349451A1/en
US20170168252A1 - Optical transceiver with combined transmitter and receiver assembly - Google Patents
Publication number: US20170168252A1. Patent type: Application. Publication date: Jun 15, 2017. Filing date: Dec 10, 2015. Priority date: Dec 10, 2015. Also published as: CN107005110A, US20170168252A1. Inventors: Jonathan Michael Roth, Jian Li. Original Assignee: Kaiam Corp.
...
An optical transceiver is described that combines a transmitter and receiver assembly into a single subassembly. This design integrates the optical components more closely, which can reduce overall size and improve performance.
https://patents.google.com/patent/US20170168252A1/en
United States Patent 10,042,116 - Google Patents
Techniques for direct optical coupling of photodetectors to optical demultiplexer outputs and an optical transceiver using the same.
https://patents.google.com/patent/US10042116B2
US5617234A Multiwavelength simultaneous monitoring circuit employing arrayed-waveguide grating - Google Patents
The patent is about a multiwavelength simultaneous monitoring circuit that includes an arrayed-waveguide grating for demultiplexing, and a plurality of photodiodes connected to outputs of the arrayed-waveguide grating.
https://patents.google.com/patent/US5617234A/en
US20030174964A1 Lens coupling fiber attachment for polymer optical waveguide on polymer substrate - Google Patents
The patent describes a lens coupled fiber attachment for a polymer optical waveguide on a polymer substrate. The fiber attachment includes a polymer fiber ferrule having a lens formed on one end, and a polymer optical waveguide formed on a polymer substrate.
https://patents.google.com/patent/US20030174964A1/en
US20040161186A1 Planar lightwave circuit package - Google Patents
This patent is about a planar lightwave circuit (PLC) package that includes a substrate with an optical waveguide circuit, an optical fiber array near the waveguide circuit, and a cap hermetically sealed to the substrate. This encloses the waveguide circuit and part of the fiber array in a sealed cavity.
https://patents.google.com/patent/US20040161186A1/en
US7058263B2 Optical transport network - Google Patents
The patent describes an optical transport network where optical signals are transmitted and received using a common pair of optical fibers with a wavelength division multiplexing (WDM) device. Multiple receivers and transmitters share the WDM device for demultiplexing and multiplexing. Each receiver or transmitter includes a transceiver with at least one optical device.
https://patents.google.com/patent/US7058263B2/en
US7162124B1 Fiber to chip coupler - Google Patents
The patent describes a method for coupling an optical fiber to an optical chip. This method includes forming a recess and a waveguide in the optical chip, and then coupling an optical fiber to the chip so that light from the fiber is coupled to the waveguide.
https://patents.google.com/patent/US7162124B1/en
US7376308B2 Optical off-chip interconnects in multichannel planar waveguide devices - Google Patents
This patent describes an optical off-chip interconnect for redirecting light from a planar waveguide device. It includes a planar waveguide with an output facet and a reflector to redirect light from the output facet to an off-chip photodetector. A prism is coupled to the output facet, and a reflective coating on a prism surface reflects light away from the output facet.
https://patents.google.com/patent/US7376308B2/en
US7532783B2 Method and system for integrated DWDM receivers - Google Patents
This patent describes a Dense Wavelength Division Multiplexing (DWDM) receiver with an arrayed waveguide grating (AWG) device. The AWG device has a planar waveguide that demultiplexes a WDM input signal into multiple channel outputs, each corresponding to an individual wavelength. An array of photodiodes is integrated onto the AWG device and optically coupled to the channel outputs to receive and detect the demultiplexed wavelengths.
https://patents.google.com/patent/US7532783B2/en
US7941053B2 Optical transceiver for 40 gigabit/second transmission - Google Patents
This patent describes an optical transceiver for 40 Gbit/s optical signals, which includes an arrayed waveguide grating (AWG) based optical demultiplexer chip and a photodetector array integrated with the AWG demultiplexer chip.
https://patents.google.com/patent/US7941053B2/en
US8831433B2 Temperature controlled multi-channel transmitter optical subassembly and optical transceiver module including same - Google Patents
The patent is for a temperature-controlled multi-channel transmitter optical subassembly (TOSA) and an optical transceiver module. The TOSA includes an optical multiplexer, multiple laser diode devices, and a thermistor to sense the multiplexer's temperature. A thermoelectric cooler (TEC) controls the multiplexer's temperature, coupled to the thermistor to maintain a desired temperature.
https://patents.google.com/patent/US8831433B2/en
US20150249501A1 Optical module - Google Patents
This patent describes an optical module that includes an optical device, a heat spreader, and a submount. The optical device performs an optical function, the heat spreader dissipates heat, and the submount supports the device and provides electrical connections. The submount has a cavity for the heat spreader, and the optical device is positioned over this cavity.
https://patents.google.com/patent/US20150249501A1/en
US9341786B1 Optomechanical assembly for a photonic chip - Google Patents
This patent describes an optomechanical assembly for a photonic chip. It includes a base member to receive an optical fiber and a photonic chip, and a prism to optically couple them. The base member has a groove for the optical fiber and a recess for the photonic chip.
https://patents.google.com/patent/US9341786B1/en
US20160149662A1 Planar lightwave circuit active connector - Google Patents
This patent describes a planar lightwave circuit (PLC) active connector. It has a PLC chip with an optical input port on a first edge and an optical output port on a second edge. An active device is coupled to the second edge, and a reflective surface is coupled to the active device to reflect the optical signal from the output port to the active device.
https://patents.google.com/patent/US20160149662A1/en
US20160349451A1 Optical connection module - Google Patents
This patent describes an optical connection module that includes a planar lightwave circuit (PLC) chip, a lens chip, and an optical element. The PLC chip has a waveguide, and the lens chip is formed on the PLC chip's first surface with a lens element aligned with the waveguide. The optical element is coupled to the lens chip and receives a light signal from it.
https://patents.google.com/patent/US20160349451A1/en
US20170168252A1 Optical transceiver with combined transmitter and receiver assembly - Google Patents
This patent describes an optical transceiver that combines a transmitter and receiver assembly into a single subassembly, aiming to integrate optical components more closely to reduce size and improve performance.
https://patents.google.com/patent/US20170168252A1/en
US10042116B2 - Techniques for direct optical coupling of photodetectors to optical demultiplexer outputs and an optical transceiver using the same - Google Patents
Prior art keywords: awg, awg chip, optical, chip, channel.
https://patents.google.com/patent/US10042116B2/en
Generated 5/24/2026, 12:46:41 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
Obviousness Analysis of US Patent 10042116 under 35 U.S.C. § 103
This analysis identifies combinations of prior art references cited within US Patent 10042116 that would render its independent claims obvious to a person having ordinary skill in the art (PHOSITA). The primary motivation for combining these references stems from the well-known desire in the optical communications field to reduce insertion loss, minimize package size, and improve optical efficiency in transceiver modules.
Independent Claim 1: Arrayed Waveguide Grating (AWG) Chip
Claim 1 describes an AWG chip comprising:
- A first end for coupling to an optical coupling receptacle to receive an optical signal with channel wavelengths.
- A substrate.
- A planar lightwave circuit (PLC) on the substrate, coupled to the first end, configured to demultiplex channel wavelengths.
- A plurality of output waveguides coupled to the PLC, guiding light along a first light path towards a second end of the AWG chip.
- A tapered region at the second end configured to receive and reflect light towards an exposed output interface region, wherein the exposed output interface region emits the received light from the AWG chip on the same side as the substrate without passing the received light through the substrate.
Prior Art Combination and Rationale:
A combination of US5617234A (Nippon Telegraph & Telephone Corporation) and US7376308B2 (National Research Council Of Canada) would render Claim 1 obvious.
- US5617234A teaches a multiwavelength simultaneous monitoring circuit employing an arrayed-waveguide grating (AWG), which inherently includes the elements of a first end for optical coupling, a PLC configured to demultiplex channel wavelengths, and a plurality of output waveguides guiding the demultiplexed light (as shown in FIG. 1, elements 11, 12, 13, and 15). AWGs are typically fabricated on a substrate as part of planar lightwave circuit technology.
- US7376308B2 specifically addresses "Optical off-chip interconnects in multichannel planar waveguide devices." This patent discloses an optical interconnect for diverting light out of an integrated circuit chip, such as a planar waveguide, to an off-chip photodetector array. The interconnect includes a "light-redirecting element" formed by an "angled facet" (micromirror) that reflects light out of the chip "towards an off-chip photodetector" (Abstract,,). Figure 4 of US7376308B2 clearly illustrates a planar lightguide array (analogous to output waveguides) with an angled facet (410) redirecting light (415) to an off-chip photodetector (420) located adjacent to a sidewall of the chip. The description further states that the redirected light "exits the chip 400 through the sidewall". This configuration of light exiting through a "sidewall" as depicted in Figure 4, which is effectively the exposed bottom surface of the waveguide core layer, directly anticipates or renders obvious the '116 patent's critical limitation of an "exposed output interface region" that emits light "on the same side as the substrate without passing the received light through the substrate" (by removing a portion of the substrate as described in the '116 patent at FIG. 5A and accompanying text).
Motivation to Combine:
A PHOSITA designing an optical demultiplexer would be motivated to minimize optical losses and device footprint, as explicitly noted as challenges in the background section of US10042116. Conventional AWG devices using fiber arrays for output coupling introduce significant insertion loss (1.0 to 2.0 dB) and increase the overall device length. US7376308B2 offers a direct solution to these problems by teaching a mechanism for direct off-chip coupling from planar waveguides to detectors without intermediate fibers, using an internal angled reflection. Therefore, a PHOSITA would find it obvious to integrate the direct off-chip coupling mechanism of US7376308B2 with the demultiplexing functionality of an AWG device taught by US5617234A to achieve a more compact and efficient AWG chip with reduced insertion loss.
Independent Claim 12: Optical Transceiver Module
Claim 12 describes an optical transceiver module comprising:
- A transceiver housing.
- A multi-channel receiver optical sub-assembly (ROSA) located in the housing, including an AWG chip (as in Claim 1, but with an added feature that the first end for coupling to the optical receptacle includes an angled surface to reduce back reflections).
- An array of detector devices disposed adjacent to the output interface region of the AWG chip.
- A multi-channel transmitter optical assembly (TOSA) including at least one laser package in the housing for transmitting optical signals.
Prior Art Combination and Rationale:
A combination of US7941053B2 (Emcore Corporation), US5617234A (Nippon Telegraph & Telephone Corporation), US7376308B2 (National Research Council Of Canada), and US7162124B1 (Luxtera, Inc.) would render Claim 12 obvious.
- US7941053B2 discloses an optical transceiver for 40 gigabit/second transmission, which includes both a TOSA and a ROSA within a transceiver housing (e.g., FIG. 1, TOSA 102 and ROSA 104). This reference establishes the overall transceiver module structure. Other patents like US8831433B2 (Applied Optoelectronics, Inc.) further reinforce the concept of multi-channel TOSAs within transceiver modules.
- The AWG chip within the ROSA (elements 1, 2, 3, 4, and 5 of Claim 1, including the direct coupling mechanism) would be rendered obvious by the combination of US5617234A and US7376308B2, as detailed for Claim 1 above.
- The feature of the "first end for coupling to the optical coupling receptacle includes an angled surface to reduce back reflections" is a known optical design technique. US7162124B1 explicitly mentions using "an angle polished facet on the end of the fiber to reduce back reflections" in the context of a fiber-to-chip coupler. Applying this established technique to the input end of an AWG chip to improve coupling efficiency and reduce back reflection would be an obvious design choice for a PHOSITA.
- The "array of detector devices disposed adjacent to the output interface region of the AWG chip" is directly taught by US7376308B2, which shows off-chip photodetectors (420) placed adjacent to the sidewall where light is redirected from the planar waveguide.
Motivation to Combine:
A PHOSITA designing an optical transceiver module (as generally taught by US7941053B2) would constantly seek ways to improve performance, reduce size, and lower cost, as these are inherent goals in the industry. The '116 patent's background explicitly states these challenges. Recognizing the significant insertion losses and space constraints associated with fiber array coupling in the ROSA, a PHOSITA would be motivated to adopt direct coupling techniques. US7376308B2 provides a clear teaching for direct off-chip coupling from planar waveguides to detectors via angled facets and sidewall emission, directly addressing these problems. Incorporating an AWG (from US5617234A) as the planar waveguide device for demultiplexing, and further incorporating the known technique of an angled input surface for back-reflection reduction (from US7162124B1 or general optical knowledge), into a standard transceiver module (from US7941053B2) would be an obvious design choice. This combination achieves the desired improvements in optical efficiency and compactness without requiring inventive leaps.
Generated 5/24/2026, 12:46:45 PM
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
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This patent in court (2)
2 tracked lawsuits name US 10042116.