Paper No. 34
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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 No. IPR2019-00030
`U.S. Patent No. 9,857,568
`____________
`
`
`PATENT OWNER’S PETITION FOR REVIEW BY THE DIRECTOR
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`____________
`
`
`PATENT OWNER’S PETITION FOR REVIEW BY THE DIRECTOR
`
`
`
`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`
`TABLE OF CONTENTS
`
`THE BOARD ERRONEOUSLY MODIFIED THE OGINO
`
`A SECOND REFERENCE THAT WAS NOT PART OF THE
`
`BACKGROUND ............................................................................ 1
`I.
`II.
`REFERENCE’S TOTAL TRACK LENGTH .................................... 3
`III. THE BOARD IMPERMISSIBLY MODIFIED OGINO IN LIGHT OF
`PETITION’S GROUNDS ............................................................... 8
`IV. THE BOARD APPLIED NOTHING BUT HINDSIGHT IN
`COMBINING OGINO AND BEICH .............................................. 10
`V.
`BOARD’S FINAL WRITTEN DECISION ...................................... 13
`
`THE DIRECTOR SHOULD REVIEW AND REVERSE THE
`
`
`
`i
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`
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`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`TABLE OF AUTHORITIES
`
`Cases
`
`In re Stepan Co.,
`868 F.3d 1342 (Fed. Cir. 2017) .......................................................................... 10
`
`Procter & Gamble Co. v. Teva Phar. USA, Inc.,
`566 F.3d 989 (Fed. Cir. 2009) ............................................................................ 10
`
`Sirona Dental Sys. GmbH v. Institut Straumann AG,
`892 F.3d 1349 (Fed. Cir. 2018) ............................................................................ 4
`
`United States v. Arthrex, Inc.,
`141 S.Ct. 1970 (2021) ............................................................................... 1, 3, 15
`
`Statutes
`
`
`
`5 U.S.C. §§ 3345, et seq. ........................................................................................ 15
`
`
`
`ii
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`
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`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`Patent Owner Corephotonics Ltd.. (“Corephotonics”) respectfully requests re-
`
`view by the Director of the Final Written Decision issued by the Board in this matter.
`
`Pursuant to the Supreme Court’s recent decision in United States v. Arthrex, Inc.,
`
`141 S.Ct. 1970 (2021), such review must be conducted by a principal officer
`
`properly appointed by the President and confirmed through advice and consent of
`
`the Senate. This matter has been remanded to the Patent and Trademark Office for
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`purposes of requesting such review. Corephotonics submits that the Board’s Final
`
`Written Decision in this matter must be reviewed and rejected because it impermis-
`
`sibly relied on modification of a prior art reference despite the Petition’s reliance
`
`solely on explicit disclosure in finding claims 1-4 unpatentable, and it failed to per-
`
`form the proper analysis of the motivation to combine teachings of two references
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`in finding obviousness as to challenged claim 5. These actions by the Board require
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`that its Final Written Decision of unpatentability be reversed.
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`I.
`
`BACKGROUND
`
`The ’568 patent at issue in this proceeding involves innovative camera technol-
`
`ogy for optical zoom lenses that can fit inside a small mobile device (like a mobile
`
`phone) and provide better performance than prior art lenses. The ’568 patent partic-
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`ularly involves claims directed to fixed focal-length telephoto lens assemblies that
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`have a small total track length (TTL), which influences how thick the mobile device
`
`1
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`
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`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`must be to accommodate the lens, a higher effective focal length (EFL), which al-
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`lows the camera to capture images of distant objects at higher resolution, and a par-
`
`ticular ratio between the optical axis thickness and the edge thickness of the first lens
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`element. To achieve such a lens, the ’568 patent teaches the use of multiple individ-
`
`ual lens elements with particular design rules for their shape, thickness, individual
`
`lens focal length, and material properties. These individual lens elements are com-
`
`bined into an overall lens assembly. Exemplary Figure 1A from the ’568 patent (re-
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`produced below) shows such a lens assembly with light passing from left to right
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`toward an image sensor in the figure. As shown in Figure 1A, the lens assembly also
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`includes a rectangular element labeled 112, which is a cover glass over the image
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`sensor. This cover glass serves the important function of protecting the sensitive sur-
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`face of the sensor, and also filters out damaging infrared light before it reaches the
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`sensor.
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`
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`2
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`
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`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`The Petition here challenged independent claim 1, and claims 2-5, all of which
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`depend on claim 1. Among other elements, claim 1 required a lens assembly with a
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`ratio of TTL to EFL of less than 1.0 (i.e., the Effective Focal Length must be greater
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`than the Total Track Length of the lens assembly), and a particular ratio between the
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`thickness of the first lens element along the optical axis and the thickness of that lens
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`element at its edge. Dependent claims 2-5 all recited progressively smaller ratios of
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`the lens thickness.
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`The Board’s Final Written Decision here found that claims 1 through 4 are ob-
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`vious over the Ogino prior art reference, and that claims 1 through 5 are obvious
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`over the combination of the Ogino reference in view of the Beich reference.
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`Corephotonics appealed the Final Written Decision to the Federal Circuit. After
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`oral argument on the appeal, but before any decision was issued, the Federal Circuit
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`remanded this matter in light of the Supreme Court’s decision in United States v.
`
`Arthrex, Inc., 141 S.Ct. 1970 (2021) for the purpose of seeking Director review.
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`Corephotonics now seeks director review to correct the significant errors committed
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`by the Board.
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`II. THE BOARD ERRONEOUSLY MODIFIED THE OGINO
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`REFERENCE’S TOTAL TRACK LENGTH
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`Similar to the claims at issue in IPR 2018-01140, the claims at issue here all
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`required a lens with an Effective Focal Length, a Total Track Length, and a ratio
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`3
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`
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`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`between the Total Track Length and Effective Focal Length of less than 1.0
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`(TTL/EFL<1.0). Here, Apple asserted an obviousness challenge, but the only claim
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`element as to which it contended the Ogino reference needed to be modified was a
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`separate element regarding the lens thickness ratio. For the TTL/EFL claim element,
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`the petition relied solely on an allegedly explicit disclosure in Ogino – akin to an
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`anticipation analysis, and the Board was limited to review the claims in that manner.
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`See Sirona Dental Sys. GmbH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed.
`
`Cir. 2018). Despite this, the Board relied on a modification of the Ogino reference,
`
`not an actual disclosure in the reference, to satisfy this claim element.
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`All challenged claims of the ’568 patent required a lens assembly with a ratio
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`of TTL/EFL of less than 1.0. The Board applied the broadest reasonable construction
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`standard and applied a construction of the TTL to be “the length of the optical axis
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`spacing between the object-side surface of the first lens element and one of: an elec-
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`tronic sensor, a film sensor, and an image plane corresponding to either the electronic
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`sensor or a film sensor.” The Board relied on Example 6 of Ogino as the only relevant
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`disclosure in Ogino. FWD at 23. Example 6 (reproduced at FWD p. 20) is shown
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`below:
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`4
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`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`
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`Under the Board’s construction, the TTL of this example must be calculated
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`from the left edge of the first lens element (R2) to the image plane (R14). Ogino
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`provides a table with the distances (including the spacings between lenses) that make
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`up that distance in Table 11 (reproduced at FWD p. 22):
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`
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`5
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`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`To compute the distance from the first lens element to the image plane (as re-
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`quired by the Board’s construction), one must sum the figures in the “Di” column
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`for values 2-13. The sum of those values is 4.489 mm. The effective focal length of
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`the Ogino Example 6 lens assembly is shown in Table 11. No party contested that
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`this value is 4.428. Thus, the Ogino example 6 ratio of TTL/EFL (applying the
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`Board’s construction) is 4.489/4.428. This yields a ratio of 1.014 – greater than 1.0
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`and thus outside the range claimed in the challenged claims of the ’032 patent. Apple
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`and its expert conceded that the Total Track Length shown in Ogino’s example 6 is
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`4.489.
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`To reach its conclusion that Ogino satisfied this claim element explicitly, the
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`Board improperly relied on modifying Ogino’s example 6. In particular, the Board
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`relied on a reference in Ogino that suggested that if the cover glass were removed
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`and a coating were applied to one of the lens elements, one could theoretically
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`change the total lens length. Ogino does not disclose any actual examples of this. Its
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`example 6 is only illustrated showing a TTL that is greater than the EFL. The Board
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`concluded that it could simply use the value of “TL” in Ogino’s table 11 instead of
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`the summed total track length reflected in that table. But the “TL” figure in Ogino’s
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`table 11 is not a value within the Board’s construction. Rather, it is identified as a
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`theoretical value using an “air converted value” for the back focal length instead of
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`the actual value of the disclosed lens assembly. Ex. 1005 (Ogino) at 14:50-53. Ogino
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`6
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`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`did not suggest that the “TL” value was an actual measurement of the TTL (as de-
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`fined by the Board) of the lens assembly in Example 6.
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`The Board made the leap that it could simply modify Example 6 of Ogino to 1)
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`remove the cover glass element (CG) of Ogino’s example; 2) move the image
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`plane/sensor of Ogino’s example some unspecified distance closer to the back plane
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`of the fifth lens element (L5); and 3) add an unspecified coating of an unspecified
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`thickness to lens element L5. The Board concluded, without proper evidentiary sup-
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`port, that the Effective focal length of Ogino’s example 6 would remain unchanged
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`by all of these modifications, but that the Total Track Length (under the Board’s
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`construction) would be reduced to 4.387. Ogino contained no such teaching. Further,
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`neither Apple, nor its proffered expert, provided an actual calculation of the various
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`values of EFL and TTL based on modifying Ogino’s example 6 in this manner. Ap-
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`ple’s expert input the various elements of Example 6 as they actually appear in Ogino
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`into lens design software and concluded that the effective focal length of the example
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`was 4.428 and that the total track length was 4.489. See, e.g., Ex. 1003 at 78. Apple’s
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`expert never input the parameters of the modified version of Ogino’s example 6 into
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`such software to determine what the parameters of that lens would be, and Ogino
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`also does not provide them because it does not teach or disclose the modified lens
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`assembly on which the Board relied.
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`7
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`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`The Board improperly exceeded its authority by relying on a modification of
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`the Ogino reference. As discussed above, such modifications are not appropriate
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`where the petition relies on explicit disclosure within the reference only. Here, the
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`Board modified Ogino’s Example 6 based on Ogino’s discussion of a theoretical
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`measurement used in the reference that was not consistent with the Board’s construc-
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`tion of Total Track Length. It does not matter if that discussion of a different theo-
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`retical calculation in Ogino would or would not provide a motivation to modify
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`Example 6 because in this case the petition did not rely on such a modification as its
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`alleged ground for invalidity. In such circumstances, the modification is impermis-
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`sible and the Board exceeded its authority in making that modification.
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`III. THE BOARD IMPERMISSIBLY MODIFIED OGINO IN
`
`LIGHT OF A SECOND REFERENCE THAT WAS NOT PART
`
`OF THE PETITION’S GROUNDS
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`In considering the lens thickness ratio claim elements of the ’568 patent, the
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`Board conceded that Ogino does not provide such thickness, nor the necessary in-
`
`formation from which to calculate it. It supplied this information from a different
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`reference that was not identified as a part of a combination for this ground and thus
`
`should not have been considered.
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`The thickness ratio claim elements related to the first (leftmost in the figures)
`
`lens element. Specifically, in claim 1, the claim recited “a ratio between a largest
`
`8
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`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`optical axis thickness L11 and a circumferential edge thickness L1e of the first lens
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`element of L11/L1e < 4.” The petition and the board conceded that Ogino did not
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`disclose the circumferential edge thickness of the first lens element. FWD at 30-31.
`
`Petitioner argued that the circumferential edge thickness of the lens could be calcu-
`
`lated through a complex formula that depended, in part, on the diameter of the lens
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`element. FWD at 30-31. But the petition also conceded that Ogino did not disclose
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`the diameter of the first lens element. FWD at 32.
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`Undeterred by the complete lack of disclosure of an element of the challenged
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`claim in Ogino, the Board relied on an entirely separate reference that was not a part
`
`of the asserted ground to supply the claim element. Petitioner advanced five reasons
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`why the disclosure of the first lens element of Ogino should be modified to provide
`
`an edge thickness. FWD at 32-33. The Board rejected all but one of these “reasons.”
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`FWD at 33. The sole “reason” the Board accepted was a separate prior art reference
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`called the Handbook of Optics (Ex. 1019). The Petitioner pointed to a portion of that
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`separate reference that suggested that for manufacturability reasons, when designing
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`lens elements for crafting via injection molding, “it is good policy to avoid element
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`forms where the center-to-edge thickness ratio exceeds three for positive elements.”
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`FWD at 33. The Board relied on this disclosure in a separate prior art reference to
`
`supply the ratio in the claims (less than 4 in claim 1, less than 3.5 in claim 2, less
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`9
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`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`than 3.2 in claim 3, and less than 3.1 in claim 4). The Board found that this did not
`
`support a ratio of less than 3.0 in claim 5.
`
`The Board suggested that it was merely using the secondary reference to “in-
`
`terpret” the Ogino disclosure, but in fact the reference was clearly used to supply the
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`disclosure of a claim element in its entirety. Nothing in Ogino taught the ratio that
`
`the Board relied upon, nor even disclosed the information that could be used to cal-
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`culate it. The Board simply relied on a separate reference to supply the missing lim-
`
`itation even though the reference was not part of the ground in the petition.
`
`IV. THE BOARD APPLIED NOTHING BUT HINDSIGHT IN
`
`COMBINING OGINO AND BEICH
`
`Governing Federal Circuit precedent is clear that modifications to prior art in
`
`order to find a claim obvious must be supported by evidence justifying the actual
`
`modification. See generally In re Stepan Co., 868 F.3d 1342, n. 1 (Fed. Cir. 2017);
`
`Procter & Gamble Co. v. Teva Phar. USA, Inc., 566 F.3d 989, 995 (Fed. Cir. 2009).
`
`It is critical that the Board make a particularly searching inquiry for a real motivation
`
`to combine or modify in the context of obviousness analysis. Without it, the analysis
`
`devolves into little more than a hunt in the prior art for various references that do not
`
`teach the actual invention of a challenged claim, but only discreet elements of that
`
`invention, or different inventions that came before. Such material could be found for
`
`10
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`
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`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`every patented invention, as such inventions are always combining existing elements
`
`in new ways to form new inventions.
`
`The motivation to modify or combine inquiry is the most susceptible to imper-
`
`missible use of hindsight because often the new solution of a patented invention may
`
`seem obvious after it has been disclosed. But, of course, the correct inquiry is
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`whether it was obvious to persons skilled in the art before it was disclosed in the
`
`challenged patent. In considering an obviousness challenge, the Board must always
`
`acknowledge that the invention was clearly not so obvious that another artisan actu-
`
`ally made the combination of elements that is claimed because such an actual com-
`
`bination would be anticipating. Presumptively, obviousness contentions should
`
`always be regarded with skepticism that can only be overcome by a factual showing
`
`based in evidence, not merely assertions of a paid expert, that a person skilled in the
`
`art would actually be motivated to make the combination or modification needed to
`
`get from the prior art reference to the challenged invention. The actual evidence must
`
`show that the skilled artisan would have been motivated to make the particular
`
`changes or combinations needed to yield the invention of the challenged claim, not
`
`merely that making such changes or combinations were generally possible, or not
`
`explicitly excluded.
`
`Here, the Board went far, far beyond that line in finding that a person skilled in
`
`the art would combine the Beich reference with Ogino to make a very particular
`
`11
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`
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`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`modification (simply to meet an element of the challenged claims) and would choose
`
`that one particular modification, but ignore numerous other modifications suggested
`
`by the combination.
`
`The Board relied on a particular “rule of thumb” in the Beich reference recom-
`
`mending a center thickness to edge thickness ratio of less than 3 to 1. FWD at 42,
`
`47. The Board found that a person skilled in the art would be motivated to combine
`
`this “rule of thumb” teaching of Beich with Ogino, but only that one rule (out of
`
`thirteen such rules listed in Beich), See, Ex. 1020 (Beich) at 7. The Board does not
`
`suggest that the first lens element of Ogino would be modified to meet all of Beich’s
`
`rules of thumb, or indeed that any other lens element of Ogino would be modified to
`
`meet all 13 rules of thumb. Rather, the Board found that one lens element of Ogino
`
`(out of 5) would be modified to meet one rule of thumb of Beich (out of 13). The
`
`Board pointed to no teaching whatsoever to suggest that a person of skill in the art
`
`would somehow be motivated to pick this one particular modification out of innu-
`
`merable possible modifications.
`
` The Board’s improper use of hindsight becomes particularly apparent when the
`
`Beich rules of thumb are considered for the full set of lens elements in Ogino. One
`
`of Beich’s rules of thumb is that the diameter to center thickness ratio of a lens ele-
`
`ment should be less than 4 to 1. Ex. 2020 at 7. But four out of five of the Ogino lens
`
`elements violate this rule of thumb according to the analysis supplied by Petitioner.
`
`12
`
`
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`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`Ex. 2012 (transcript of deposition of Petitioner’s expert) at 105:20-25. Thus, Peti-
`
`tioner and the Board suggest that 1) not all of Beich’s rules of thumb are followed
`
`for any given lens element, and 2) some or all of the “rules” may only be followed
`
`for some lens elements.
`
`The Board’s conclusion that one “rule” from Beich would be applied to one
`
`particular lens element of Ogino in order to meet the challenged claim amounted to
`
`little more than identifying a needle in the haystack of possibilities to modify Ogino.
`
`The Board pointed to nothing that would motivate a person skilled in the art to pick
`
`that one magical modification that would meet the claims out of innumerable other
`
`possibilities.1 Such overt hindsight reasoning goes far beyond the proper scope of
`
`the Board’s analysis.
`
`V. THE DIRECTOR SHOULD REVIEW AND REVERSE THE
`
`BOARD’S FINAL WRITTEN DECISION
`
`As discussed above, the Board improperly modified a prior art reference to
`
`where it was asserted in the petition to disclose the claim element explicitly, failed
`
`to acknowledge its combination with a reference not included in the petition ground,
`
`
`1 There were more thousands of possible combinations of the rules that could be
`
`applied to each of the different lenses within the assembly.
`
`13
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`
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`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`and failed to consider Petitioner’s obviousness challenge without improper reliance
`
`on hindsight.
`
`All of these were errors. More importantly, they were errors that the Director
`
`should remedy. The Board’s analysis reflects an improperly uncritical examination
`
`of the assertions of a Petitioner, and result-oriented reasoning. In any of its analyses,
`
`the Board cannot depart from the grounds asserted by the petitioner. For obviousness,
`
`finding the individual elements of a challenged claim in disparate places in the uni-
`
`verse of prior art is relatively easy for every invention. It is always easy, in hindsight,
`
`to suggest a modification to a reference would meet an element of a challenged claim.
`
`But to avoid improper hindsight analysis, and to properly apply the presumption that
`
`this agency actually performed its duty when examining a subject patent in the first
`
`instance, the Board must be more rigorous in requiring a real and proper showing of
`
`obviousness based on real evidence, and not merely the hindsight say-so of experts
`
`paid by Petitioners.
`
`While it is true that cases not reviewed by the Director can be appealed to the
`
`Federal Circuit, that Court must apply a deferential standard to the Board’s findings.
`
`Only the Director can review the entirety of the Board’s analysis de novo and eval-
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`uate whether the Board is utilizing the appropriate level of rigor when considering
`
`the multitude of obviousness assertions that Petitioners advance before the PTAB.
`
`14
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`
`
`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`Finally, Corephotonics respectfully submits that, consistent with the Supreme
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`Court’s holding, the review requested herein must be conducted by a properly ap-
`
`pointed principle officer appointed by the President. Because Andrew Hirshfeld is
`
`not an appointed principle officer, he may not conduct the requested review without
`
`creating the same Constitutional infirmity held to exist in United States v. Arthrex,
`
`141 S.Ct. 1970 (2021).2
`
`Dated: August 25, 2021
`
`
`
` /Neil A. Rubin/
`Neil A. Rubin (Reg. No. 67,030)
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Telephone: 310-826-7474
`
`Attorney for Patent Owner,
`COREPHOTONICS, LTD.
`
`
`2 While the Supreme Court suggested in Arthrex that such reviews could be con-
`
`ducted by the “Acting Director,” (Arthrex, 141 S.Ct. at 1987), there is no Acting
`
`Director at present within the meaning of the Federal Vacancies Reform Act of
`
`1998. 5 U.S.C. §§ 3345, et seq.
`
`15
`
`
`
`Case No. IPR2019-00030
`U.S. Patent No. 9,857,568
`CERTIFICATE OF SERVICE
`
`I hereby certify that “Patent Owner’s Petition for Review by the Director” was
`
`served on August 25, 2021 by email sent to:
`
`Michael S. Parsons
`Andrew S. Ehmke
`Jordan Maucotel
`Jamie H. McDole
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Telephone: 214-651-5000
`Email: michael.parsons.ipr@haynesboone.com
`Email: andy.ehmke.ipr@haynesboone.com
`Email: jordan.maucotel.ipr@haynesboone.com
`Email: jamie.mcdole@haynesboone.com
`
`David W. O’Brien
`HAYNES AND BOONE, LLP
`600 Congress Ave. Suite 1300
`Austin, TX 78701
`Telephone: 512-867-8400
`Email: david.obrien.ipr@haynesboone.com
`
` /Neil A. Rubin/
`
`
`
`
`16
`
`
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