Case: 20-1961 Document: 66 Page: 1 Filed: 10/25/2021
`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`COREPHOTONICS, LTD.,
`Appellant
`
`v.
`
`APPLE INC.,
`Appellee
`
`ANDREW HIRSHFELD, PERFORMING THE
`FUNCTIONS AND DUTIES OF THE UNDER
`SECRETARY OF COMMERCE FOR
`INTELLECTUAL PROPERTY AND DIRECTOR OF
`THE UNITED STATES PATENT AND TRADEMARK
`OFFICE,
`Intervenor
`______________________
`
`2020-1961
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2019-
`00030.
`
`______________________
`
`Decided: October 25, 2021
`______________________
`
`MARC AARON FENSTER, Russ August & Kabat, Los An-
`geles, CA, argued for appellant. Also represented by NEIL
`
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`Case: 20-1961 Document: 66 Page: 2 Filed: 10/25/2021
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`2
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`COREPHOTONICS, LTD. v. APPLE INC.
`
`RUBIN, JAMES S. TSUEI.
`
` ANGELA OLIVER, Haynes and Boone, LLP, Washington,
`DC, argued for appellee. Also represented by ANDREW S.
`EHMKE, DEBRA JANECE MCCOMAS, Dallas, TX; DAVID W.
`O'BRIEN, Austin, TX; MICHAEL SCOTT PARSONS, Plano, TX.
`
` ROBERT MCBRIDE, Office of the Solicitor, United States
`Patent and Trademark Office, Alexandria, VA, for interve-
`nor. Also represented by THOMAS W. KRAUSE, MONICA
`BARNES LATEEF, FARHEENA YASMEEN RASHEED.
`______________________
`
`Before TARANTO, HUGHES, and STOLL, Circuit Judges.
`TARANTO, Circuit Judge.
`This case is closely related to Corephotonics Ltd. v. Ap-
`ple Inc., No. 20-1424 (Fed. Cir.), which involves Corepho-
`tonics Ltd.’s U.S. Patent No. 9,402,032 and which we
`decide today in an opinion (20-1424 Decision) on which we
`rely here. The present case involves Corephotonics’s U.S.
`Patent No. 9,857,568, which issued from a second-genera-
`tion continuation-in-part of the application that became
`the ’032 patent, and which describes (as its title states) a
`“miniature telephoto lens assembly” for use in cell phones.
`Apple Inc. petitioned the Patent and Trademark Office
`(PTO) for an inter partes review of the ’568 patent, con-
`tending that all five claims are unpatentable because their
`subject matter would have been obvious based on (1) U.S.
`Patent No. 9,128,267 (Ogino) or (2) a combination of Ogino
`and a paper by William S. Beich and Nicholas Turner—
`Polymer Optics: A Manufacturer’s Perspective on the Fac-
`tors That Contribute to Successful Programs, SPIE Pro-
`ceedings Vol. 7788, Polymer Optics Design, Fabrication,
`and Materials (August 12, 2010) (Beich). The primary is-
`sue here is common to this matter and the matter resolved
`in our 20-1424 Decision: whether Figure 6 of Ogino de-
`scribes a lens assembly that has a total track length (TTL)
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`Case: 20-1961 Document: 66 Page: 3 Filed: 10/25/2021
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`COREPHOTONICS, LTD. v. APPLE INC.
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`3
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`less than the effective focal length (EFL). The secondary
`issue here, unique to this matter, is whether a relevant ar-
`tisan would have been motivated to select a specific rule
`taught in Beich and implement it in the Ogino lens assem-
`bly.
`The PTO’s Patent Trial and Appeal Board determined
`that all five claims of the ’568 patent are unpatentable un-
`der 35 U.S.C § 103 for obviousness: claims 1–4 based on
`Ogino alone, and claims 1–5 based on Ogino in combination
`with Beich. Apple Inc. v. Corephotonics Ltd., IPR2019-
`00030, 2020 WL 1696140 (P.T.A.B. Apr. 6, 2020) (Board
`Decision). Corephotonics timely appealed that decision,
`properly invoking our
`jurisdiction under 28 U.S.C.
`§ 1295(a)(4)(A).
`Besides raising challenges to the merits of the Board’s
`decision, Corephotonics presented a challenge under the
`Appointments Clause of the Constitution, Art. II, § 2. After
`the Supreme Court resolved a similar constitutional chal-
`lenge in United States v. Arthrex, Inc., 141 S. Ct. 1970
`(2021), we remanded this matter, while retaining jurisdic-
`tion, to give the Acting Director of the PTO the opportunity
`to consider reviewing the Board decision (an opportunity
`Corephotonics indicated it wanted). The Acting Director
`has now declined to review the Board decision, and Core-
`photonics has informed us that it does not challenge the
`Acting Director’s denial of review, but seeks only our re-
`view of the Board’s decision. We proceed to address Core-
`photonics’s challenges to the merits of that decision. We
`affirm.
`
`I
`A
`The ’568 patent describes a camera-lens assembly with
`a plurality of lenses (“lens element[s]”) of varying thick-
`nesses and refractive power arranged in line along an opti-
`cal axis running from an object side (i.e., the side with the
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`COREPHOTONICS, LTD. v. APPLE INC.
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`object to be photographed) to an image side (i.e., the side
`where the image of the object is formed). ’568 patent, col.
`1, lines 49–62. Past the last lens element, on the image
`side of the assembly, is an “optional glass window” and an
`“image plane” with an “image sensor” for “image for-
`mation.” Id., col. 3, lines 37–42.
`The ’568 patent purports to improve on previous lens
`assemblies by reducing the ratio of the assembly’s TTL to
`its EFL. Id., col. 1, lines 33–45. The lens assembly’s TTL
`is the distance “on an optical axis between the object-side
`surface of the first lens element and the electronic sensor”
`where the image captured by the lens is ultimately pro-
`jected. Id., col. 2, lines 1–8. The TTL affects the physical
`width (thickness) of the camera, while the EFL “deter-
`mines how well the camera performs at capturing images
`of small or distant objects, as opposed to closer objects.”
`J.A. 2246 ¶ 38 (Declaration of Corephotonics expert, Dr.
`Duncan Moore). Increasing the EFL allows a lens to mag-
`nify and increase the resolution of objects at greater dis-
`tances, while simultaneously narrowing the camera lens’s
`field of view. J.A. 2246 ¶ 38 (Dr. Moore Declaration). Thus,
`reducing the TTL/EFL ratio results in a thin lens with the
`capability of capturing far-away objects in great detail. All
`five claims in the ’568 patent require that the ratio of TTL
`to EFL be smaller than 1. See ’568 patent, col. 8, lines 29–
`66.
`
`The ’568 patent also describes the F-number of the lens
`assembly, which is the ratio of the focal length of a lens to
`its aperture diameter. A smaller F-number means that the
`lens is exposed to more light and has a greater illumina-
`tion. J.A. 2248 ¶ 40 (Dr. Moore Declaration). All embodi-
`ments in the ’568 patent teach an F-number of less than
`3.2. ’568 patent, col. 2, lines 8–9.
`Finally, the ’568 patent includes tables providing infor-
`mation about each embodiment of the lens assembly and
`the characteristics of each lens element, including their
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`radii, thicknesses, and the distances between them along
`the optical axis. Id., col. 3, lines 44–48; see also id., col. 5,
`line 66, through col. 6, line 4; id., col. 7, lines 23–28. Rele-
`vant to this appeal, Table 1 sets forth the thickness of each
`lens element in one particular embodiment (Figure 1A) of
`the lens assembly, expressing the thickness of lens element
`1 as “L11,” with the first “1” referring to the lens element
`number and the second “1” referring to the location on the
`lens (the center) where the thickness is measured. See id.,
`col. 4, lines 13–25; see also id., Fig. 1A. The same Figure
`1A also shows a distance marked “L1e”—which is the
`“width . . . of a flat circumferential edge (or surface) of [the
`first] lens element 102.” Id., col. 4, lines 28–29 (emphasis
`added). The ratio of L11 to L1e compares the thickness of
`the first lens element at its center to the width of its edge;
`the parties on appeal refer to this ratio as the center-to-
`edge thickness ratio.
`The ’568 patent explains that when “TTL/EFL<1.0 and
`F#<3.2” there can be a “large ratio” (greater than 4.0) of
`L11 to L1e. Id., col. 2, lines 30–33. Such a large L11/L1e
`ratio affects “negatively the manufacturability of the lens
`and its quality,” the patent observes. Id., col. 2, lines 36–
`38. But, the patent continues, “the present inventors have
`succeeded in designing the first lens element to have a
`L11/L1e ratio smaller than 4, smaller than 3.5, smaller
`than 3.2, smaller than 3.1 . . . and even smaller than 3.0,”
`resulting in improved manufacturability and quality of the
`lens assembly. Id., col. 2, lines 38–45. There are five
`claims in the ’568 patent, each of which corresponds to a
`different L11/L1e ratio. See id., col. 8, lines 29–66.
`Claim 1, the only independent claim in the ’568 patent,
`recites:
`1. A lens assembly, comprising: a plurality of re-
`fractive lens elements arranged along an optical
`axis with a first lens element on an object side,
`wherein at least one surface of at least one of the
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`COREPHOTONICS, LTD. v. APPLE INC.
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`plurality of lens elements is aspheric, wherein the
`lens assembly has an effective focal length (EFL),
`a total track length (TTL) of 6.5 millimeters or less,
`a ratio TTL/EFL of less than 1.0, a F number
`smaller than 3.2 and a ratio between a largest op-
`tical axis thickness L11 and a circumferential edge
`thickness L1e of the first
`lens element of
`L11/L1e<4.
`’568 patent, col. 8, lines 29–40. Claims 2–5 depend on claim
`1, requiring even smaller values for the L11/L1e ratio—less
`than 3.5, 3.2, 3.1, and 3.0, respectively. Id., col. 8, lines 41–
`66. Claim 5, which claims a ratio of L11/L1e < 3.0, is the
`only dependent claim argued separately on appeal.
`B
`Apple’s main reference, Ogino, describes several lens
`assemblies containing five lens elements for use in a cell
`phone. See Ogino, col. 1, line 52, through col. 2, line 18.
`Apple relied in particular on Example (Figure) 6 for its ob-
`viousness arguments. In Figure 6, the lens elements are
`labelled L1 through L5. Id., col. 13, lines 1–16. Figure 6
`also includes a cover glass (CG) that “may be disposed be-
`tween the fifth lens [element] L5 and the imaging device
`100.” Id., col. 5, lines 55–57. Ogino states: “Alternatively,
`an effect similar to the optical member CG may be given to
`the fifth lens L5 or the like by applying a coating to the fifth
`lens L5 or the like without using the optical member CG.
`Thereby, it is possible to reduce the number of components,
`and to reduce the total length.” Id., col. 5, line 65, through
`col. 6, line 2 (emphases added).
`Ogino includes a table (Table 11) with values corre-
`sponding to the parameters in Example 6 illustrated in Fig-
`ure 6. See id., col. 22, lines 11–35. The table includes
`numbers for the thicknesses of the lens elements and the
`spacing between the components of the assembly. See id.,
`col. 22, lines 18–34. At the top, Table 11 states: “f = 4.428,
`Bf = 1.424, TL = 4.387,” id., col. 22, line 14, where f is “the
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`focal length . . . of the whole system,” Bf is “the back focal
`length,” and TL is “the total lens length,” id., col. 14, lines
`48–50. Ogino elaborates: “In addition, the back focal
`length Bf indicates an air-converted value, and likewise, in
`the total lens length TL, the back focal length portion uses
`an air-converted value.” Id., col. 14, lines 50–53. Based on
`Ogino’s contemplation of an alternative that does not use a
`cover glass, and on Table 11 and Figure 6, Apple argued in
`its petition that Ogino teaches an embodiment without a
`cover glass where the TTL/EFL ratio is less than 1.0 (a
`4.387 focal length is less than a 4.428 total lens length),
`meeting the key disputed element of claim 1. J.A. 153–54.
`With respect to the claim limitations regarding the cen-
`ter-to-edge thickness ratio of the first lens element, Apple
`demonstrated in its petition (and in the attached declara-
`tion of its expert, Dr. José Sasián) that the L11 value in
`Ogino would be 0.557. See J.A. 155–56 (IPR Petition), 583–
`84 (Sasián Declaration). It did not contend that Ogino ex-
`pressly teaches a value for L1e (which is derived from a
`formula that includes L1’s diameter). Rather, Apple relied
`on a statement from an optics handbook that it is “‘good
`policy’” for the “‘center-to-edge thickness ratio’” (L11/L1e)
`to never exceed 3.0. See J.A. 166 (quoting J.A. 1418). Apple
`used that statement to argue that the center-to-edge thick-
`ness ratio limitations in claims 1–5 would have been obvi-
`ous based on Ogino alone. See J.A. 166, 169–72.
`Apple also argued that claims 1–5 would have been ob-
`vious based on a combination of Ogino and Beich. See J.A.
`172–97. Beich discusses the “process of creating state-of-
`the-art polymer optics” and reviews the tradeoffs “between
`design tolerances, production volumes, and mold cavita-
`tion.” J.A. 1329. Beich states that optical assemblies with
`“thicker parts take longer to mold than thinner parts” and
`that “extremely thick centers and thin edges are very chal-
`lenging to mold.” J.A. 1334. To address issues of “cost and
`manufacturability,” Beich provides a variety of “rules of
`thumb” set forth in a table. See J.A. 1334. Those rules of
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`COREPHOTONICS, LTD. v. APPLE INC.
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`thumb, Beich explains, “interact with one another” and a
`“change in one area will impact another.” J.A. 1335. In a
`table setting forth its rules of thumb, Beich teaches a “cen-
`ter thickness to edge thickness ratio” of <3:1. J.A. 1334.
`Relying on Beich, Apple argued in its petition that a rele-
`vant artisan would have been motivated by the advantages
`of cost and manufacturability to apply Beich’s teachings to
`Ogino, such that L11/L1e would be less than 3.0. J.A. 173–
`77; see also J.A. 602–03 ¶ 56 (Sasián Declaration).
`Corephotonics disputed that Ogino’s Figure 6 and Ta-
`ble 11 teach an embodiment where the assembly’s TTL is
`less than its EFL. See J.A. 2197–2215. Corephotonics also
`disputed that a relevant artisan would have been moti-
`vated to apply the Beich rule of thumb regarding the cen-
`ter-to-edge thickness ratio of <3:1 to Ogino’s first lens
`element in Figure 6, asserting that the remaining lens ele-
`ments in Ogino (L2–L5) violate Beich’s other rules of
`thumb. J.A. 2221–27. In particular, Beich suggests that
`the diameter-to-center thickness ratio be less than 4:1, and
`lens elements L2–L5 in Ogino Figure 6 do not have such a
`ratio. J.A. 2225–26. On those grounds, Corephotonics ar-
`gued that Apple had not shown that a relevant artisan
`would have been motivated to select Beich’s center-to-edge
`thickness rule and apply it to L1. J.A. 2226–27.
`C
`In its final written decision, the Board agreed with Ap-
`ple on the two issues presented for review by Corephotonics
`in this court. The Board found that Ogino teaches a TTL
`less than EFL as required by claim 1 of the ’568 patent.
`Board Decision, 2020 WL 1696140, at *10–12. In a finding
`not disputed in this court, the Board also found that it
`would have been obvious to modify Ogino to meet the cen-
`ter-to-edge thickness limitations of claims 1–4, citing the
`optics textbook. Id. at *15–17. Based on those findings,
`the Board concluded that the subject matter of claims 1–4
`would have been obvious over Ogino alone. Id. at *16–17.
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`For claim 5, with its requirement that L11/L1e be less
`than 3.0, the Board found that a relevant artisan would
`have been motivated to implement the center-to-edge
`thickness ratio rule of thumb (<3:1) from Beich into the
`Figure 6 Ogino assembly. See id. at *18–20. The Board
`disagreed with Corephotonics that a relevant artisan
`would not look to Beich when modifying Ogino because the
`artisan could not in practice “implement[] each and every
`one of Beich’s set of rules of thumb” into the Ogino assem-
`bly. Id. at *19. “The reason the ordinarily skilled artisan
`would look to Beich,” the Board found, “is to obtain a value
`not specified by Ogino—the diameter of the first lens ele-
`ment L1,” whereas the remaining “rules of thumb” re-
`quired changing values that were explicitly defined by
`Ogino. Id. The Board further found that a relevant artisan
`would have been motivated to use Beich to supply the miss-
`ing diameter of L1 “because the ratio disclosed in Beich’s
`Table 2 constitutes the limits of fabrication in an ideal lens
`system.” Id. Based on those findings, the Board concluded,
`the lens assembly of claim 5 would have been obvious to a
`relevant artisan in light of Beich and Ogino. Id. at *19–20.
`III
`We review the Board’s legal conclusions de novo and its
`factual findings for substantial-evidence support. Arendi
`S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1360 (Fed. Cir. 2016).
`The ruling on obviousness is a legal conclusion, based on
`underlying determinations of fact. PersonalWeb Techs.,
`LLC v. Apple, Inc., 917 F.3d 1376, 1381 (Fed. Cir. 2019).
`Such factual determinations include whether a prior-art
`reference teaches away and whether a relevant artisan
`would have been motivated to make a combination of prior-
`art references. Gen. Elec. Co. v. Raytheon Techs. Corp., 983
`F.3d 1334, 1345 (Fed. Cir. 2020).
`A
`With respect to claims 1–4, Corephotonics’s sole con-
`tention in this court is that Ogino does not teach an
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`embodiment with a TTL less than EFL. Corephotonics
`Opening Br. at 18–29. Corephotonics’s arguments and the
`Board’s analysis are materially the same as those in the
`20-1424 Decision, where we upheld the Board’s determina-
`tion that Ogino expressly teaches an embodiment of Figure
`6 in which TTL is less than EFL. Although that decision
`was in the context of an anticipation challenge (rather than
`obviousness), Corephotonics has made no argument here
`that the distinction is relevant or that it warrants separate
`discussion. We rely on our discussion in the 20-1424 Deci-
`sion to affirm the Board’s ruling that Ogino teaches a TTL
`less than EFL. That conclusion requires affirmance of the
`obviousness conclusion as to claims 1–4 here.
`B
`We also affirm the Board’s conclusion of obviousness of
`claim 5 based on the determination, which is supported by
`substantial evidence, that a relevant artisan would have
`been motivated to make the combination of Ogino and
`Beich that meets the limitations of the claim.
`Corephotonics contends that because four out of five
`lens elements in Ogino Figure 6 violate a different Beich
`rule of thumb (the rule suggesting a diameter-to-center
`thickness ratio of less than 4:1), the Board’s focus on apply-
`ing the center-to-edge thickness ratio rule of thumb (a
`L11/L1e ratio of less than 3:1) was error. Corephotonics
`Opening Br. at 29–34. Corephotonics argues that modify-
`ing Figure 6 to satisfy both the diameter-to-center and cen-
`ter-to-edge ratios would
`“dramatically reduce
`the
`performance of the lens and defeat the stated goals of
`Ogino’s invention” by increasing the diameter of L5. Id. at
`32 (citing J.A. 2290–93 ¶¶ 125–26). And, Corephotonics
`adds, the Board did not explain why a relevant artisan
`would have applied only the center-to-edge thickness ratio
`rule from Beich (to reduce costs and improve manufactur-
`ability), ignoring Beich’s diameter-to-thickness ratio rule.
`Id. at 32–34.
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`The Board rejected this contention and had substantial
`evidence to support the rejection. See Board Decision, 2020
`WL 1696140, at *19. The L11/L1e ratio that is at issue is
`solely about the first lens element (L1), not the fifth lens
`element (L5). The Board had before it substantial evidence
`that manufacturing considerations would have motivated
`a relevant artisan to use Beich’s express rule of thumb as
`to the center-to-edge thickness ratio to fill in a missing
`piece of information about L1 in Ogino. Id. Corephotonics
`does not contend that doing so would violate Beich’s diam-
`eter-to-center thickness ratio for L1, but focuses only on
`what would happen if an artisan modified other lens ele-
`ments, specifically L5. But the Board reasonably found
`that not all rules of thumb had to be applied to all lenses in
`an assembly in order for some to be applied to some lenses.
`Id. Beich recognizes that rules of thumb are just that—
`they are “useful for initial discussions,” but “can quickly
`break down.” J.A. 1335.
`Nothing in Ogino or Beich “‘criticize[s], discredit[s], or
`otherwise discourage[s]’ investigation into,” so as to teach
`away from, selecting the center-to-edge thickness ratio rule
`of thumb for L1 without modifying other lens elements. Po-
`laris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069
`(Fed. Cir. 2018) (quoting In re Fulton, 391 F.3d 1195, 1201
`(Fed. Cir. 2004)). Nor does the optics handbook do so when
`it says that lens designers should “oversize optical ele-
`ments, if possible, to a dimension considerably beyond the
`clear apertures.” J.A. 1419.
`Corephotonics points to what it says is unrebutted tes-
`timony from its expert, Dr. Moore, that a relevant artisan
`would not have combined Ogino and Beich. In his declara-
`tion, Dr. Moore stated:
`According to Beich, the “rules of thumb” are in-
`tended to reduce cost and improve manufacturabil-
`ity. Ex. 1020 at 7. But removing the cover glass
`from the image sensor indisputably increases costs
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`and reduces manufacturability . . . . If cost and
`manufacturability are requirements motivating
`use of the Beich rules of thumb, then that [relevant
`artisan] would not be motivated to remove the
`cover glass [to comply with the TTL/EFL limita-
`tions]. Conversely, if the designer is willing to in-
`cur the costs and difficulties of using sensors
`without cover glass, then they are unlikely to be
`motivated to follow the Beich “rules of thumb.”
`J.A. 2294 ¶ 128. But it is a commonplace fact that design
`decisions entail making tradeoffs among multiple objec-
`tives. Allied Erecting and Dismantling Co. v. Genesis At-
`tachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“A
`given course of action often has simultaneous advantages
`and disadvantages, and this does not necessarily obviate
`motivation to combine.”). Beich itself recognizes the need
`for “tremendous flexibility” for lens designers in creating
`optical assemblies. J.A. 1329. The Board properly rejected
`Corephotonics’s blanket assertion that any willingness to
`incur higher costs or reduced manufacturability to choose
`the coverless Ogino option (a premise for which Dr. Moore
`did not offer concrete support) would have undermined (ra-
`ther than enhanced) the motivation to save costs or im-
`prove manufacturability in other ways, such as by
`following Beich’s rule of thumb for the center-to-edge thick-
`ness ratio.
`Thus, substantial evidence supports the Board’s deter-
`mination that claim 5 would have been obvious based on
`Beich and Ogino.
`
`III
`For the foregoing reasons, the decision of the Board is
`affirmed.
`
`AFFIRMED
`
`