UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner
`____________
`
`Case IPR2019-00030
`Patent 9,857,568
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`

`

`Table of Contents
`
`I.
`
`Introduction ........................................................................................................ 1
`
`II. Overview of the ’568 Patent and Challenged Claims ........................................ 3
`
`III. Claim Construction ............................................................................................. 6
`
`A. Legal Standards ............................................................................................... 6
`
`B. The Petition Relies on a Construction of “Total Track Length (TTL)” that
`Contradicts the Patent’s Express Definition. ......................................................... 8
`
`IV. The Petition fails to establish the reasonable likelihood of success at least
`because it fails to show how Ogino discloses a lens assembly with “a ratio
`TTL/EFL of less than 1.0.” ..................................................................................... 12
`
`A. The Petition fails to show that Ogino discloses the “TTL” of Example 6
`according to its definition in the ’568 patent. ...................................................... 12
`
`B. Even applying Apple’s proposed construction, the Petition fails to show that
`Example 6 has “a ratio of TTL/EFL less than 1.0.”............................................. 15
`
`C. The Petition also fails to demonstrate that Ogino’s disclosure of “telephoto”
`lens assemblies implies that the TTL/EFL of Example 6 is less than 1.0. .......... 20
`
`V. Conclusion ........................................................................................................ 23
`
`
`
`i
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`

`

`Table of Authorities
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012)...................................................................... 16, 19
`Apple Inc. v. Uniloc Luxembourg S.A.,
`IPR2018-00420, Paper 7 (PTAB, Aug. 6, 2018) ................................................... 8
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015)............................................................................ 14
`Honeywell Int'l, Inc. v. Universal Avionics Sys. Corp.,
`493 F.3d 1358 (Fed. Cir. 2007).............................................................................. 8
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016)............................................................................ 14
`In re Smith Int'l, Inc.,
`871 F.3d 1375 (Fed. Cir. 2017).............................................................................. 7
`Martek Biosciences Corp. v. Nutrinova, Inc.,
`579 F.3d 1363 (Fed. Cir. 2009).............................................................................. 8
`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008)............................................................................ 15
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005).......................................................................... 6, 8
`SAS Institute, Inc. v. Iancu,
`138 S.Ct. 1348 (2018) ............................................................................................ 6
`United Microelectronics Corp., et al. v. Lone Star Silicon Innovations LLC,
`IPR2017-0153, Paper 10 (PTAB, May 22, 2018) ................................................ 13
`V-Formation, Inc. v. Benetton Grp. SpA,
`401 F.3d 1307 (Fed. Cir. 2005)............................................................................ 11
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996)................................................................................ 8
`Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc.,
`200 F.3d 795 (Fed. Cir. 1999)................................................................................ 8
`Wasica Finance GMBH v. Continental Auto. Systems,
`853 F.3d 1272 (Fed. Cir. 2017)............................................................................ 14
`
`Statutes
`37 C.F.R. § 42.108 .................................................................................................. 11
`
`
`
`ii
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`

`

`Patent Owner’s Exhibit List for IPR2019-00030
`
`Pursuant to 37 C.F.R. § 42.63(e), Patent Owner Corephotonics Ltd., hereby
`
`submits its exhibit list associated with the above-captioned inter partes review of
`
`U.S. Patent No. 9,857,568.
`
`Exhibit No. Description
`
`2001
`
`2002
`
`2003
`
`U.S. Patent Publication No. 2011/0249346 A1 “Tang”
`
`U.S. Patent Publication No. 2011/0279910 A1 “Tang”
`
`U.S. Patent Publication No. 2011/0261470 A1 “Chen”
`
`
`
`
`
`
`
`iii
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`

`

`I.
`
`Introduction
`
`At this stage of the proceedings, the Petition fails on at least one threshold
`
`issue: The Petition fails to demonstrate that Ogino alone discloses the “total track
`
`length” (“TTL”) limitations of Claim 1 of the ’568 patent. And, the second ground
`
`combining Ogino with Beich does not further address these limitations. The Petition
`
`as a whole, therefore, fails to demonstrate a reasonable likelihood of prevailing.
`
`Institution should be denied.
`
`The Petition’s central defect is its incorrect construction of the claim term
`
`“total track length (TTL).” The Petition defines TTL in reference to the distance
`
`from the first lens element to the “image plane.” This directly contradicts the ’568
`
`patent’s definition of TTL. The correct construction is found in the plain text of the
`
`specification: “the total track length on an optical axis between the object-side
`
`surface of the first lens element and the electronic sensor is marked ‘TTL’.” Ex.
`
`1001 at 2:2-4 (emphasis added).
`
`Applying this correct construction of “TTL,” the Petition fails to explain how
`
`Ogino discloses either that the “TTL is less than 6.5 mm” or that the “ratio of
`
`TTL/EFL is less than 1.0.” Instead, the Petition misleadingly cites to Ogino’s
`
`disclosures about “total lens length (TL)”—a different term for which Ogino
`
`provides an express definition that differs from “TTL.” The Petition, in turn, relies
`
`on disclosures in Ogino that say nothing about the distance between the first lens
`
`
`
`1
`
`

`

`element and an electronic sensor. The Petition thus fails, because it fails to address
`
`the correct construction of “TTL.”
`
`The Petition would fail even if “TTL” were construed as Apple proposes.
`
`Under Apple’s construction, Ogino Example 6 still fails to meet the claim
`
`requirement that the “TTL/EFL ratio is less than 1.0. Apple thus relies on modifying
`
`Example 6 to remove one of its optical elements, “CG.” But the Petition fails to
`
`demonstrate sufficient support for this modification. The Petition and expert
`
`declaration rely on conclusory statements that parrot Ogino’s generic description of
`
`the CG element as “optional.” Apple’s expert’s own analysis of Example 6,
`
`however, demonstrates that the CG element affects how light passes through the lens
`
`assembly. Even so, the Petition and declaration fail to provide any analysis as to
`
`what additional modifications would be required if the CG element were eliminated.
`
`The Petition thus fails to provide the factual support to show that Example 6,
`
`specifically, can be modified and still provide a TTL/EFL ratio less than 1.0 (and
`
`otherwise satisfy the claim requirements). This defect is fatal. It is black-letter law
`
`that the Petitioner cannot remedy these deficiencies through new evidence or
`
`arguments that it failed to include in the Petition.
`
`As a fallback, Apple contends that Ogino describes its examples as
`
`“telephoto” lens systems, so Example 6 would be understood to provide a TTL/EFL
`
`ratio less than 1.0. The Petition, however, relies on overreading Ogino’s aspirational
`
`
`
`2
`
`

`

`statement that an imaging lens “can be” made to have a “telephoto type
`
`configuration.” Ex. 1005, 8:12-15. In fact, Ogino teaches examples that by any
`
`definition do not have a TTL/EFL ratio less than 1.0. Therefore, that statement in
`
`Ogino cannot logically support Apple’s argument. Ogino merely states that it teaches
`
`examples that can be made to be telephoto lens systems. The Petition fails to
`
`demonstrate that Ogino sufficiently teaches such modifications on its own.
`
`There are other deficiencies in the Petition besides those addressed in this
`
`Preliminary Response. But the Petition fails for at least for these reasons, even if all
`
`potentially disputed facts were construed in the Petitioner’s favor. Therefore, trial
`
`should not be instituted.
`
`II. Overview of the ’568 Patent and Challenged Claims
`
`Patent Owner Corephotonics developed an innovative camera technology for
`
`optical zoom that that can fit in a mobile device and provide superior performance
`
`to the prior art. Corephotonics’ dual-camera technology combines the fixed-focal
`
`length wide-angle camera that smartphones typically use with a second miniature
`
`telephoto lens. The telephoto lens offers a larger fixed focal length that provides
`
`higher resolution in a narrower field of view. The dual-camera system thereby
`
`enables optical zoom. At the heart of Corephotonics’ patented innovations are
`
`solutions to the practical obstacles to making the dual-camera zoom approach work.
`
`
`
`3
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`

`

`U.S. Pat. No. 9,857,568 (“the ’568 patent”) (Ex. 1001) is directed to fixed-
`
`focal length telephoto lens assembly technology with a small thickness and good
`
`quality imaging characteristics. Ex. 1001 at 1:33-36. In particular, the ’568 patent
`
`provides a compact lens assembly with a small total track length (TTL) and small
`
`ratio of TTL to the effective focal length (EFL) of the lens assembly. Id. at 1:29-45,
`
`2:4-8. The total track length (TTL) determines the physical width, or thickness of
`
`the camera. A small TTL results in a thinner, more compact camera. The effective
`
`focal length (EFL) determines how well the camera performs at capturing images of
`
`small or distant objects. A lens with a greater EFL is able to capture images of such
`
`objects with greater detail.
`
`Apple Inc. (“Petitioner” or “Apple”) challenges Claims 1-5 of the ’568 patent.
`
`The claims of the ’568 patent all require that TTL be both less than 6.5 mm and
`
`smaller than the EFL, i.e., that the TTL to EFL ratio be smaller than 1.0. This
`
`limitation is expressed in Claim 1, on which all other claims of the ’568 patent
`
`depend:
`
`1. A lens assembly, comprising: a plurality of refractive 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 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
`
`
`
`4
`
`

`

`between a largest optical axis thickness L11 and a circumferential edge
`
`thickness L1e of the first lens element of L11/L1e<4.
`
`
`
`By way of example, Fig. 3A of the ’568 patent, shown below, illustrates embodiment
`
`300. See id. at 6:65-8:19 (describing embodiment 300).
`
`
`
`The specification discloses that embodiment 300 provides an EFL of 6.84 mm and
`
`TTL of 5.904 mm. That value of TTL can be obtained by summing the thicknesses
`
`of lenses and lens elements in the system (see 4:13-20) as shown in Table 5 below.
`
`
`
`5
`
`

`

`The sum of the highlighted distances is 5.905 mm., approximately equal to the
`
`reported TTL of 5.904 mm. Embodiment 300 thus provides “advantageously, the
`
`ratio TT/EFL = 0.863,” which is less than 1.0. Id. at 7:64-65.
`
`III. Claim Construction
`
`A. Legal Standards
`
`Apple asserts that “[t]his Petition presents claim analysis in a manner
`
`consistent with plain and ordinary meaning in light of the specification.” Pet. at 6
`
`(emphasis added.); see Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
`
`Accordingly, the Board may interpret the claims under the Phillips standard, rather
`
`than BRI, in accord with what the Petition contends. See SAS Institute, Inc. v. Iancu,
`
`138 S.Ct. 1348, 1357 (2018) (“[T]the petitioner's contentions, not the Director's
`
`
`
`6
`
`

`

`discretion, define the scope of the litigation all the way from institution through to
`
`conclusion.”).1
`
`Notwithstanding, even if the Board were to apply the BRI standard, the
`
`Federal Circuit has cautioned that “[t]he protocol of giving claims their broadest
`
`reasonable interpretation does not include giving claims a legally incorrect
`
`interpretation divorced from the specification and the record evidence.” In re Smith
`
`Int'l, Inc., 871 F.3d 1375, 1382 (Fed. Cir. 2017) (citations and internal quotations
`
`omitted). The specification must be considered, to determine whether it “proscribes
`
`or precludes some broad reading of the claim term” and to ensure that the
`
`interpretation of the claims is “not inconsistent with the specification.” Id. at 1383.
`
`Rather, claims must be afforded an interpretation that “corresponds with what and
`
`how the inventor describes his invention in the specification.” Id.
`
`This Preliminary Response is limited to addressing the Petition’s erroneous
`
`construction of “total track length (TTL).”2 Because this Preliminary Response
`
`addresses a discrete threshold issue on which the Petition fails, at this stage of the
`
`
`1 Since this Petition was filed, the parties exchanged opening and responsive
`Markman briefs in District Court. District Court proceedings were stayed pending
`IPR proceedings on December 14, 2018, before Corephotonics filed its reply brief.
`2 Since Apple filed this Petition, the Board instituted trial on other related patents.
`However, Corephotonics did not file a Preliminary Response in those proceedings.
`The Board, therefore, only had Apple’s petitions before it when construing “TTL”
`for the limited purpose of deciding whether to institute trial. The Board could not
`and did not consider the issues raised in this Preliminary Response.
`
`
`
`7
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`

`

`proceedings Corephotonics does not address the construction of any other terms. See
`
`Apple Inc. v. Uniloc Luxembourg S.A., IPR2018-00420, Paper 7 at 8 (PTAB, Aug.
`
`6, 2018) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999)) (“[O]nly those terms need be construed that are in controversy, and
`
`only to the extent necessary to resolve the controversy.”). Should trial be instituted,
`
`however, Corephotonics may propose constructions to clarify disputes regarding
`
`additional issues, for example, as raised in the Board’s decision.
`
`B.
`
`The Petition Relies on a Construction of “Total Track Length
`(TTL)” that Contradicts the Patent’s Express Definition.
`
`The ’568 patent defines the total track length (TTL) in the specification: “The
`
`effective focal length of the lens assembly is marked ‘EFL’ and the total track length
`
`on an optical axis between the object-side surface of the first lens element and the
`
`electronic sensor is marked ‘TTL’.” Ex. 1001 at 2:1-4 (emphasis added). This is an
`
`instance where the specification “acts as a dictionary when it expressly defines terms
`
`used in the claims or when it defines terms by implication.” Phillips v. AWH Corp.,
`
`415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); see also Martek
`
`Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1380 (Fed. Cir. 2009) (“When
`
`a patentee explicitly defines a claim term in the patent specification, the patentee's
`
`definition controls.”); Honeywell Int'l, Inc. v. Universal Avionics Sys. Corp., 493
`
`F.3d 1358, 1361 (Fed. Cir. 2007) (“When a patentee defines a claim term, the
`
`
`
`8
`
`

`

`patentee's definition governs, even if it is contrary to the conventional meaning of
`
`the term.”).
`
`The correct construction of the term “TTL,” following the patent’s definition,
`
`is thus “the length on an optical axis between the object-side surface of the first
`
`lens element and the electronic sensor.” Apple’s proposed construction, by
`
`contrast, deviates from this plain text in the specification. Apple proposes instead to
`
`substitute the words “image plane” for “electronic sensor.” Pet. at 11 (construing
`
`“total track length (TTL)” to “include ‘the length of the optical axis spacing between
`
`the object-side surface of the first lens element and the image plane’”).
`
`The patent discloses embodiments in which the image plane coincides with
`
`the image sensor. When describing the first embodiment 100, the patent discloses
`
`that “an image sensor (not shown) is disposed at image plane 114 for the image
`
`formation.” Ex. 1001 at 3:40-42. Apple uses that statement to justify improperly
`
`rewriting the patent’s definition of TTL. Pet. at 10 (citing Ex. 1001 at 3:40-42). But
`
`the statement only implies that (1) the sensor may often (and preferably does)
`
`coincide with the image plane, and (2) that the patent’s disclosures do not show the
`
`sensor disposed at the image plane. To the extent that the image sensor does not
`
`coincide with the image plane, the patent defines TTL as measured from the object
`
`side of the first lens element to the sensor. Ex. 1001 at 2:1-4.
`
`
`
`9
`
`

`

`Moreover, the ’568 patent’s subsequent usage of TTL in the specification and
`
`claims is consistent with this original definition. There is no statement later in the
`
`patent that says or implies that TTL should be measured to the image plane, as
`
`distinct from the image sensor. As in Table 1, in the later Tables 3 and 5, the TTL
`
`may also be calculated by summing lens thicknesses and gaps up to the image plane
`
`(identified as 114, 214, and 314 respectively). Since the image plane is where the
`
`image sensor is disposed, summing the distances in Tables 1, 3, and 5 provides the
`
`TTL of each respective embodiment. The claims also do not specify a different way
`
`to measure TTL than to the sensor.
`
`Apple further contends that its construction is supported by “other examples
`
`in the art.” But Apple quotes from a patent that provides an express definition of
`
`TTL that is in terms of the “image plane.” Pet. 10-11 (quoting U.S. Pat. No.
`
`7,777,972 to Chen (Ex. 1008)). By contrast, the ’568 patent has an express definition
`
`of TTL in terms of the “image sensor.” This undermines Apple’s argument,
`
`demonstrating instead that the ’568 patent expressly defined the TTL in terms of
`
`“image sensor” to be specific in view of other potential definitions. The ’568 patent
`
`is also consistent with cited references: U.S. Pat. Pub. Nos. 2011/0249346 (Ex.
`
`2001), 2011/0279910 (Ex. 2002), 2011/0261470 (Ex. 2003).3 Ex. 1001 at 2. Notably,
`
`
`3 Though these published applications are part of the intrinsic record as they are
`listed as cited references, they have been attached as Exhibits herewith for reference.
`
`
`
`10
`
`

`

`these publications share two of three authors with the reference on which Apple
`
`relies, U.S. 7,777,972 (Ex. 1008).
`
`The cited publications expressly define “TTL” in the same way as the ’568
`
`patent: “a distance on the optical axis between the object-side surface of the first lens
`
`element and the electronic sensor is TTL.” See, e.g., Ex. 2001 at ¶¶ 8, 51, 60; Ex.
`
`2002 at ¶¶ 9, 46, 51; Ex. 2003 at ¶¶ 5, 6, 7, 41 (emphasis added). The contradictory
`
`definitions of TTL in these references, which share the same authors, demonstrate
`
`that the definition is specific to the context of a particular patent or text. Here, the
`
`’568 patent provides an express, particular definition of TTL. And cited prior art,
`
`which is part of the intrinsic evidence, also uses the same definition of TTL. V-
`
`Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307, 1311 (Fed. Cir. 2005) (holding
`
`that “prior art cited in a patent or cited in the prosecution history of the patent
`
`constitutes intrinsic evidence”).
`
`The Petitioner’s unsupported construction, therefore, should be rejected. The
`
`Petition should be evaluated based on the construction of “TTL” as the patent defines
`
`it: the length on an optical axis between the object-side surface of the first lens
`
`element and the electronic sensor.
`
`
`
`11
`
`

`

`IV. The Petition fails to establish the reasonable likelihood of success at
`least because it fails to show how Ogino discloses a lens assembly with
`“a ratio TTL/EFL of less than 1.0.”
`
`The Petitioner has the burden to “demonstrate that there is a reasonable
`
`likelihood that at least one of the claims challenged in the petition is unpatentable.”
`
`37 C.F.R. § 42.108. Though the Petition raises two grounds of obviousness, Ogino
`
`alone and Ogino combined with Beich, both grounds rely on the same argument for
`
`the limitations of Claim 1 that relate to the total track length (TTL). Both grounds
`
`rely on a single embodiment, Example 6 in U.S. 9,128,267 (“Ogino”) (Ex. 1005), to
`
`disclose a lens assembly with a “ratio TTL/EFL less than 1.0.” Pet. at 25-29, 53. As
`
`explained above, this limitation in Claim 1 must be addressed to support the
`
`Petition’s challenge to all claims of the ’568 patent. Apple contends that this
`
`limitation is disclosed by Ogino in “two ways.” Pet. at 28-29. Neither is availing, as
`
`further explained below.
`
`A. The Petition fails to show that Ogino discloses the “TTL” of
`Example 6 according to its definition in the ’568 patent.
`
`The Petition misleadingly equates the value “TL” disclosed in Table 11 for
`
`Example 6 with “TTL” as defined by the ’568 patent. Pet. at 27 (highlighting the
`
`value “TL” and labelling it as “TTL”). Ogino provides an express, precise definition
`
`of “TL.” Ogino discloses that “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.” See Ex. 1005 at 14:47-53 (quoted by Pet., 27) (emphasis
`
`
`
`12
`
`

`

`added). Thus “TL” or “total lens length” is a defined term in Ogino with a definition
`
`that differs from the definition of “TTL” or “total track length” in the ’568 patent.
`
`As defined in Ogino, “TL” is the theoretical length of a lens assembly in which “the
`
`back focal length uses an air-converted term.” By contrast, the ’568 patent defines
`
`“TTL” as the physical distance from the first lens element to the image sensor.
`
`The Petition fails to explain how Ogino discloses where an image sensor
`
`would be located in Example 6. Pet., 25-29. The portions of the Sasian expert
`
`declaration (Ex. 1003) cited by the Petition also fail to explain how a POSITA would
`
`understand Ogino to disclose the location of the image sensor in Example 6. The
`
`Petition also fails to cite to any portion of Ogino that discloses where the image
`
`sensor would be located. Rather, Ogino only discloses values for the theoretical
`
`“TL” as defined in a manner specific to Ogino. The Petition fails to demonstrate that
`
`Ogino discloses anything about the TTL—the distance from the first lens to the
`
`image sensor—of Example 6. Therefore, the Petition fails to demonstrate that Ogino
`
`discloses required elements of Claim 1 of the ’568 patent and its dependent claims:
`
`that the TTL of Example 6 must be less than 6.5 mm, and that the TTL/EFL ratio is
`
`less than 1.0.
`
`In sum, the Petition is “keyed to an incorrect construction,” and trial should
`
`not be instituted. See, e.g., United Microelectronics Corp., et al. v. Lone Star Silicon
`
`Innovations LLC, IPR2017-0153, Paper 10 at 6 (PTAB, May 22, 2018) (collecting
`
`
`
`13
`
`

`

`cases) (“[T]he Board may, and routinely does, decline to institute trial where the
`
`patentability challenge asserted in a petition is keyed to an incorrect claim
`
`construction.”).
`
`While Petitioner may subsequently attempt to rely on an argument based on
`
`inherency or obviousness as to the definition of TTL, that argument has been
`
`foreclosed by the Petition’s failure to raise such an argument. In re Magnum Oil
`
`Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (rejecting the Board’s reliance
`
`on obviousness arguments that “could have been included” in the petition but were
`
`not, and holding that the Board may not “raise, address, and decide unpatentability
`
`theories never presented by the petitioner and not supported by the record
`
`evidence”); Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed.
`
`Cir. 2015) (holding that “a challenge can fail even if different evidence and
`
`arguments might have led to success”). Nor could Petitioner remedy the deficiencies
`
`in a reply brief. Wasica Finance GMBH v. Continental Auto. Systems, 853 F.3d
`
`1272, 1286 (Fed. Cir. 2017) (“Rather than explaining how its original petition was
`
`correct, Continental’s subsequent arguments amount to an entirely new theory of
`
`prima facie obviousness absent from the petition. Shifting arguments in this fashion
`
`is foreclosed by statute, our precedent, and Board guidelines.”) (internal citations
`
`omitted).
`
`
`
`14
`
`

`

`B.
`
`Even applying Apple’s proposed construction, the Petition fails to
`show that Example 6 has “a ratio of TTL/EFL less than 1.0.”
`
`Even if Apple’s claim construction were applied, the Petition still fails. Apple
`
`construed TTL as including “the length of the optical axis spacing between the
`
`object-side surface of the first lens element and the image plane.” Pet. at 11.
`
`According to Apple’s construction, TTL of Example 6 is then equal to the sum of
`
`distances from the distance from the front of the first lens element to the “image
`
`plane,” which is the surface labeled 14 on Figure 6. Ogino discloses these distances
`
`in Table 11. See Pet. at 26-27. Summing the distances in Table 11 provides a TTL
`
`of 4.489 mm. Table 11 discloses that the focal length of the whole system (“f”) is
`
`4.428 mm. This Preliminary Response assumes that this value of “f” is equal to the
`
`EFL, as Apple does in the Petition. In turn, Ogino Example 6 provides a ratio of
`
`TTL/EFL that is 4.489/4.428 or 1.1014, which is greater than 1.0. This fails to meet
`
`the requirements of Claim 1.
`
`Because Ogino Example 6 does not meet the TTL requirements, the Petition
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`relies on modifying Example 6 to remove the optical element “CG.” The Petition’s
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`only basis to support this modification is Ogino’s generic disclosure of the “optical
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`member CG” as being “optional.” Pet. at 26, 28. The Petition has no other basis to
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`support the contention that Ogino Example 6 can provide a lens assembly with a
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`measured “TTL” less than the EFL. Id. at 29. To succeed, the Petition must then
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`establish that Ogino sufficiently teaches the modification of Example 6 by removing
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`the CG element to provide a lens assembly with a ratio TTL/EFL of less than 1.0.
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`The Petition fails to show that Ogino sufficiently teaches such modification, whether
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`evaluated under the standards for anticipation or for obviousness.
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`Either standard requires a petition to articulate facts beyond just pointing to a
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`reference’s disparate disclosures. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d
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`1359, 1371 (Fed. Cir. 2008) (anticipation requires more than a showing that “the
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`prior art . . . includes multiple, distinct teachings that the artisan might somehow
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`combine to achieve the claimed invention.”); ActiveVideo Networks, Inc. v. Verizon
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`Commc’ns, Inc., 694 F.3d 1312, 1327-28 (Fed. Cir. 2012) (describing the factual
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`showings required to establish obviousness).
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`However, the Petition fails to provide any factual support for applying the
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`purported “optional” removal of the CG element to modify Example 6 specifically.
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`All the Petition cites to in the Sasian declaration for support is a conclusory statement
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`that parrots the Petition. Pet. at 27 (citing Ex. 1003, p. 33). It is clear that, as an initial
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`matter, Ogino teaches that Example 6 does include a CG element. For example, the
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`optical member CG is shown in the drawing illustrating Example 6, shown below.
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`Ex. 1005 at Fig. 6. The dimensions and position of CG are also shown in Table 11.
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`Ex. 1005 at 22:10-25.
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`Sasian’s declaration also includes an Appendix that purports to be an
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`“Analysis of Ogino Example 6 as input in Zemax lens design software.” Ex. 1003,
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`77-86. The diagram in the Appendix shows the member CG as being part of Example
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`6, as shown below. Sasian’s diagram has been annotated to point out the CG element.
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`In his purported “analysis” of Example 6, however, Sasian never shows what
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`would happen if it were modified to remove CG. See id. According to Sasian’s
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`declaration, the lines shown above going through the lens assembly are simulated
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`rays of light through the system. Ex. 1003, 67. That deflection is visible in Sasian’s
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`diagram as shown in the magnified excerpt shown below. As can be seen below, by
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`the simulated rays in Sasian’s analysis bend at the front and rear surfaces of the CG
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`element, where the arrows are pointing.
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`
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`Sasian’s analysis thereby demonstrates that the path of light changes as it
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`moves through the optical member CG. Sasian provides no explanation as to whether
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`the removal of CG, and consequent change in the path of light rays, would result in
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`or require any other changes to lens design. Sasian merely parrots what Ogino says,
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`without adding anything more or citing any other references in the art. See Ex. 1003
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`at 33 (citing Ex. 1005 at 5:65-6:2). Ogino’s disclosure of an “optional” CG is not
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`connected to any particular embodiment, however. Ogino provides no disclosure as
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`to what a potential modified Example 6 would look like or how it would perform—
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`either in the cited portion or elsewhere. And, Sasian’s declaration provides no
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`analysis of a modified Example 6 without the CG element. The Petition, therefore,
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`fails to provide support for the proposition that Example 6 may be modified without
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`affecting optical performance and requiring other modifications. The Petition fails
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`to sufficiently demonstrate, for example, that there would not need to be additional
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`modifications made that would result in the modified Example 6 having a ratio of
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`TTL/EFL greater than 1.0 (and not meeting the claim requirements).
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`In sum, the Petition fails to demonstrate that a skilled artisan would recognize
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`Ogino as disclosing an embodiment with a ratio of TTL/EFL less than 1.0 based on
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`modifying Example 6 to remove the optical member CG. Net MoneyIn, 545 F.3d at
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`1371; ActiveVideo, 694 F.3d at 1327-28.
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`C. The Petition also fails to demonstrate that Ogino’s disclosure of
`“telephoto” lens assemblies implies that the TTL/EFL of Example
`6 is less than 1.0.
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`Recognizing the weakness in its primary argument that Example 6 can be
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`modified to remove the CG element, Apple argues, in the alternative, that Ogino
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`describes Example 6 as being a “telephoto” lens system. Pet. at 28 (citing Ex. 1005
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`at 8:12-14). From this premise, Apple contends that this means that Example 6 must
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`thereby have a TTL less than EFL, since that is how a skilled artisan would
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`understand the term “telephoto.” Id. at 29. This alternative argument cannot rescue
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`the Petition, however, because the original premise is fundamentally wrong. The
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`Petition relies on misreading what Ogino actually says.
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`Ogino states, in relation to a fifth lens, that “the imaging lens can be more
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`appropriately made to have a telephoto type configuration as a whole, and thus it is
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`possible to appropriately reduce the total length.” Ex. 1005 at 8:12-14 (emphasis
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`added). Ogino does not assert that it teaches lens systems that are, in fact, telephoto.
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`Indeed, the examples in Ogino are not “telephoto” with a TTL less than EFL, as
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`Apple contends that term would be understood by a skilled artisan. As explained
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`above, Ogino’s “TL” is not equivalent to the overall physical length of a lens
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`assembly. But even on the Petition’s own terms, Ogino’s examples do not all have a
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`TL/EFL ratio of less than 1.0. For instance, Ogino discloses that Example 1 has a
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`“TL” of 4.137 mm, and a focal length (“f”) of 4.126 mm.4 Ex. 1005 at 16:30-31
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`(Table 1). Therefore, Ogino’s Example 1 has a TL/EFL ratio of greater than 1.0.
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`Ogino similarly discloses that Example 2 has a TL/EFL ratio of greater than 1.0 and
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`Example 3 has a TL/EFL ratio equal to 1.0. Id. at 17:18-20 (Table 3), 18:18-20
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`(Table 5). Ogino thus t