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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`APPLE INC.,
`Petitioner,
`
`v.
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`COREPHOTONICS, LTD.,
`Patent Owner
`
`_____________________
`
`
`Case IPR2018-01140
`Patent No. 9,402,032
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`_____________________
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`PETITIONER’S REPLY
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`

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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`I.
`Level of Ordinary Skill in the Art ................................................................... 1
`II.
`III. Claim Construction .......................................................................................... 4
`A.
`Total Track Length (“TTL”) ................................................................. 4
`IV. Ogino’s Example 6 embodiment anticipates claims 1 and 13......................... 7
`A. Ogino’s Example 6 embodiment has a TTL/EFL ratio of
`less than 1.0 when the optional cover glass is removed........................ 7
`The cover glass element
`in Ogino’s Example 6
`embodiment is actually optional. .......................................................... 9
`V. Ogino and Chen II render obvious claims 14 and 15 of the ’032
`patent. .............................................................................................................11
`A. A POSITA would have been motivated to modify Ogino’s
`Example 6 embodiment to improve relative illumination. .................11
`A POSITA would have understood that adjusting Ogino’s
`second lens to have a meniscus shape would have yielded
`an improved design. ............................................................................15
`1.
`Ogino does not require a second biconcave lens. .....................15
`2.
`A POSITA would have been motivated to modify
`Ogino’s Example 6 embodiment. .............................................16
`The differences in Ogino and Chen II are irrelevant.
` ...................................................................................................21
`A POSITA would have had the requisite knowledge to
`improve Ogino’s Example 6 embodiment by modifying
`the second lens and optimizing the lens system. .................................23
`VI. Conclusion .....................................................................................................27
`VII. Certificate of Word Count .............................................................................28
`ii
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`C.
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`B.
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`B.
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`3.
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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` PETITIONER’S EXHIBIT LIST
`Updated: June 21, 2019
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`Ex. 1001 U.S. Patent No. 9,402,032
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`Ex. 1002
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`Prosecution History of U.S. Patent No. 9,402,032
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`Ex. 1003 Declaration of José Sasián, Ph.D., under 37 C.F.R. § 1.68
`Ex. 1004 Curriculum Vitae of José Sasián
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`Ex. 1005 U.S. Patent No. 9,128,267 to Ogino et al. (“Ogino”)
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`Ex. 1006 Warren J. Smith, MODERN LENS DESIGN (1992) (“Smith”)
`Ex. 1007 U.S. Patent No. 7,918,398 to Li et al. (“Li”)
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`Ex. 1008 U.S. Patent No. 7,777,972 to Chen et al. (“Chen”)
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`Ex. 1009 U.S. Patent No. 8,233,224 to Chen (“Chen II”)
`Ex. 1010 Max Born et al., PRINCIPLES OF OPTICS, 6th Ed. (1980) (“Born”)
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`Ex. 1011
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`Prosecution history of U.S. Patent No. 9,128,267 to Ogino
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`Ex. 1012
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`Jane Bareau et al., “The optics of miniature digital camera
`modules,” SPIE Proceedings Volume 6342, International Optical
`Design Conference 2006; 63421F (2006)
`https://doi.org/10.1117/12.692291 (“Bareau”)
`
`Ex. 1013 U.S Patent No. 3,388,956 to Eggert et al. (“Eggert”)
`Ex. 1014 Reserved
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`Ex. 1015 Reserved
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`Ex. 1016 Reserved
`Ex. 1017 Reserved
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`Ex. 1018 Reserved
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`Ex. 1019 Reserved
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`Ex. 1020 Reserved
`Ex. 1021 Reserved
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`Ex. 1022 Reserved
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`Ex. 1023 Course description of OPT 214 from the University of Rochester
`web site
`Ex. 1024 Course description of OPT 244 from the University of Rochester
`web site
`Ex. 1025 Deposition transcript of Duncan Moore, Ph.D.
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`Ex. 1026 Declaration of Dr. José Sasián, Ph.D. in support of Petitioner’s
`Reply
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`iv
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`Introduction
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`I.
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`The Petition and the record as a whole provide detailed reasons why a
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`person of skill in the art (“POSITA”) would have understood Ogino to anticipate
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`claims 1 and 13 and the combination of Ogino and Chen II to render obvious
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`claims 14 and 15 of the ’032 patent. None of Patent Owner’s arguments are
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`supported by the evidence of record and therefore do not adequately refute the
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`Petition. The Board should thus maintain its finding of unpatentability of the
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`challenged claims in the final written decision.
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`II. Level of Ordinary Skill in the Art
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`Petitioner’s expert, Dr. Sasián, established that a POSITA would have had,
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`as of the priority date of the ’032 patent, “a Bachelor’s degree in Physics, Optical
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`Sciences, or equivalent training” and “approximately three years of experience in
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`designing multi-lens optical systems.” Ex. 1003 at 8; Petition, Paper 2 at 8. Dr.
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`Sasián also established that a POSITA “would have had experience in analyzing,
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`tolerancing, adjusting, and optimizing multilens systems,” “would have been
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`familiar with the specifications of lens systems,” “would have known how to use
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`lens design software such as Codev, Oslo, or Zemax, and would have taken a lens
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`design course.” Ex. 1003 at 8; Petition at 7-8.
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`Contrary to any differences set forth in Patent Owner’s Response, Patent
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`Owner’s expert, Dr. Moore, agrees with Dr. Sasián on the level of a POSITA
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`1
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`related to the ’032 patent. Ex. 1025, 79:10-80:14. Dr. Moore also agrees that a
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`POSITA would be proficient in using lens design software to design and optimize
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`a lens system:
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`Q. … But a person of ordinary skill in the art in 2013
`would be proficient in at least one lens design program;
`correct?
`A. If they’re doing lens design, yes.
`Q. And a person of ordinary skill in the art in 2013
`would be able to use the computer program to optimize
`lens designs; correct?
`A. If they’ve got lens design experience, that’s
`correct.
`Q. You would agree with me that a person of
`ordinary skill in the art would have lens design experience;
`correct?
`A. Yes.
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`Ex. 1025, 29:21-30:9. Dr. Moore further agrees that a POSITA having taken a lens
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`design course would be able to design five-lens assemblies using lens design
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`software (e.g., Code V or Zemax). Ex. 1025, 43:3-12, 45:11-18, 80:10-14.
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`Moreover, according to Dr. Moore, a POSITA would know how to use lens
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`design software (e.g., Code V) to optimize or improve an existing lens design:
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`Q. ... Code V can also optimize a lens; correct?
`A. That’s correct. So you can tell the program that
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`you want to vary certain parameters of a lens. For
`example, the radius of curvature, the thickness of the lens,
`the aspheric coefficients. Any parameters that you want
`you can say either hold them fixed or vary them. And then
`the program, through a fairly complicated algorithm, then
`actually goes through and varies them and determine how
`to make a better lens. You determine as a lens designer
`what you’re trying to improve. So if you’re trying to
`improve the ray fans, for example, you would say, okay, I
`want to make sure the aberrations measured in the ray fans
`are smaller. And it will then do that. So it’s -- Code V has
`been around since the 1960s, so it’s a fairly sophisticated
`program.
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`Ex. 1025, 28:11-29:5. In other words, a POSITA with lens design experience, as
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`originally set forth in the Petition, would have known as of the priority date of the
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`’032 patent, how to modify, correct, and optimize existing lens systems with the
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`assistance of lens design software. Ex. 1003 at 9.
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`Finally, Patent Owner argues that Petitioner “provides no evidence that a
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`POSITA would be familiar with the specifications of lens systems for miniature
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`camera, let alone miniature telephoto cameras.” Response, Paper 14 at 12-13.
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`Patent Owner, however, does not explain why miniature lenses or a miniature
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`telephoto lens specification would be outside, or different from, the knowledge of a
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`POSITA according to Drs. Sasián and Moore.
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`3
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`III. Claim Construction
`A. Total Track Length (“TTL”)
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`The Petition, relying on Dr. Sasián’s expert testimony, established that the
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`proper construction of “TTL” in view of the specification of the ’032 patent is “the
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`length of the optical axis spacing between the object-side surface of the first lens
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`element and the image plane.” Petition at 9 (emphasis added). In deposition, Patent
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`Owner’s expert, Dr. Moore, agreed that this definition is included in the broadest
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`reasonable construction of the term. See Ex. 1025, 69:18-21 (“— would Dr.
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`Sasián’s construction of TTL be included in that broadest reasonable construction?
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`… A. I think so.”).
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`Dr. Moore also agrees that the term TTL was known in the art and was
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`similarly used for film-based cameras before the creation of electronic sensors:
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`Q. So if a person of ordinary skill in the art was
`developing a lens system for a camera, would they
`understand that total track length is the length along the
`optical axis from the object side surface of the first
`element to the image plane?
`A. For a camera? You mean like a film camera?
`Q. Mm-hmm.
`A. It would be to the film.
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`Ex. 1025, 68:9-17. Thus, not only is Petitioner’s definition of “TTL” the broadest
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`reasonable, but it is also consistent with the plain and ordinary meaning used by
`4
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`POSITAs even prior to electronic sensors. Accordingly, the Board correctly
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`adopted the construction of this term in the Institution Decision (see Paper 10 at
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`10-11) and should maintain this construction in the final written decision.
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`Patent Owner argues for a narrower construction as shown below:
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`Patent Owner
`“the length of on optical axis between
`the object-side surface of the first lens
`element and the electronic sensor.”
`Response at 15 (emphasis added)
`
`Petitioner
`“the length of on optical axis between
`the object-side surface of the first lens
`element and the image plane.”
`Petition at 9 (emphasis added)
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`Patent Owner’s narrowed construction (to require an electronic sensor) is not
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`supported by the evidence of record, but instead unnecessarily imports an
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`electronic sensor into the claims to avoid prior art lens systems like Eggert (Ex.
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`1013) at issue in the related IPR2018-01146 (see IPR2018-01146), where film is
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`used at the image plane.
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`Patent Owner relies on a supposedly “express” definition in the Summary
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`section of the ’032 patent which states: “the total track length on an optical axis
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`between the object-side surface of the first lens element and the electronic sensor is
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`marked ‘TTL’.” Ex. 1001, 1:61-63. But this is not an express definition. It does not
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`“‘clearly set forth a definition of the disputed claim term’ other than its plain and
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`ordinary meaning.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F. 3d 1362,
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`1365 (Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d
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`5
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`1359, 1366 (Fed. Cir. 2002)). To qualify as an express definition, the specification
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`“must ‘clearly express an intent’ to redefine the term.” Id. (quoting Helmsderfer v.
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`Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed.Cir.2008)). But the
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`specification here fails to clearly express an intent to redefine “TTL” to require an
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`electronic sensor.
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`Second, Patent Owner points to U.S. Patent No. 8,395,851 (Ex. 2004), U.S.
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`Publication No. 2011/0249346 (Ex. 2005), U.S. Publication No. 2011/0279910
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`(Ex. 2006), and U.S. Publication No. 2011/0261470 (Ex. 2007) for support.
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`Response at 17-18. Reliance on this extrinsic evidence, though, is contrary to the
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`embodiments in Figs. 1A, 2A, and 3A in the ’032 patent that define the total track
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`length to the image plane. See Ex. 1001, 3:12-13 (“an image plane 114 for image
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`formation of an object”), 5:10-11 (“an image plane 214 for image formation of an
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`object”), 6:27-28 (“an image plane 314 for image formation of an object”). The
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`single mention of an electronic sensor is in reference to Fig. 1A where “an image
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`sensor (not shown) is disposed at image plane 114 for the image formation.” Ex.
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`1001, 3:13-15 (emphasis added). Thus, the intrinsic evidence from the
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`specification clearly defines “TTL” to the image plane but does not require an
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`electronic sensor.
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`For these reasons, Patent Owner’s proposed construction of TTL is overly
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`narrow, is not supported by the specification, and should not be adopted.
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`6
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`IV. Ogino’s Example 6 embodiment anticipates claims 1 and 13.
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`Patent Owner argues that Ogino’s Example 6 embodiment does not
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`anticipate claims 1 and 13 because the embodiment’s “optional” cover glass (i.e.,
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`optical member CG) is, according to Patent Owner, not actually optional. See
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`Response at 20-27. According to Patent Owner, when the cover glass is included,
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`the Example 6 embodiment has a TTL/EFL ratio that falls outside the recited range
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`of less than 1.0. See id; Ex. 1001, 7:48-50. This argument fails because Ogino
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`expressly teaches that the cover glass element in the Example 6 embodiment is
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`optional, and Patent Owner’s expert, Dr. Moore, agrees that the Example 6
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`embodiment, relied on by the Petition, does not require the cover glass element and
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`discloses TTL without the cover glass element. See Ex. 1005, 2:19-34, 22:10-36
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`(Table 11); Petition at 21-25; Ex. 1025, 56:20-57:10.
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`A. Ogino’s Example 6 embodiment has a TTL/EFL ratio of less than
`1.0 when the optional cover glass is removed.
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`As set forth in the Petition, Ogino’s Example 6 embodiment with the cover
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`glass (i.e., optical member CG) removed has a TTL/EFL ratio of less than 1.0. See
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`Petition at 21-25; Ex. 1003 at 27-32. This embodiment is represented in Ogino’s
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`Table 11 where the total track length “TL” is listed as 4.387 mm. Ex. 1005, 22:10-
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`36. This total track length value is not “theoretical” as Patent Owner alleges (see
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`Response at 21), but is expressly disclosed as one possible implementation of the
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`Example 6 embodiment. Ex. 2008, 92:17-93:20; Ex. 1005, 22:10-36.
`7
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`Specifically, Table 11 discloses two implementations of the Example 6
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`embodiment—one with the cover glass element and one without the cover glass
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`element. The implementation without the cover glass element is expressly
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`represented in Table 11 where the total lens length (“TL”) and the back focal
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`length (“Bf”) values both use an air-converted value. Ex. 1005, 14:47-54 (“the
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`back focal length Bf indicates an air-converted value, and likewise, in the total
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`lens length TL, the back focal length portion uses an air-converted value.”).
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`As Patent Owner acknowledges, an “air-converted value” removes the cover glass
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`element from the lens system. See Response at 21-22 (“the TL replaces the
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`physical thickness of the optical member CG with a value equal to its thickness
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`divided by the ratio of CG’s index of refraction to that of air.”). This is the
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`embodiment that the Petition shows to anticipate claims 1 and 13. See Petition at
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`21-25.
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`Patent Owner’s expert, Dr. Moore, agrees that the Example 6 embodiment
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`with the cover glass removed meets the claimed TTL/EFL ratio:
`
`Q. Just so we have a clear record, if the cover glass
`of Ogino is removed, is the ratio of TTL over EFL less
`than 1?
`MR. RUBIN: Objection, form.
`A. If the cover glass is removed, that is correct.
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`Ex. 1025, 78:12-17.
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`8
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`Q. ... Then turning back to page 30 of Exhibit 1003,
`Dr. Sasian’s declaration, if the cover glass of Ogino is
`removed, do you agree with Dr. Sasian’s calculation on
`page 30?
`A. If the cover glass is removed, that is—that
`definition is—that equation is correct. If the cover glass
`removed.
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`Ex. 1025, 135:18-24.
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`Thus, there is no dispute that Ogino’s Example 6 embodiment with the cover
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`glass removed anticipates claims 1 and 13.
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`B.
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`The cover glass element in Ogino’s Example 6 embodiment is
`actually optional.
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`Despite Ogino’s Table 11 explicitly describing the Example 6 embodiment
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`with the cover glass element removed, Patent Owner argues that the cover glass is
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`not optional, but instead, is a necessary element. See Response at 23, 25. Patent
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`Owner acknowledges that Ogino teaches the cover glass being optional but argues
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`that that teaching is not connected to “any particular embodiment.” Id. at 24.
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`Rather, Patent Owner argues that “a POSITA would not understand Ogino as
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`disclosing a modification of … Example 6 to remove the CG element” (id. at 25),
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`that “the CG element is a necessary component of an electronic sensor,” (id.) and
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`that “Ogino makes clear that, if removed, the CG element would need to be
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`replaced with something else” (id. at 26).
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`The evidence does not support Patent Owner’s assertions. First, Patent
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`Owner’s assertions mistakenly focus on a general disclosure that a cover glass
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`element is optional and fails to acknowledge that Example 6 explicitly dicsloses a
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`lens assembly without a cover glass element. See Ex. 1005, 22:10-36. Second, if a
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`cover glass element is always required, then the cover glass element (i.e., the glass
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`window) for the embodiments in the ’032 paent would also not be optional. See
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`Ex. 1001, 3:11-12 (“optical lens system further comprises an optional glass
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`window 112”), 5:14-15 (“optional glass window 212”), 6:30-31 (“optional glass
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`window 312”); Ex. 1025, 72:6-13 (Dr. Moore admitting CG is optional in the ’032
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`patent). Third, if a cover glass element is required, then Patent Owner’s expert, Dr.
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`Moore, would have said so in deposition:
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`Q. I just want to make sure. Are you saying that you
`cannot have a TTL element if there is no cover glass?
`A. No. You can have a TTL measurement.
`Q. So cover glass isn’t required for a TTL
`element unless it’s present in the system; correct?
`A. If it’s not present, then it doesn’t count.
`Q. But you still can have a TTL measurement;
`correct?
`A. Yes, you can.
`Q. … If cover glass is not present in a lens system,
`it need not be counted in the TTL measurement;
`correct?
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`10
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`A. That’s correct.
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`Ex. 1025, 70:6-21 (emphasis added).
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`In sum, none of the evidence of record, including Dr. Moore’s opinion,
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`supports Patent Owner’s assertion that a cover glass element in Ogino is required
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`and must be includes in a total track length determination. Claims 1 and 13 are
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`therefore anticipated by the Ogino Example 6 embodiment as set forth in the
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`Petition.
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`V. Ogino and Chen II render obvious claims 14 and 15 of the ’032 patent.
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`Patent Owner argues that claims 14 and 15 are not rendered obvious by the
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`combination of Ogino and Chen II for two reasons—it would not have been
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`obvious to remove the cover glass element from Ogino’s Example 6 embodiment
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`(see Response at 29-31) and the reasons to combine Ogino and Chen II provided in
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`the Petition are insufficient (see id. at 31-47). As discussed above, the evidence
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`does not support Patent Owner’s argument that a cover glass element in Ogino is
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`necessary and required. See supra Section IV. Patent Owner’s other arguments are
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`also not supported by the evidence of record, as discussed below.
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`A. A POSITA would have been motivated to modify Ogino’s
`Example 6 embodiment to improve relative illumination.
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`The Petition established that a POSITA would have been motivated to
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`combine the teaching of Ogino and Chen II based, in part, on Bareau’s assertion
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`11
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`that “[l]ens specifications usually require a value greater than 50% at the edge of
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`the field.” See Petition at 36-46; Ex. 1003 at 42-51; Ex. 1012 at 7. Patent Owner
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`disagrees and instead argues that Bareau is not a peer-reviewed publication and
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`does not “speak at all to requirements” for telephoto lenses. See Response at 33.
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`These argument fails for several reasons.
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`First, there is no requirement that prior art publications be peer reviewed,
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`particularly well-known and widely-cited publication from an International Optical
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`Design Conference, like Bareau. Massachusetts Institute of Technology v. AB
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`Fortia, 774 F.2d 1104, 1109, (Fed. Cir. 1985) (Paper orally presented to between
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`50 and 500 persons at a scientific meeting open to all persons interested in the
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`subject matter, with written copies distributed without restriction to all who
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`requested, is a printed publication). Further, Dr. Sasián relies on Bareau as
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`evidence of the knowledge of a POSITA and what a POSITA would have been
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`motivated to consider in relation to lenses for cell phone applications. See Ex.
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`2008, 124:24-125:4. To that end, Bareau shows that a POSITA would have
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`understood “that typical lens assemblies used for cell phone cameras preferably
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`yield a relative illumination greater than 50%” and that “the typical chief ray angle
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`(CRA) for modern cellphone camera lenses [] tends to be reduced as compared to
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`other applications.” Petition at 55; Ex. 1003 at 42.
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`Second, Patent Owner complains that Bareau is not directed to telephoto
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`12
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`lenses or lenses with a narrow field of view (see Response at 33-34) but offers no
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`reasons or evidence as to why that distinction is even relevant. There is no
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`distinction because Bareau generally describes “typical lens specifications for a ¼”
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`sensor format” independent of the zoom factor of a lens assembly. Ex. 1012 at 3.
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`Bareau in no way excludes telephoto lenses, and Patent Owner provides no
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`evidence showing that a POSITA would have found the typical lens specifications
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`(and in particular, relative illumination) of Bareau inapplicable to telephoto cell
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`phone lens systems. “[T]he test for obvious is not ... that the claimed invention
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`must be expressly suggested in any or all of the references ... [r]ather, the test is
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`what the combined teachings of the references would have suggested to those of
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`ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981).
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`Additionally, Patent Owner’s expert, Dr. Moore, implicitly agrees that a
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`POSITA would modify a lens design like Ogino’s based on the teachings of Chen
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`II and the knowledge of a POSITA shown in Bareau. Specifically, Dr. Moore
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`testified in deposition that to design a lens system, a POSITA would have started
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`“by look[ing] at other patents or prior art,” like Ogino, and then “after finding a
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`suitable prior art lens system, would then try to modify that prior art lens system to
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`their needs.” Ex. 1025, 83:25-84:5.
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`Dr. Moore also testified that a POSITA would look to other lens systems for
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`ideas on modifying an existing design, but even then, would have had the requisite
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`IPR2018-01140 (Patent No. 9,402,032)
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`skill to know that bending a lens (as Dr. Sasián did in modifying Ogino’s second
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`lens based on teachings from Chen II) may be all that is required:
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`Q. And once you find the one that’s closest for you,
`a person of ordinary skill in the art would get ideas from
`other patents or prior art as well; correct?
`A. That’s one possibility. But if somebody’s got
`some skill, they probably would just start—they would
`know what to do next in terms of changing the bending
`of the lens or changing some of the parameters of the lens,
`and they might not have to do anything more than that.
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`Ex. 1025, 84:12-21 (emphasis added), 86:10-87:14 (explaining use of the term
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`bending to include changing from biconcave to meniscus). Dr. Moore further
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`testified that a POSITA would consider changing a lens shape from biconcave to
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`meniscus (again, as Dr. Sasián did in modifying Ogino’s second lens based on
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`teachings from Chen II), to improve performance:
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`Q. … My question is would a person of ordinary
`skill in the art have the skill to bend a biconcave lens to a
`meniscus lens and then solve the problem of increased
`aberrations if it was possible to solve?
`A. If there’s a solution, then they could.
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`Ex. 1025, 89:20-24.
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`Accordingly, even Dr. Moore agrees a POSITA would have selected an
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`existing five-lens system, like Ogino’s, as a starting point, and then would have
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`been motivated, based on either another lens system or existing knowledge, to
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`improve Ogino’s design by changing the shape of one or more lens elements to
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`improve performance. Thus, the evidence of record supports the reasons to
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`combine provided in the Petition and Dr. Sasián’s modification of Ogino based on
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`the teachings of Chen II and Bareau.
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`B. A POSITA would have understood that adjusting Ogino’s second
`lens to have a meniscus shape would have yielded an improved
`design.
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`Patent Owner argues that Ogino teaches away from modifying the biconcave
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`shape of the second lens in the Example 6 embodiment because it allows additional
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`vignetting and causes additional aberrated rays. See Response at 38-39. Patent
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`Owner also argues that a POSITA would not have combined Ogino and Chen II
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`because some parameters differ between the lens systems. See id. at 36-37. These
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`arguments are not supported by the evidence, as discussed below.
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`1. Ogino does not require a second biconcave lens.
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`Ogino does not require that the second lens be biconcave. Rather, Ogino
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`teaches that “the present invention is not limited to the abovementioned
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`embodiments” and explicitly discloses modifying “the values of the radius of
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`curvature” and “the aspheric coefficient” of lens elements. Ex. 1005, 16:11-19
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`(quoted in Petition at 42-43). Even Patent Owner concedes that Ogino “suggest[s]
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`varying parameters in a manner that was still within the scope of Ogino’s patented
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`invention.” Response at 35. Consistent with this, Dr. Moore testified in deposition
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`that a POSITA would have known to change the shape of particular lens in a
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`system to achieve a particular objective. Ex. 1025, 86:16-23 (“[s]o I could have a
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`lens that looks like a biconvex lens that has a certain focal length, and I could take
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`and bend it; that is, I could change its shape so it becomes plano-convex but still
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`has the same focal length. And I can then bend some more, and I’d still have the
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`same focal length; but it’s now a meniscus shape.”).
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`Other evidence, such as Smith, similarly shows that changing the curvature
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`of surfaces within a lens system is a standard improvement technique known to
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`POSITAs. See Ex. 1006 at 25-37; Ex. 1005, 16:11-19. Thus, the evidence does not
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`support Ogino teaching away from modifying the shape of any of its lens elements.
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`2.
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`A POSITA would have been motivated to modify Ogino’s
`Example 6 embodiment.
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`As shown in the Petition, a POSITA would have been specifically motivated
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`to modify the second lens of Ogino’s Example 6 embodiment to reduce
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`undesirable vignetting and ray aberration in addition to improving relative
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`illumination greater than 50%. See Petition at 54-59. Dr. Moore’s conclusion
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`regarding that vignetting can take place on the third, fourth, and fifth lens elements
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`is unreliable because it is based on assumptions not in Ogino. Ex. 1026 ¶ 11. Ogino
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`does not provide lens diameters or vignetting apertures for the Example 6 lens
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`assembly that would vignette the light beams on the third, fourth, or fifth lens
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`elements. Id.
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`The need for improvement is evidenced by Dr. Sasián’s ray tracing of
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`Ogino’s original Example 6 embodiment where the second lens is the source of
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`undesirable vignetting that decreases the light rays passing through the system. Id.
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`Petition at 54; Ex. 1003 at 59.
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`A POSITA would have understood that vignetting can occur because of two
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`causes: 1) total internal reflection occurring within a lens element, and 2) a lens
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`diameter is not large enough to let all light rays through the system. Ex. 1026 ¶ 12.
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`A POSITA would have also recognized that vignetting occurs at the second lens of
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`Ogino’s Example 6 embodiment because of total internal reflection, shown by the
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`termination of the rays in the closeup ray trace diagram at the outer field of view
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`for the off-axis beam:
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`Total internal reflection
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`Id. As shown in the ray trace below, there is no ray vignetting caused by the third,
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`fourth, and fifth lens elements at the outer field of view. Id.
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`Id. Consequently, as discussed in the Petition, a POSITA would have understood
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`that vignetting at the second lens is the source of a loss of relative illumination at
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`the outer edge of the lens system. Ex. 1026 ¶ 12; see also Petition at 54-59; Ex.
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`1003 at 55-65. Thus, a POSITA would not have understood that vignetting takes
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`place in lenses three, four, and five as Ogino does not specify vignetting diameters
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`for the Example 6 lens assembly. Ex. 1026 ¶ 12.
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`Rather, a POSITA would have known of the specific parameters relevant to
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`reducing vignetting in the second lens, such as curvature and aspheric coefficients.
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`See Ex. 1005, 16:11-19; Ex. 1006 at 25-37. Even Dr. Moore agrees that a POSITA
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`would have known that changing the shape of a lens can increase or decrease
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`vignetting:
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`Q. Would a person of ordinary skill in the art have
`the knowledge of changing the shape of a lens if they
`wanted to increase or decrease vignetting?
`A. They could change the shape to do that. They
`may be able to do it. It depends on what the parameters
`are.
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`Ex. 1025, 97:7-12.
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`Further, a POSITA would have understood that the undesirable vignetting of
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`Ogino’s design would be mitigated by modifying the shape of the second lens, and
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`would have been motivated to change the shape of the second lens to have
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`meniscus shape, as taught by Chen II. See Petition at 59. A POSITA also would
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`have recognized additional benefits of this modification including less aberrated
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`rays (see Petition at 54-59), as shown in the modified Ogino design, below:
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`Petitioner’s Reply
`IPR2018-01140 (Patent No. 9,402,032)
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`Ex. 1003 at 63; Petition at 59.
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`Thus, a POSITA would have been motivated to modify the second lens of
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`Ogino’s Example 6 embodiment to produce a lens system with better relative
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`illumination for cell phone use.
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`3.
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`The differences in Ogino and Chen II are irrelevant.
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`Patent Owner argues that “Ogino and Chen II disclose substantially different
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`lens systems.” Response at 36. But this argument is not supported by the evidence.
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`IPR2018-01140 (Patent No. 9,402,032)
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`Instead, a POSITA would have found the opposite because both Ogino and Chen II
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`describe five-lens systems for mobile phone cameras with all lenses being
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`aspheric, a first lens with a meniscus shape (convex toward the object side) with
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`positive refractive power, a second lens with negative refractive power, a third lens
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`with a meniscus shape (convex toward the object side) and with a negative
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`refractive power, a fourth lens with a meniscus shape (convex toward the image
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`side) with a positive refractive power, and a fifth lens with a meniscus shape
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`(convex toward the image side) and with a negative refractive