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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______
`
`
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`COREPHOTONICS LTD.,
`
`Patent Owner.
`___________
`
`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
`___________
`
`
`RECORD OF ORAL HEARING
`Held: October 8, 2019
`____________
`
`
`
`
`
`
`
`Before MARC S. HOFF, BRYAN MOORE, and MONICA ULLAGADDI,
`Administrative Patent Judges.
`
`
`
`
`
`
`
`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONR:
`
`
`MICHAEL S. PARSONS, ESQUIRE
`DAVID O'BRIEN, ESQUIRE
`Haynes Boone LLP
`2505 North Plano Road
`Suite 4000
`Richardson, TX 75082
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`MARC A. FENSTER, ESQUIRE
`NEIL A. RUBIN, ESQUIRE
`Russ August & Kabat
`12424 Wilshire Blvd.
`12th Floor
`Los Angeles, CA 90025
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday, October 8,
`2019, commencing at 9:30 a.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia, before Donna Jenkins, Notary
`Public.
`
`
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`
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`2
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`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
`
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`P R O C E E D I N G S
` - - - - -
`JUDGE ULLAGADDI: Good morning. Welcome to the
`
`
`Patent Trial and Appeal Board. We are here today for oral argument in Inter
`Partes Review matter No. 2018-01133, 2018-01140 and 2018-01146, cases
`in which Apple is the Petitioner and Corephotonics is the Patent Owner.
`Your panel for the hearing today includes myself, Judge Moore to my left
`and Judge Hoff to my right. I would like to start by getting the appearances
`of counsel. Who do we have on behalf of Petitioner?
`
`
`MR. PARSONS: Your Honor, Michael Parsons on behalf of
`Petitioner Apple. I'm from Haynes & Boone.
`
`
`MR. O'BRIEN: David O'Brien from Haynes & Boone also on
`behalf of Apple. We also have two colleagues in the gallery, Ms. Hong Shi
`and Mr. Jordan Maucotel, as well as our client Mr. Aron (indiscernible) is
`here.
`JUDGE ULLAGADDI: Thank you. And who do we have on
`
`
`behalf of Patent Owner?
`
`
`MR. FENSTER: Good morning, Your Honors. Marc Fenster
`with Russ, August & Kabat on behalf of Patent Owner Corephotonics.
`
`
`MR. RUBIN: Good morning, Neil Rubin also of Russ, August
`& Kabat on behalf of Corephotonics.
`
`
`JUDGE ULLAGADDI: Thank you all and thank you all for
`joining us today. I have a few administrative matters that I'd like to go over
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`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
`
`before we get started. Each party will have two hours and fifteen minutes to
`argue their cases and the way we'd like to break this up is we would like to
`address the two related cases first, so Petitioner you would get ninety
`minutes, Patent Owner ninety minutes and Petitioner can reserve whatever
`portion of that ninety minutes for your rebuttal. We'll take a brief break and
`then we'll return for the final case where we will take 45 minutes and 45
`minutes.
`So we're going to hear first from Petitioner. Petitioner, you will
`
`
`present your arguments in chief. Patent Owner you'll be then permitted to
`present your arguments. Petitioner, for the first two cases would you like to
`reserve any time for rebuttal?
`
`
`MR. PARSONS: Your Honor, I just want to clarify. Would
`you like us to address both the 1140 and the 1146 case within that 90
`minutes so, in other words, in my original would you like me to address all
`the issues across those two cases and then have opposing counsel do their
`presentation on the same two cases?
`
`
`JUDGE ULLAGADDI: That is correct.
`
`
`MR. PARSONS: Okay. Thank you. In that case I think I
`would like to have an hour and then I would like to reserve 30 minutes for
`rebuttal.
`JUDGE ULLAGADDI: Okay. Thank you. Let me just get the
`
`
`timer set here.
`
`
`MR. O'BRIEN: Your Honor, we didn't frankly thought that you
`might go down like that. We're going to reshuffle our counsels, backup
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`MR. PARSONS: Okay.
`MR. FENSTER: Your Honor, the court reporter would
`
`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
`
`counsel for the one set of cases (indiscernible) at the table. Is there a time
`that you'd like to let us do that?
`
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`JUDGE ULLAGADDI: Whenever you're comfortable doing
`that. Sure.
`MR. PARSONS: Your Honors, I have slide decks and papers if
`
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`you would like to have copies of those.
`
`
`JUDGE ULLAGADDI: I think we have the electronic copy,
`we're okay.
`
`
`
`
`probably --
`MR. PARSONS: She has a copy of it.
`
`
`MR. FENSTER: Excuse me, Your Honor. So just to clarify
`
`
`the oral order for the hearing determined that the two lens cases, the 032 and
`the 712, would not be consolidated but would be heard differently because
`they address different issues, different prior art, different claims. Counsel
`had both prepared to do the 032, then the 712. I would suggest that if it's
`okay with the Board then we proceed that way because then, you know,
`you'll hear responsive arguments on the 032 back and forth and then the 712
`as opposed to having them intermingle. I just want to throw that out there as
`it seemed to be what the Oral order had contemplated the hearing, the order
`for oral argument had contemplated and that's the way we had prepared for
`it. We think that makes more sense but happy to do it however the panel
`feels.
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`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
`
`JUDGE ULLAGADDI: Petitioner, counsel, do we have any
`
`
`thoughts on that?
`
`
`MR. PARSONS: We have no objection to that. We actually
`came in prepared to present the 032 case first and then to the extent that
`there's an overlap between the two proceedings, then we would just skip
`ahead if there were no further questions on the second proceeding and in that
`case, I think that we would go -- I would do 30 minutes and then 15 minutes
`for rebuttal. My only request is that we keep a consolidated transcript for
`these two cases so any that choose overlap are part of the record in both
`proceedings.
`
`
`JUDGE ULLAGADDI: Okay. I think we indicated either way
`that there would be 90 minutes total.
`
`
`MR. PARSONS: Okay.
`
`
`JUDGE ULLAGADDI: How you wish to break it up is
`perfectly fine with us. So you would like to do 30 minutes for your case in
`chief and 15 minutes for rebuttal?
`
`
`MR. PARSONS: Yes, agreed. And then we would just address
`the 032 patent first and we will (indiscernible) and start with the 712 patent
`after that.
`JUDGE ULLAGADDI: Okay. Before you begin, the one thing
`
`
`I would like to mention is that when you're working through your
`demonstrative slides, that if you could please make sure to reference the
`demonstrative slide that you're using so that the trial record accurately
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`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
`
`reflects your arguments and your citations. So you will have 30 minutes for
`your primary case and when you are ready, you may begin.
`
`
`MR. PARSONS: Thank you, Your Honor. If you can direct
`your attention to our demonstratives that we've submitted, I am Michael
`Parsons. I am here on behalf of Petitioner Apple in IPR 2018-1140
`involving the 032 patent. There are four issues that we would like to discuss
`with the Board today.
`
`
`If you can direct your attention to slide 2. The first one is the
`proper construction of TTL and we believe that that would be to the image
`plane. The second issue we would like to address is the level of ordinary
`skill in the art and the fact that that includes using lens design software.
`We'd then like to address the substantive ground that Patent Owner has
`raised with regard to our first ground in our petitioner and that is that the
`Ogino lens assembly meets the TTL over EFL ratio of being less than one,
`and then finally we'd like to address that a person of ordinary skill in the art
`would have been motivated to modify Ogino's second lens to improve
`performance.
`
`
`Now skipping to slide 4. Here on slide 4 we have reproduced
`claim 1 from the 032 patent and what you will notice here is that the only
`issue for claim construction that is before the Board at the moment is the
`construction of the term TTL. Now TTL stands for total track length.
`
`
`JUDGE ULLAGADDI: Can I pause you just for a moment
`counsel?
`
`
`
`MR. PARSONS: Yes.
`
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`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
`
`JUDGE ULLAGADDI: I'm having some connectivity issues.
`
`
`If I could get that paper copy I'd appreciate it.
`
`
`MR. PARSONS: Oh, yes. Absolutely.
`
`
`JUDGE ULLAGADDI: Thank you. Please begin.
`
`
`MR. PARSONS: Thank you, Your Honor. If you direct your
`attention to claim 1 in the 032 patent, there are two limitations that are
`impacted by the TTL claim language. The first one is where the lens
`assembly has a total track length of 6.5 millimeters or less. The second one
`is a ratio of TTL over EFL of less than one. Now the term TTL stands for
`total track length. That's specified in the specification of the 032 patent.
`Patent Owner is arguing that the construction of this term is the length on the
`optical axis from the object side surface of the first lens element to the
`electronic sensor and we are merely arguing a slightly different construction
`that the construction of TTL goes to the image plane rather than electronic
`sensor. Now, you will note that in claim 1 an electronic sensor is not
`specifically mentioned anywhere and so essentially what Patent Owner is
`arguing is they're arguing for an importation of an electronic sensor into a
`lens assembly but it's not specifically mentioned in the claim.
`
`
`Now directing your attention to slide 5. I think this pretty
`much encapsulates what the parties' arguments are. This is an excerpt on
`slide 5 from the summary of the 032 patent and if you'll notice it starts off in
`the summary by describing that the embodiments disclosed herein refer to an
`optical lens assembly and that lens assembly includes five lens elements.
`
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`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
`
`Then in the second paragraph it goes on to describe a lens
`
`
`system and that lens system incorporates the lens assembly and then also
`includes other optional components that may be included including an
`aperture stop, a cover glass and an image sensor and then in the third
`paragraph we get to what Patent Owner is relying on is their express
`definition. They think that this is an express definition, we disagree, where
`they recite the language of the total track length on an optical axis between
`the object side surface of the first lens element and the electronic sensors
`marked TTL.
`
`
`Now based on the first two paragraphs in the summary, we
`don't believe that Patent Owner has clearly defined throughout the
`specification an attempt to redefine TTL to incorporate an electronic sensor
`by default. Instead, our position is that the claim is directed to a lens
`assembly and that lens assembly just requires five lens elements and then an
`optical lens system would then include the assembly which is not claimed
`and then that would include optional components like an aperture stop, a
`cover glass and what Patent Owner is trying to import, an image sensor.
`
`
`If you turn to slide 6, this is shown and consistent with the
`embodiments described in the 032 patent. But importantly in figure 2A this
`shows the second embodiment in the 032 patent and what this is
`representing is an optical lens system as shown in the text to the right and
`then there's an image plane 214 for image formation of an object. Same
`thing with the embodiment of figure 3A where there's an optical lens system
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`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
`
`and an image plane for image formation of the object. Now note that neither
`of these embodiments include an image sensor placed at the image plane.
`
`
`Flipping to slide 7. This is the only place in the specification
`where an image sensor is specifically included in the embodiments and
`you'll note that this is also an optical lens system with an image plane 114
`for image formation and then an image sensor is disposed on the image
`plane 114 for image formation. So basically what our argument is is that the
`proper construction of TTL is to an image plane because the specification is
`directed to a lens assembly as well as the claim and a lens assembly by
`definition only includes five lens elements as they describe in their
`specification and none of the embodiments in the specification -- and all of
`the embodiments are absent of the limitation of an electronic sensor. So
`based on the description across the entire specification we don't believe that
`the specification supports the idea that electronic sensor is a necessary
`component of the claims and even in the construction of TTL.
`
`
`Now directing your attention to slide 8, we asked Patent
`Owner's expert, Dr. Moore, a couple of questions about this. The first thing
`that we discussed with Dr. Moore, and Dr. Moore ended up agreeing, that
`our construction is included in the broadest reasonable construction. In slide
`8 specifically we asked Dr. Moore,
`
`
`"So if you were to ask what the broadest reasonable
`construction what was that is reasonable it would be,"
`
`
`Sorry, the language is a little muddy here. The most important
`part is about line 10 where it says, the measurement of the length along the
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`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
`
`optical axis from the object side surface of the element to the image plane,
`Dr. Moore indicated that yes, that's where the sensor would be placed and,
`again, that's consistent with the specification of the 032 patent. We then
`followed up and asked Dr. Moore if Dr. Sasian's construction of TTL, which
`is to the image plane, if that would be included in the broadest reasonable
`and Dr. Moore agreed that he thinks that that would be the case.
`
`
`Now, flipping to slide 9. We again talked to Dr. Moore and Dr.
`Moore agrees that TTL was a term that existed prior to the invention of
`electronic sensors and specifically at this point on the left side the excerpt
`from the transcript we asked,
`
`
`"So could a person of ordinary skill in the art measure total
`track length prior to electronic sensors?"
`
`
`Dr. Moore in fact agreed that total track length did exist before
`electronic sensors. So we're not asking the Board to adopt a construction
`that is outside the realm of possibility, we're actually asking the Board to just
`adopt a construction that was well known in the art prior to even electronic
`sensors, despite what Patent Owner is trying to import into the claim.
`
`
`Now as far as prior art systems that existed before electronic
`sensors, we asked Dr. Moore again if total track length existed for old film
`cameras and Dr. Moore indicated about line 17 on the right side of slide 9
`that it would be to the film, and we wanted to clarify that so we asked Dr.
`Moore,
`"A person of ordinary skill in the art would understand that film
`
`
`as an image plane, correct?"
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`Dr. Moore agreed. He said,
`"In yes, the old days, the image plane was where the film was
`
`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
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`placed."
`So simply what we're arguing is that for a lens assembly it has
`
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`five lens elements according to the specification and then it has an image
`plane that is at some point in space away from the fifth lens element and that
`is where the image is formed in space. Now what is placed there to capture
`the image is not an element of the claim limitation and because the claim is
`directed to only a lens assembly, what is placed there to capture the image is
`not something that's necessarily required as part of the claim limitation.
`
`
`JUDGE ULLAGADDI: Could you talk a little bit about the
`paraxial image plane?
`
`
`MR. PARSONS: Yes. I believe this is an issue that Patent
`Owner raised for the first time in their surreply.
`
`
`JUDGE ULLAGADDI: Patent Owner did raise the issue --
`
`
`MR. PARSONS: Okay, yes.
`
`
`JUDGE ULLAGADDI: -- and in the quoted deposition
`testimony here on slide 9.
`
`
`MR. PARSONS: Agreed. Yes, the paraxial image plane is
`essentially a calculation that is done in order to determine where the image
`plane would be. Now Patent Owner's arguing that there's a difference
`between a paraxial image plane and an actual image plane and in some cases
`a lens designer may choose to locate the image plane to some other location
`other than what the calculated paraxial image plane would be. That's
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`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
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`basically a design consideration, but in terms of the 032 patent there's no
`teaching in there that the image sensor would be placed anywhere other than
`the image plane as defined by the embodiments. So to the extent that this is
`a concept that exists in lens design, we just don't think that it's applicable to
`this case because, again, the patent doesn't specify anything other than
`placing an image sensor at the image plane and we think that any difference
`between the actual paraxial image plane is something that's a matter of
`design choice but is not an issue that's impacted by the claims or the
`specification of the 032 patent.
`
`
`JUDGE ULLAGADDI: Thank you. And is there any extrinsic
`evidence in the record supporting the position that the total track length is
`independent of whether an electronic sensor or film is placed at the image
`plane?
`MR. PARSONS: Yes, I do believe there is. In the 712 case
`
`
`that we would address next, there is an Eggert reference that we have
`included as the ground three in the 712 case. That actually is a camera that
`has film disposed at the image plane. That's a situation where you would
`have an image plane that would not be to an electronic sensor. Outside of
`that, I'm not aware of a situation where anything describes having something
`not there but, again, I would refer the Board to the intrinsic evidence that a
`lens assembly is just five lens elements and it doesn't require something to
`be at the end and that's what Patent Owner has specified in the claim.
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`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
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`JUDGE ULLAGADDI: I'm interested in the extrinsic evidence
`
`
`as well. Is there anything supporting this testimony that says total track
`length is to the image plane, that defines TTL in that manner?
`
`
`MR. PARSONS: I will need to refer back and I will have to
`give you an answer on rebuttal for that.
`
`
`JUDGE ULLAGADDI: Thank you.
`
`
`MR. PARSONS: I can't come up with anything off the top of
`my head at the moment and rather than waste time tracking all through I'll
`just find an example and present it to you once I have a moment to look for
`that.
`JUDGE ULLAGADDI: That's fine. Thank you.
`
`
`MR. PARSONS: Thank you. Are there any further questions?
`
`
`JUDGE ULLAGADDI: Not at this time.
`
`
`MR. PARSONS: Okay. Thank you. Now moving on to our
`
`
`second issue in regards to level of ordinary skill in the art on slide 10.
`Importantly in these cases we believe that the level of ordinary skill would
`include using lens design software and to this extent there's actually no
`dispute among the parties as what the level of ordinary skill in the art is, and
`particularly with slide 11 we've provided an excerpt from Dr. Sasian's expert
`declaration that was included in the petition and in there he indicated that a
`person of ordinary skill in the art would have had experience in both
`designing and modifying lens assemblies with the aid of software tools.
`
`
`Specific to this, Dr. Sasian believes that a person of ordinary
`skill in the art would have had experience in analyzing, tolerancing,
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`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
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`adjusting, optimizing multi-lens systems and would have been familiar with
`lens specifications and in addition, would have known how to use lens
`design software such as Code V, Oslo or Zemax. Now in this case, Patent
`Owner's expert has used Code V, our expert has used Zemax, but as far as
`anybody is concerned there is no dispute that lens design software is an
`important aspect of what a person of ordinary skill in the art would know
`how to use in doing lens design.
`
`
`Now moving to slide 12. We specifically asked Dr. Moore
`whether a person of ordinary skill in the art in the 032 patent would have had
`experience in analyzing, tolerancing and adjusting multi-lens systems and
`Dr. Moore agreed that that was within his definition of lens design. Also
`using lens design software, as we've indicated, would also be within Dr.
`Moore's definition of optical design.
`
`
`Moving to slide 13. We also asked Dr. Moore if a person of
`ordinary skill in the art would be proficient in using lens design software to
`both modify or optimize a lens. Dr. Moore in fact indicated that they would
`be proficient but the software they would use would be dependent on their
`training. For example, Dr. Moore used Code V. Dr. Sasian used Zemax.
`Again it comes down to training and both lens design softwares are within
`the level of ordinary skill and a POSITA would be proficient in using both
`of those.
`Now moving to slide 14. Dr. Moore also indicated how a
`
`
`POSITA would go about using lens design software in order to optimize or
`modify the lens and importantly, starting at line 13, Dr. Moore tells us that,
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`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
`
`"So you can tell a program that you want to vary certain
`
`
`parameters of a lens, for example, the radius of curvature, the thickness of
`the lens, the aspheric coefficients, any parameter that you want you can say
`either hold them or fix them, it's either hold and fix or vary them and the
`program through a very complicated algorithm then actually goes through
`and varies them and determines how to make a better lens. You determine
`as a lens designer what you're trying to improve."
`
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`And then he provides an example.
`
`
`"So if you're trying to improve ray fans for example you would
`say I want to make sure the aberrations measured in the ray fans are smaller
`and then the program would do that."
`
`
`So in other words what Dr. Moore is explaining, and we agree
`with this, is that a person of ordinary skill in the art using lens design
`software could take an existing lens design and then put it in the program
`and then vary a parameter and then allow the software to optimize to provide
`the best lens based on that parameter that was changed.
`
`
`That's exactly what Dr. Sasian has done in this case, especially
`in regards to our combination analysis as he's basically used lens design
`software, varied a parameter based on the teaching in the prior art and then
`allowed the software to adjust to provide the best lens design based on that
`calculation.
`
`
`So to the extent that the Patent Owner is arguing that the level
`of ordinary skill wouldn't be able to know how to make all of these multiple
`changes, in fact a POSITA armed with lens design software would actually
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`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
`
`be very sophisticated and would be able to make a number of changes once
`they identify a lens design that they would like to modify and the
`modification wouldn't want to be done, the lens design software takes care
`of doing modification for the lens designer.
`
`
`Now moving to slide 15. The first substantive ground we'd like
`to address is whether Ogino's lens assembly meets the TTL over EFL in less
`than one limitation. Now on slide 16, again I direct your attention to claim 1
`of the 032 patent we've reproduced here and as I mentioned before there are
`two TTL limitations. One is that the TTL is 6.5 millimeters or less and
`second that there's a TTL over EFL ratio of less than one. Now there's no
`dispute among the parties that Ogino, the example 6 embodiment that we've
`relied on in the petition, has a TTL of less than 6.5.
`
`
`So at the bottom of slide 16 we have basically summarized the
`parties' position on this issue and this is how it goes. Petitioner believes that
`TTL is 4.387 millimeters and that's an express teaching in Ogino. Patent
`Owner believes that the TTL in Ogino's example 6 embodiment is 4.489
`millimeters. Again, there's no dispute on what the focal length is of that
`embodiment but the difference is that under our calculation the ratio
`becomes less than one and under Patent Owner's calculation the ratio
`becomes greater than one.
`
`
`So moving to slide 17. The reason for this discrepancy and
`what Patent Owner is arguing is that there's this cover glass element as you
`can see in the lens diagram on the left side where there's the CG element and
`our position is that this cover glass element is optional and if you remove
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`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
`
`this cover glass element then the total track length then adjusts to
`compensate for removing the cover glass element, the image plane would
`shift to the left and the total track length then would be 4.387 millimeters.
`This is what's indicated in table 11 from Ogino that describes the example 6
`embodiment.
`
`
`Now you'll note that we've highlighted a number of boxes and
`this was in our petition except for the additional highlighting that we've
`added to address to point to the focal length just to point to the Board that
`that's also in the table. The first variable is the BF variable which is the back
`focal length and then you get the TL which is 4.387 millimeters. The way
`that we arrive at that independently, because again the construction of TTL
`is the measurement along the optical axis from the object side surface of the
`first element to the image plane and that's what we've done here. We have
`added up all of the distances from the lens from the beginning of the first
`lens element to the back of the fifth lens element and then added the back
`focal length to compensate for removal of the cover glass and that matches
`the calculation provided in Ogino of 4.387 millimeters.
`
`
`Now what Patent Owner is arguing is that the example 6
`embodiment is limited to the data in the table under the DI column and if
`you add all that up you get 4.489 millimeters. So essentially the only
`argument between parties on this regard is that we think our (indiscernible)
`should be removed and if it is the image plane shifts up in order to meet the
`ratio that Patent Owner has claimed and Patent Owner believes that cover
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`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
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`glass is a necessary component. Now as we move to slide 18, the reason that
`--
`JUDGE ULLAGADDI: Counsel, just one second.
`
`
`MR. PARSONS: Yes.
`
`
`JUDGE ULLAGADDI: Is the cover glass expressly disclosed
`
`
`to be optional in the reference, in the Ogino reference?
`
`
`MR. PARSONS: Yes, Your Honor. If you would like to
`address your attention to slide 19, I think we've covered slide 18 sufficiently.
`I'll skip that one. In slide 19 column 5 of Ogino there's a couple of things I
`want to point out about this. First the drafter of Ogino basically described
`the first embodiment of Ogino and then indicated that he would describe the
`embodiments 2 through 6 to the extent that they differed from the first and
`that's what's provided in the first column here. It says,
`
`
`"Since the respective configuration examples are basically
`similar in configuration the following description will be given on the basis
`of the first configuration example of the imaging lens shown in figure 1 and
`the configuration example shown in 236 will also be described as
`necessary."
`And if you go further down in column 5 it describes various
`
`
`optical members CG that may be disposed between the fifth lens L5 and the
`imaging device 100 based on configuration of the camera in which the
`imaging lens is mounted. So in other words, if you look at the Ogino
`embodiments all of them (indiscernible) the cover glass element placed
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`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
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`between the fifth lens element and the image plane and Ogino goes on to
`describe in the last paragraph there in column 5 that says,
`
`
`"Alternatively an effect similar to the optical member CG may
`be given to the fifth lens element or the like by applying a coating to the fifth
`lens L5 or the like without using optical member CG. Thereby it is possible
`to reduce the number of components and reduce the total length."
`
`
`So, yes, Ogino explicitly teaches removal of a cover glass
`element and that's why we believe that Ogino provides this data in table 11
`showing the back focal length being an air-converted value and when you
`use the back focal length, which is an air-converted value which means
`there's nothing between the fifth element and the image plane, that that's
`where Ogino gets the 4.387 millimeters to be track length which we believe
`to be explicitly disclosed and that's why we're relying on this in an
`anticipation ground.
`
`
`JUDGE HOFF: Does removing the cover glass render this lens
`assembly unsatisfactory for its intended purpose?
`
`
`MR. PARSONS: No, Your Honor. We don't believe there'd be
`any difference in the performance characteristics with the cover glass versus
`without the cover glass. Now we asked Dr. Moore about TTL and the cover
`glass element and first off on slide 20 Dr. Moore has agreed with u
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