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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,
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`v.
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`COREPHOTONICS, LTD.,
`Patent Owner
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`_____________________
`
`
`Case IPR2018-01146
`Patent No. 9,568,712
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`_____________________
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`PETITIONER’S REPLY
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`Petitioner’s Reply
`IPR2018-01146 (Patent No. 9,568,712)
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`B.
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`V.
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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. Konno anticipates claims 1, 12, 13, 15, 16, and 19. ........................................ 6
`A. Konno’s Ex2-LN2 is a physical lens system that a
`POSITA would have been able to make and use. ................................. 7
`The error in Konno’s disclosure is a question of
`enablement, not inherency. .................................................................... 8
`1.
`A POSITA would have been able to make and use
`Konno’s Ex2-LN2 embodiment without undue
`experimentation. .......................................................................... 9
`The combination of Konno and Bareau renders claims 6 and 14
`obvious. ..........................................................................................................15
`A.
`Patent Owner was not the first to invent a lens system with
`TTL/EFL < 1.0 and F# < 2.9. ..............................................................15
`Konno does not teach away from the well-known desire to
`lower the F# in photographic lens systems. ........................................17
`The Petition’s obviousness analysis follows the well-
`known lens optimization process understood by POSITAs.
` .............................................................................................................18
`D. A POSITA would have known how to modify a lens
`design to lower the F# and the result would have been
`predictable. ..........................................................................................20
`Patent Owner’s analysis of Konno’s modified Ex2-LN2
`embodiment is fundamentally flawed because it relies
`analysis scaled in inches rather than millimeters. ...............................22
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`B.
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`C.
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`E.
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`Petitioner’s Reply
`IPR2018-01146 (Patent No. 9,568,712)
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`VI. Eggert anticipates claims 15-17. ....................................................................24
`VII. Conclusion .....................................................................................................27
`VIII. Certificate of Word Count .............................................................................28
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`ii
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`Petitioner’s Reply
`IPR2018-01146 (Patent No. 9,568,712)
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`PETITIONER’S EXHIBIT LIST
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`Updated: June 21, 2019
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`Ex. 1001 U.S. Patent No. 9,568,712
`Ex. 1002
`Prosecution History of U.S. Patent No. 9,568,712
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`Ex. 1003 Declaration of José Sasián, Ph.D, under 37 C.F.R. § 1.68
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`Ex. 1004 Curriculum Vitae of José Sasián
`Ex. 1005 Reserved
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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 Reserved
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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”)
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`Ex. 1013 U.S Patent No. 3,388,956 to Eggert et al. (“Eggert”)
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`Japanese Patent Pub. No. JP2013106289 to Konno et al.
`Ex. 1014
`Ex. 1015 Certified English translation of JP2013106289 (“Konno”)
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`Ex. 1016 Bruce J. Walker, OPTICAL ENGINEERING FUNDAMENTALS (1995)
`(“Walker”)
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`Ex. 1017 Reserved
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`iii
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`Ex. 1018 Reserved
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`Ex. 1019 Reserved
`Ex. 1020 Reserved
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`Ex. 1021 U.S. Patent No. 9,678,310 to Iwasaki et al. (“Iwasaki”)
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`Ex. 1022 Reserved
`Ex. 1023 Course description of OPT 214 from the University of Rochester
`web site
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`Ex. 1024 Course description of OPT 244 from the University of Rochester
`web site
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`Ex. 1025 Deposition transcript of Duncan Moore, Ph.D.
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`Ex. 1026 Declaration of Dr. José Sasián in support of Petitioner’s Reply
`Ex. 1027 U.S. Patent No. 4,610,514 to Nakamura (“Nakamura”)
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`iv
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`Introduction
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`I.
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`Petitioner’s Reply
`IPR2018-01146 (Patent No. 9,568,712)
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`The Petition provides detailed reasons, supported by evidence, that show
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`how the challenged claims of the ’712 patent would have been either anticipated or
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`rendered obvious to a person of ordinary skill in the art (“POSITA”). None of
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`Patent Owner’s arguments are supported by the evidence and therefore fail to
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`adequately refute the Petition. The Board should thus find the challenged claims
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`unpatentable 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 ’712 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 9; Petition, Paper 2 at 7-8. 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 9; Petition at 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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`related to the ’712 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.
`
`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
`you want to vary certain parameters of a lens. For
`example, the radius of curvature, the thickness of the lens,
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`Petitioner’s Reply
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`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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`’712 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 13. Patent
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`Owner, however, does not explain why a miniature lens or a miniature telephoto
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`lens would be outside, or different from, the knowledge of a POSITA according to
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`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
`IPR2018-01146 (Patent No. 9,568,712)
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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 ’712 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 9-10 (emphasis added). In deposition,
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`Patent Owner’s expert, Dr. Moore, agreed that this definition is included in the
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`broadest reasonable construction of the term. See Ex. 1025, 69:18-21 (“Q. —
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`would Dr. Sasián’s construction of TTL be included in that broadest reasonable
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`construction? … 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
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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 8 at 8)
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`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)
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`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), where film is 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 ’712 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, 1:63-65. 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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`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’s description here fails to clearly express an intent to redefine “TTL”
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`to require an 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 each
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`of the embodiments in Figs. 1A, 2A, and 3A in the ’712 patent that define the total
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`track length to the image plane. See Ex. 1001, 3:13-14 (“an image plane 114 for
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`image formation of an object”), 5:16-17 (“an image plane 214”), 6:33-34 (“an
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`image plane 314”). The single mention of an electronic sensor references Fig. 1A
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`where “an image sensor (not shown) is disposed at image plane 114 for the image
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`formation.” Ex. 1001, 3:14-16 (emphasis added). Thus, the intrinsic evidence from
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`the 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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`IV. Konno anticipates claims 1, 12, 13, 15, 16, and 19.
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`As set forth in the Petition, Konno’s Ex2-LN2 embodiment anticipates
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`claims 1, 12, 13, 13, 15, and 19 of the ’712 patent. Patent Owner does not dispute
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`any specific limitation. Instead, Patent Owner only argues that Konno’s
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`embodiment is “a mathematical abstraction of an impossible lens assembly in
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`which the fourth and fifth lenses … would overlap—collide in space.” Response at
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`21. Patent Owner thus believes that Konno’s disclosure is “hypothetical” and
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`“[w]ithout further adaptation and changes, Konno cannot itself anticipate claims to
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`a physical lens assembly.” Id. This argument is both incorrect and applies a flawed
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`“inherency” standard rather than properly addressing Konno’s Ex2-LN2
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`embodiment under an enablement standard. As discussed below, Konno’s Ex2-
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`LN2 embodiment is enabled.
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`A. Konno’s Ex2-LN2 is a physical lens system that a POSITA would
`have been able to make and use.
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`As an initial matter, and contrary to Patent Owner’s argument, Patent
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`Owner’s expert, Dr. Moore, believes that a POSITA would know how to make and
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`use Konno’s Ex2-LN2 design:
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`Q. So a person of ordinary skill in the art would be
`able to construct an actual lens system using the data in
`Table 1 of Apple Exhibit 1015, the Konno reference?
`A. I believe so.
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`Ex. 1025, 109:5-9. Dr. Moore responded similarly when questioned by opposing
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`counsel on redirect:
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`Petitioner’s Reply
`IPR2018-01146 (Patent No. 9,568,712)
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`Q. … My question for you, sir, is would a person of
`ordinary skill in the art be able to construct an actual
`physical lens system using the data that’s in the column in
`Table 1 that’s labeled “Example 2 LN2”?
`A. No you would need the data from these other
`charts. This is only the first order of data.
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`
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`Id., 132:5-10. Thus, Patent Owner’s sole argument regarding Konno’s Ex2-LN2
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`embodiment is not supported by any evidence, even from its own expert.
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`B.
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`The error in Konno’s disclosure is a question of enablement, not
`inherency.
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`Patent Owner’s “inherency” argument is irrelevant. The real issue is whether
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`Konno’s Ex2-LN2 embodiment is enabled. See Elan Pharmaceuticals v. Mayo
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`Foundation, 346 F. 3d 1051, 1054 (Fed. Cir. 2003) (arguments about inherent
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`disclosure in an anticipating reference “are more properly characterized as
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`enablement arguments”). “In order to anticipate a claimed invention, a prior art
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`reference must enable one of ordinary skill in the art to make the invention without
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`undue experimentation.” Impax Labs. v. Aventis Pharma., 545 F. 3d 1312, 1314
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`(Fed. Cir. 2008). Konno’s Ex2-LN2 embodiment anticipates the challenged claims
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`because a POSITA could have made or used it without “undue experimentation.”
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`See id.; Ex. 1026 ¶ 5.
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`1.
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`Petitioner’s Reply
`IPR2018-01146 (Patent No. 9,568,712)
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`A POSITA would have been able to make and use Konno’s
`Ex2-LN2 embodiment without undue experimentation.
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`“Undue experimentation” is examined using the following factors: “(1) the
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`quantity of experimentation; (2) the amount of direction or guidance present; (3)
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`the presence or absence of working examples; (4) the nature of the invention; (5)
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`the state of the prior art; (6) the relative skill of those in the art; (7) the
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`predictability or unpredictability of the art; and (8) the breadth of the claims.” Id. at
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`1314-15 (citing In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1998)). These factors in
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`relation to Konno’s Ex2-LN2 embodiment are addressed below:
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`(1) The quantity of experimentation:
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`A POSITA would have understood that one way of correcting the error in
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`the Konno Ex2-LN2 embodiment is by simply moving the fifth lens toward the
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`image plane by 0.05 mm so that the fourth and fifth lenses no longer overlap. Ex.
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`1026 ¶ 2. This is shown in the diagram below where the distance between the
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`fourth and fifth lenses is increased by 0.05 mm to account for the overlap:
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`Petitioner’s Reply
`IPR2018-01146 (Patent No. 9,568,712)
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`Corrected version of Konno’s Ex2-LN2 embodiment with the fifth lens
`element moved toward the image plane (i.e., to the right) by 0.05 mm
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`Id.
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`Correcting an overlap of two lens elements in a lens design program by
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`moving one lens by a small amount is well within the knowledge and skill level of
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`a POSITA and is just one routine option that a POSITA would consider in
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`correcting such an error. Id. ¶ 3. Moving the fifth lens by 0.05 mm produces a
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`working and producible design with image quality that is consistent with Konno’s
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`Ex2-LN2 specifications, as shown below:
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`Petitioner’s Reply
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`Analysis of corrected version of
`Konno’s Ex2-LN2 embodiment
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`Analysis of original version of
`Konno’s Ex2-LN2 embodiment
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`Analysis of corrected version of
`Konno’s Ex2-LN2 embodiment
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`Analysis of original version of
`Konno’s Ex2-LN2 embodiment
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`Id. ¶¶ 3-4. This is a change that a POSITA would understand to be the result of
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`merely assembling the lens, as lenses cannot overlap. Id. ¶ 5.
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`Thus, a POSITA could have manufactured a usable lens system based on
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`Konno’s anticipating embodiment without undue experimentation. See id.
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`Petitioner’s Reply
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`Additionally, moving the 5th lens to correct the overlap still yields a lens design
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`that anticipates claims 1, 2, 7, 12, 13, 15, 16, and 19 of the ’712 patent since the
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`position of the 5th lens element does not affect any of the analysis in Dr. Sasián’s
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`original declaration. Ex. 1026 ¶ 4; see also Ex. 1003 at 20-62.
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`(2) The amount of direction or guidance present &
`(3) The presence or absence of working examples
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`Konno provides a POSITA substantial guidance in the form of lens
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`prescription data sufficient to model a working example of its Ex2-LN2
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`embodiment in lens design software. This is evidenced by Dr. Sasián’s model of
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`the Ex2-LN2 embodiment in Zemax (see Petition at 62; Ex. 1003 at 69) and Dr.
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`Moore’s model of the Ex2-LN2 embodiment in Code V (see Ex. 2013 at 80).
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`Konno thus provides a POSITA substantial guidance in making and using the Ex2-
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`LN2 embodiment.
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`(4) The nature of the invention
`(8) The breadth of the claims
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`Konno is directed to and claims a dual lens apparatus consisting of a wide-
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`angle and a telephoto lens. Ex. 1015 ¶ [0007]. Konno also discloses four distinct
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`lens systems—two wide-angle and two telephoto—that can be paired together in
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`its apparatus. Thus, Konno claims a physical lens apparatus. Additionally, Patent
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`Owner’s expert, Dr. Moore, believes the Ex2-LN2 embodiment can also operate as
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`a stand-alone lens system:
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`12
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`Petitioner’s Reply
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`Q. In example 2 of table 1 there is a column that
`says “LN2” correct?
`A. Yes.
`Q. Can LN2 be a stand-alone lens assembly system?
`A. Yes.
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`Ex. 1025, 120:21-121:2. Thus, Konno claims a physical dual lens apparatus with
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`an anticipating lens design that can operate independently.
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`(5) The state of the prior art
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`According to Patent Owner’s expert, Dr. Moore, five-lens systems were first
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`developed over 100 years ago. See Ex. 1025, 109:10-15 (“Q. … When did persons
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`of ordinary skill in the art first start designing five lens systems? A. Oh, it’s got to
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`be a hundred years ago….”). Also, according to Dr. Moore, five-lens systems such
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`as those disclosed in Konno and the ’712 patent first existed about 20 years. Id.,
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`111:9-12 (“… so if you go back in the history of it, I don’t know when the first cell
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`phone camera lens was introduced, but it’s got to be 20 years ago, I would think.”).
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`Five lens systems, though, could have been designed in software as early as the
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`1960s. Ex. 1025, 29:4-5 (“… Code V has been around since the 1960s, so it's a
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`fairly sophisticated program.”). Thus, the state of the prior art as it relates to
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`Konno, is at least 20 years old and is supported by sophisticated software tools for
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`design and modification.
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`(6) The relative skill of those in the art:
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`As set forth above in Section II and agreed to by Patent Owner’s expert, Dr.
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`Moore, the skill level of a POSITA would have included correcting or modifying
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`lens designs by use of lens design software. See supra Section II. Dr. Moore also
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`believes that a POSITA would have been able to use software to correct the
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`overlap of two lens elements (i.e., the error in Konno’s Ex2-LN2 embodiment). Ex.
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`1025, 62:10-13 (“Q. Could a person of ordinary skill in the art use lens design
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`software to correct an error of overlap between two lenses? A. They should be able
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`to.”). Thus, a POSITA had the requisite skill and ability to correct Konno’s error.
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`(7) The predictability or unpredictability of the art
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`Modifying a lens design (such as correcting Konno’s error) was not only
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`predictable but could have been achieved automatically using lens design software.
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`See Ex. 1026 ¶ 6-7. Dr. Moore agrees. See Ex. 1025, 28:11-23. Consequently, lens
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`design software has made the process of adjusting, modifying, and optimizing a
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`lens design not only manageable but predictable. See Ex. 1026 ¶ 7; Ex. 2003 at
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`168. A POSITA using lens design software would therefore have been able to
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`predictably and routinely correct the error in Konno’s Ex2-LN2 embodiment. Id.
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`This correction would have been as simple as entering Konno’s embodiment into a
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`software tool and varying the parameters related to the error so that the software
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`could correct the error. Ex. 1026 ¶ 7.
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`14
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`Petitioner’s Reply
`IPR2018-01146 (Patent No. 9,568,712)
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`The evidence therefore shows that Konno’s Ex2-LN2 embodiment is
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`enabled because a POSITA could have made and used it without undue
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`experimentation.
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`V. The combination of Konno and Bareau renders claims 6 and 14 obvious.
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`Patent Owner disputes the combination of Konno and Bareau as set forth in
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`the Petition. See Response at 26-39. But none of Patent Owner’s arguments
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`overcome the evidence showing that Bareau teaches the well-known desire to
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`lower the F# of photographic lenses and that it would have been obvious and well
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`within the level of ordinary skill to improve Konno’s Ex2-LN2 lens system by
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`lowering the F#. See Petition at 58-65; Ex. 1003 at 64-73. Even Patent Owner’s
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`expert, Dr. Moore, agrees that a POSITA would look to one lens design for ideas
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`on how to modify another. Ex. 1025, 84:12-85:8. Despite this, Patent Owner
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`argues that the Petition’s obviousness analysis suffers from impermissible
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`hindsight and poor lens performance. See Response at 26-39. These arguments are
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`not supported by the evidence of record, as discussed below.
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`A.
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`Patent Owner was not the first to invent a lens system with
`TTL/EFL < 1.0 and F# < 2.9.
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`Patent Owner complains that Dr. Sasián’s basis for lowering the F# of
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`Konno’s Ex2-LN2 lens design is the problem that the ’712 patent was trying to
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`solve (i.e., “provid[ing] a lens assembly with TTL/EFL < 1.0 and F# < 2.9”). See
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`Response at 27-28. This allegedly reveals impermissible hindsight. Id. Patent
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`15
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`Petitioner’s Reply
`IPR2018-01146 (Patent No. 9,568,712)
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`Owner also complains that the Petition failed to present any evidence that
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`“providing a lens assembly with a TTL/EFL < 1.0 and F# < 2.9 with good image
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`quality characteristics was a problem known to a POSITA prior to the ’712
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`patent’s effective filing date in 2013.” Response at 28.
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`Patent Owner, however, did not invent a telephoto lens system with an F#
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`less than 2.9. For example, U.S. Patent No. 9,678,310 to Iwasaki et al. (“Iwasaki,”
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`Ex. 1021)1 discloses a prior art lens system with TTL of 3.89, EFL of 4.00, and F#
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`of 2.8. See Ex. 1021, 17:5 (Table 7). Iwasaki describes its lens system as
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`“realiz[ing] a shortening of the total length and high imaging performance which is
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`compatible with an increased number of pixels, while maintaining an angle of view
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`which is standard for portable terminals.” Ex. 1021, 2:7-10. The need for miniature
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`high-performance lens system with TTL/EFL < 1.0 and F# < 2.9 was therefore
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`known prior to the ’712 patent and therefore cannot be the basis for Patent
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`Owner’s supposed hindsight argument. See also, e.g., Ex. 1027, Tables 1-5
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`(disclosing telephoto lenses with F# < 2.9 in 1986).
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`1 Iwasaki was presented in IPR2018-1356 that was denied institution based on 35
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`U.S.C. § 325(d) without the Board addressing the application of Iwasaki to the
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`challenged claims. See IPR2018-1356, Paper 9 at 9. As shown in the Petition in
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`that case, Iwasaki anticipates claims 1, 12, 13, and 14. See id., Paper 2.
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`16
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`Petitioner’s Reply
`IPR2018-01146 (Patent No. 9,568,712)
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`B. Konno does not teach away from the well-known desire to lower
`the F# in photographic lens systems.
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`
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`The desire among POSITAs to lower the F# for a lens system used in a cell
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`phone camera was known, as confirmed by Patent Owner’s expert Dr. Moore. Ex.
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`1025, 122:9-13 (“Q. But a person of ordinary skill in the art holding all else equal
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`understands that lower F-numbers mean better cameras in cell phones; correct? A.
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`If everything else is constant, the answer is yes.”). Thus, Bareau merely reflects the
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`general desire among POSITAs to develop lens systems for cell phones with lower
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`F#, specifically F# less than 2.8.
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`Patent Owner argues that Konno “teaches away from requiring a reduced F#
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`in a miniature telephoto lens assembly.” Response at 30-31. This is incorrect and
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`mischaracterizes Konno’s disclosure. Patent Owner’s basis for this argument is
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`Konno’s teaching that “it is preferred that the F-numbers of the first and second
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`imaging optical systems are close to each other so as to satisfy the conditional
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`expression (5). To slim down the entire apparatus, it is advantageous to make the
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`second imaging optical system darker than the first imaging optical system.” See
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`Response at 30 (quoting Ex. 1015 ¶ [0038] (emphasis added)).
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`But this passage only states that the second lens is made darker when used in
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`combination with the first lens. See Ex. 1015 ¶ [0038]; Ex. 1026 ¶ 10. Konno’s
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`statement is therefore specific to the nature of its dual lens apparatus and does not
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`17
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`Petitioner’s Reply
`IPR2018-01146 (Patent No. 9,568,712)
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`apply when the second lens (i.e., Ex2-LN2) is used separate and independent from
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`the apparatus. Id. Rather, as shown in Bareau and admitted by Dr. Moore,
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`POSITAs would have sought to lower the F# of a cell phone lens to achieve better
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`performance. See id.; Ex. 1012 at 3-4; Ex. 1025, 122:9-13.
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`C. The Petition’s obviousness analysis follows the well-known lens
`optimization process understood by POSITAs.
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`Patent Owner argues that the Petition’s “use of hindsight reconstruction is
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`fatal to its obviousness argument.” Response at 31. But the obviousness analysis in
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`the Petition “is the path that the person of ordinary skill in the art would have
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`followed, as evidenced by the pertinent prior art.” Otsuka Pharm. Co., v. Sandoz,
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`Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012). This path is explained in Patent
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`Owner’s own exhibit, “Chapter 9: The Optical Design Process” from the book
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`Optical System Design. See Ex. 2003. Patent Owner’s expert, Dr. Moore,
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`acknowledges that this process was known and followed by POSITAs. Ex. 1025,
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`90:8-92:7.
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`According to the Ex. 2003, a POSITA looking to design a lens would likely
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`start with an existing design for a “good starting point … in obtaining a viable
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`solution.” Ex. 2003 at 172; Ex. 1025, 83:15-84:11. Once the existing design is
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`entered into a lens design program, a POSITA would then use the software to
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`“establish the variables and constraints” and “set the performance error function
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`18
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`Petitioner’s Reply
`IPR2018-01146 (Patent No. 9,568,712)
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`and enter the constraints” for the new design. Ex. 2003 at 172-73. One such
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`constraint that can be set is the F#. Id. at 172 (“The constraints include items such
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`as focal length, ƒ/number, packaging-related parameters (length, diameter, etc.),
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`specific airspaces, specific ray angles, and virtually any other system
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`requirement.”). A POSITA would then “initiate the optimization” in the lens
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`design program. Id. at 174. On a modern-day computer system, “a six- to seven-
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`element double Gauss lens with five fields of view will take in the order of 5 to 10
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`s per optimization cycle.” Id. The cycle is repeated “until the desired performance
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`is met.” Id.
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`This is the process that Dr. Sasián followed in modifying Konno’s Ex2-LN2
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`to have an F# of 2.8. See Ex. 1003 at 64-73. Dr. Sasián first loaded the existing
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`Konno Ex2-LN2 lens design into a lens design program. See id. at 69. Dr. Sasián
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`then constrained the F# parameter in the software to 2.8 based on Bareau’s
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`teaching of the desirability to have cell phone cameras with that F#. See id. at 70-
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`71. Dr. Sasián then optimized the Ex2-LN2 lens design until the best solution was
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`determined having an F# of 2.8. See id. Thus, Dr. Sasián’s modification of
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`Konno’s Ex2-LN2 lens design to achieve an F# of 2.8 followed the same process
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`that a POSITA would have followed to achieve the same result. The evidence
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`therefore supports the fact that a POSITA would seek to modify the Konno Ex2-
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`LN2 embodiment to have a lower F# and would know how to make the
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`19
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`modification using lens design software.
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`Petitioner’s Reply
`IPR2018-01146 (Patent No. 9,568,712)
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`D. A POSITA would have known how to modify a lens design to
`lower the F# and the result would have been predictable.
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`As set forth in the Petition, Dr. Sasián showed how a POSITA could have
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`modified Konno’s Ex2-LN2 lens design to have an F# of 2.8. Petition at 63-65; Ex.
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`1003 at 70-74. Dr. Sasián even modeled the Ex2-LN2 lens design to have an F# of
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`2.8 in the 2011 version of Zemax as evidence that the result was predictable result.
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`Id. Despite this, Patent Owner argues that the Petition “fails to sufficiently show
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`that its proposed modifications to Konno to add the F# < 2.9 limitation would have
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`had predictable results and been obvious for a POSITA to try.” Response at 32.
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`This argument really boils down to whether a POSITA had the requisite skill
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`level to modify the F# of an existing lens design. Patent Owner believes that
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`“[r]educing the F# thus leads to an uncertain result” and that Dr. Sasián’s
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`modification of the Ex2-LN2 embodiment was the result of his 30 years of design
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`experience, more than the level of a POSITA. Response at 34, 36. This reasoning
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`is not supported by the evidence as it contradicts both Dr. Moore’s deposition
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`testimony and the specification of the ’712 patent.
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`First, in deposition, Dr. Moore stated that lowering th