Trials@uspto.gov
`571-272-7822
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`
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`Paper 32
`
`Date: April 6, 2020
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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.
`____________
`
`IPR2019-00030
`Patent 9,857,568 B2
`____________
`
`
`
`Before MARC S. HOFF, BRYAN MOORE, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`ULLAGADDI, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 32
`
`Date: April 6, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS LTD.,
`Patent Owner.
`____________
`
`IPR2019-00030
`Patent 9,857,568 B2
`____________
`
`
`
`Before MARC S. HOFF, BRYAN MOORE, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`ULLAGADDI, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`IPR2019-00030
`Patent 9,857,568 B2
`
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) requested an inter partes review of claims 1–
`5 (the “challenged claims”) of U.S. Patent No. 9,857,568 B2 (Ex. 1001, “the
`’568 patent”). Paper 2 (“Petition” or “Pet.”). Corephotonics Ltd. (“Patent
`Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
`On April 16, 2019, we entered a Decision on Institution (“Inst. Dec.,”
`Paper 9) instituting an inter partes review as to all of the challenged claims
`on all of the grounds set forth in the Petition.
`After institution of trial, Patent Owner filed a Patent Owner Response
`(“PO Resp.,” Paper 21), to which Petitioner filed a Reply (“Reply,”
`Paper 22). Patent Owner filed a Sur-reply (“Sur-reply,” Paper 24). A
`hearing was held on November 12, 2019, for this proceeding. The transcript
`of the hearing has been entered into the record. Paper 31 (“Transcript” or
`“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This final written decision
`is issued pursuant to 35 U.S.C. § 318(a).
`BACKGROUND
`II.
`Related Proceedings
`A.
`The ’568 patent is asserted in Corephotonics Ltd. v. Apple Inc., 5-17-
`cv-06457 (N.D. Cal.), filed November 6, 2017, and in Corephotonics Ltd. v.
`Apple Inc., 3-18-cv-02555 (N.D. Cal.), filed April 30, 2018. Pet. 2; Paper 4,
`2.
`
`This proceeding is related to IPR2018-01146 (“the ’1146IPR”), an
`inter partes review proceeding instituted based on Petitioner’s challenge to
`U.S. Patent No. 9,568,712 (“the ’712 patent”). This proceeding is also
`related to IPR2018-01140 (“the ’1140IPR”), an inter partes review
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`proceeding instituted based on Petitioner’s challenge to U.S. Patent No.
`9,402,032 (“the ’032 patent”). Both the ’712 and ’032 patents are part of a
`chain of continuity that includes PCT/IB2014/062465, from which the ’568
`patent also claims priority.
`The ’568 Patent (Ex. 1001)
`B.
`The ’568 patent issued on January 2, 2018, based on an application
`filed January 30, 2017, which claimed priority back to a provisional
`application filed July 4, 2013. Ex. 1001, codes (45), (22), (63). The ’568
`patent concerns an optical lens assembly with five lens elements. Id. at code
`(57). Figure 1A of the ’568 patent is reproduced below.
`
`
`Figure 1A of the ’568 patent illustrates an arrangement of lens
`elements in a first embodiment of an optical lens system.
`As shown in Figure 1A, in order from an object side to an image side,
`optical lens assembly 100 comprises: optional stop 101; first plastic lens
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`element 102 with positive refractive power having a convex, object-side
`surface 102a; second plastic lens element 104 with negative refractive power
`having a meniscus, convex, object-side surface 104a; third plastic lens
`element 106 with negative refractive power having a concave, object-side
`surface 106a; fourth plastic lens element 108 with positive refractive power
`having a positive meniscus with a concave, object-side surface 108a; fifth
`plastic lens element 110 with negative refractive power having a negative
`meniscus with a concave, object-side surface 110a. Id. at 3:21–37.
`In Table 1, reproduced below, the ’568 patent discloses radii of
`curvature, R, for the lens elements, lens element thicknesses and/or distances
`between each of the lens elements, and a refractive index, Nd, for each lens
`element.
`
`
`Table 1 of the ’568 patent sets forth optical parameters for the optical lens
`assembly.
`
`The ’568 patent discloses that
`the distances between various elements (and/or surfaces) are
`marked “Lmn” (where m refers to the lens element number, n=1
`refers to the element thickness and n=2 refers to the air gap to the
`next element) and are measured on the optical axis z, wherein the
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`stop is at z=0. Each number is measured from the previous
`surface. Thus, the first distance -0.466 mm is measured from the
`stop to surface 102a, the distance L11 from surface 102a to
`surface 102b (i.e. the thickness of first lens element 102) is
`0.894 mm, the gap L12 between surfaces 102b and 104a is 0.020
`mm, the distance L21 between surfaces 104a and 104b (i.e.
`thickness d2 of second lens element 104) is 0.246 mm, etc. Also,
`L21=d2 and L51=d5.
`Id. at 4:14–27 (emphasis added). The ’568 patent further discloses that
`width L1e is “a flat circumferential edge (or surface) of lens element 102.”
`Id. at 4:28–29. L11 and L1e are recited in each of the challenged claims.
`Challenged Claims
`C.
`Challenged claim 1 is independent and challenged claims 2–5 depend
`directly from claim 1. Independent claim 1 is reproduced below.
`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 between a largest optical axis thickness L11 and
`a circumferential edge thickness L1e of the first lens element of
`L11/Lle<4.
`Ex. 1001, 8:30–41 (line breaks added).
`Instituted Grounds of Unpatentability
`D.
`Petitioner advances the following challenges supported by the
`declaration of Dr. José Sasián (Ex. 1003).
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`35 U.S.C. §
`
`103
`
`103
`
`Claims
`Challenged
`1–5
`
`1–5
`
`
`
`Reference(s)/Basis
`
`U.S. Patent No. 9,128,267 to Ogino et al.
`(“Ogino,” Ex. 1005)
`Ogino and “P William S. Beich & Nicholas
`Turner, Polymer Optics: A Manufacturer’s
`Perspective on the Factors that Contribute to
`Successful Programs, in 7788 Proceedings of
`SPIE, Polymer Optics Design, Fabrication,
`and Materials (David H. Krevor & William S.
`Beich eds., 2010) (“Beich,” Ex. 1020)
`
`III. ANALYSIS
`Claim Construction
`A.
`In an inter partes review, we interpret claim terms in an unexpired
`patent based on the broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b)
`(2018); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016)
`(affirming applicability of the broadest reasonable construction standard in
`inter partes review proceedings).1 Under that standard, claim terms
`generally are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`
`1 The final rule changing the claim construction standard in inter partes
`review proceedings does not apply here, as the Petition was filed before the
`rule’s effective date, November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340, 51,344
`(Oct. 11, 2018). Nevertheless, we do not perceive on this record that the
`construction would be different if the standard in the above-noted final rule
`were applied.
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`2007). The claims, however, “should always be read in light of the
`specification and teachings in the underlying patent,” and “[e]ven under the
`broadest reasonable interpretation, the Board’s construction ‘cannot be
`divorced from the specification and the record evidence.’” Microsoft Corp.
`Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations omitted).
`Further, any special definition for a claim term must be set forth in the
`specification with reasonable clarity, deliberateness, and precision. See In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
`definition, limitations are not to be read from the specification into the
`claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`We construe claim terms to the extent necessary. See, e.g., Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy,
`and only to the extent necessary to resolve the controversy.’” (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`Consequently, we address below Petitioner’s proposed constructions
`for the terms “effective focal length” and “total track length.”
`Effective Focal Length (EFL)
`1.
`Independent claim 1 recites “wherein the lens assembly has an
`effective focal length (EFL).” Petitioner contends that although the
`specification of the ’568 patent does not expressly define EFL, “its meaning
`is well known in the art, as exemplified in U.S. Patent No. 7,918,398 B2
`(Ex. 1007, “Li”), which states that “[t]he focal length of a lens assembly [is]
`also referred to as the effective focal length.” Pet. 11 (alterations in original)
`(quoting Ex. 1007, 2:59–60). Patent Owner does not address the
`construction of EFL. See generally PO Resp.
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`Based upon the complete trial record, Petitioner persuades us that Li
`supports the conclusion that the ordinary and customary meaning of the term
`“effective focal length” is “the focal length of a lens assembly.” For the
`foregoing reasons, we construe the term “effective focal length” in this
`manner. This construction coincides with the construction of the same term
`in the ’1140IPR (Paper 37, 10) and the ’1146IPR (Paper 37, 8).
`Total Track Length (TTL)
`2.
`Independent claim 1 recites “wherein the lens assembly . . . has a total
`track length (TTL) of 6.5 millimeters or less.” Petitioner contends the ’568
`patent discloses that TTL is the “total track length on an optical axis between
`the object-side surface of the first lens element and the electronic sensor.”
`Pet. 10 (quoting Ex. 1001, 2:2–4). Petitioner contends the ’568 patent
`discloses that “[t]he electronic sensor or image sensor ‘is disposed at the
`image plane 114 for the image formation.’” Id. (quoting Ex. 1001, 3:40–42).
`Petitioner further contends that “[t]his is consistent with other examples in
`the art,” such as U.S. Patent No. 7,777,972 (“Chen,” Ex. 1008), which states
`that “TTL is defined as the on-axis spacing between the object-side surface
`of the first lens element and the image plane when the first lens element is
`positioned closest to the imaged object.” Pet. 10–11 (quoting Ex. 1008,
`3:24–27). We understand Petitioner to take the position that the claim term
`TTL is measured to an image plane, absent or independently of a
`corresponding sensor. See Reply 9.
`Patent Owner, however, contends that the proper construction of TTL
`
`is “the length on an optical axis between the object-side surface of the first
`lens element and the electronic sensor.” PO Resp. 18. Patent Owner argues
`that the disclosure in the ’568 patent specification at column 2, lines 2
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`through 4 constitutes an express definition of TTL. PO Resp. 18. We
`understand Patent Owner to take the position that the claim term TTL is
`measured to an electronic sensor, absent or independently of a corresponding
`image plane. Although the ’568 patent discloses TTL with reference to an
`electronic sensor in column 2, lines 2 through 4, the ’568 patent also
`discloses that “an image sensor (not shown) is disposed at image plane 114
`for the image formation.” Ex. 1001, 3:40–42 (emphasis added). Patent
`Owner does not direct us to, nor are we able to ascertain, any disclosure in
`the ’568 patent that places the electronic sensor at a different location from
`the image plane. See generally PO Resp. We further note that the figures of
`the ’568 patent appear to depict only the image plane, and not the electronic
`sensor. See generally Ex. 1001.
`In our Institution Decision, we preliminarily concluded that TTL
`should be construed as “the length of the optical axis spacing between the
`object-side surface of the first lens element and the image plane.” Inst. Dec.
`9.
`
`As both parties have noted, the ’568 patent discloses that “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, 2:2–4.
`With respect to the sensor, the ’568 patent further discloses “[a]n optical lens
`system incorporating the lens assembly may further include . . . an image
`sensor with an image plane on which an image of the object is formed.” Id.
`at 1:63–67 (emphasis added). The ’568 patent discloses that “[t]he optical
`lens system further comprises . . . an image plane 114 for image formation of
`an object,” and that “an image sensor (not shown) is disposed at image
`plane 114 for the image formation.” Id. at 3:37–42 (emphasis added). The
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`figures of the ’568 patent do not depict a sensor, nor is a sensor mentioned
`with respect to other disclosures of the image plane. See id. at 5:64–65
`(disclosing “an image plane 214 for image formation of an object” absent an
`accompanying sensor), 7:21–22 (disclosing “an image plane 314 for image
`formation of an object” absent an accompanying sensor).
`We are not persuaded that the intrinsic evidence supports Petitioner’s
`construction, which encompasses a TTL measured with respect to an image
`plane that is independent of or absent a corresponding image sensor. See
`Reply 9. Some of the disclosures of an image plane in the ’568 patent are
`accompanied by a disclosure of a sensor. See Ex. 1001, 2:2–4, 3:37–42. We
`are also not persuaded that the extrinsic evidence cited by Petitioner supports
`Petitioner’s construction. Although Chen discloses that the TTL is defined
`with respect to “the image plane when the first lens element is positioned
`closest to the imaged object,” each embodiment of Chen discloses, either
`implicitly or explicitly, the image plane in conjunction with an image sensor.
`Ex. 1008, 3:24–26, 6:5–6 (disclosing “an image plane 170 disposed behind
`the sensor cover glass 160” with respect to Chen’s first embodiment), 7:59–
`60 (disclosing “an image plane 370 disposed behind the sensor cover glass
`360” with respect to Chen’s second embodiment), 10:20–21 (disclosing “the
`image plane 570 is provided with an electronic sensor on which an object is
`imaged” with respect to Chen’s third embodiment).
`With respect to Patent Owner’s contentions, we are not persuaded that
`the cited disclosure in column 2, lines 2 through 4 of the ’568 patent
`“‘clearly set[s] forth a definition of the disputed claim term’ other than its
`plain and ordinary meaning.” See Thorner v. Sony Comput. Entm’t Am.
`LLC, 669 F.3d 1362, 1365 (quoting CCS Fitness, Inc. v. Brunswick Corp.,
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`288 F.3d 1359, 1366 (Fed. Cir. 2002)). “We depart from the plain and
`ordinary meaning of claim terms based on the specification in only two
`instances: lexicography and disavowal.” Hill-Rom Servs., Inc. v. Stryker
`Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (citing Thorner, 669 F.3d at
`1365). “‘To act as its own lexicographer, a patentee must clearly set forth a
`definition of the disputed claim term other than its plain and ordinary
`meaning’ and must ‘clearly express an intent to redefine the term.’” Id.
`(quoting Thorner, 669 F.3d at 1365). “Disavowal requires that ‘the
`specification [or prosecution history] make[ ] clear that the invention does
`not include a particular feature,’ or is clearly limited to a particular form of
`the invention.” Id. at 1372 (alterations in original) (internal citations
`omitted).
`The disclosure in column 2, lines 2 through 4 of the ’568 patent is not
`characterized in terms of the present invention. Id. Like in Hill-Rom, there
`is neither “disclaimer or lexicography” nor “words of manifest exclusion or
`restriction.” Id. More particularly, there is no disclosure “expressing the
`advantages, importance, or essentiality” of measuring TTL with respect to
`an electronic sensor as opposed to, for example, film. Id. Nor is there
`disclosure of “language of limitation or restriction” of the TTL with respect
`to the electronic sensor. Id. Stated differently, the ’568 patent specification
`does not describe the invention as limited to a TTL measured with respect to
`only an electronic sensor.
`According to Patent Owner’s expert, Dr. Duncan Moore, TTL would
`have been understood by one of ordinary skill in the art at the time of the
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`invention as having specific meaning(s). See Ex. 10252, 68:9–17 (Dr.
`Moore’s testimony concerning how a person of ordinary skill in the art
`would have understood TTL to be measured with respect to film for a
`camera), 66:21–67:3 (Dr. Moore’s testimony concerning how a person of
`ordinary skill in the art would have understood that TTL could have been
`measured prior to electronic sensors). Patent Owner’s evidence supports the
`finding that a person of ordinary skill in the art would have further
`understood TTL to be measured with respect to an electronic sensor. See
`e.g., Ex. 2007, 2:20–22; Ex. 2008 ¶ 60; Ex. 2009 ¶ 51; Ex. 2010 ¶ 41. So,
`too, does Petitioner’s evidence, Chen. See e.g., Ex. 1008, 3:24–26, 10:20–
`21. For the foregoing reasons, we are not persuaded by Petitioner’s position
`that the claim term TTL is measured to an image plane, absent or
`independently of a corresponding sensor. For the following reasons, we are
`not persuaded by Patent Owner’s position that TTL is measured to an
`electronic sensor, absent or independently of a corresponding image plane.
`In its Response, Patent Owner further argues that Petitioner’s
`“proposed construction not only contradicts the ’568 patent’s definition of
`TTL, but its incorporation of the term ‘image plane’ introduces ambiguity as
`to how the TTL would be measured.” PO Resp. 22. Citing to extrinsic
`evidence in Lens Design Fundamentals by Kingslake and Johnson (Ex.
`2024, “Kinglake”), Patent Owner supports its argument by reasoning that
`
`
`2 Exhibit 1025 is the deposition testimony of Dr. Moore from the ’1140IPR
`and the ’1146IPR. These IPRs involved issues similar to those addressed in
`this decision, including those relating to claim construction. As Dr. Moore’s
`testimony from these related IPRs was appropriately made of record in the
`present proceeding, we consider it as necessary to render our findings and
`conclusions.
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`“Kingslake provides that ‘image plane’ may mean at least two different
`concepts: the ‘ideal image plane,’ also known as the Gaussian image or
`paraxial image plane; and the actual ‘image plane’ comprising the surface at
`which an image may be formed (i.e., captured).” Id. at 23 (citing Ex. 2005 ¶
`66; Ex. 2024, 6). According to Patent Owner, “as it is used in Kingslake and
`in the ’568 patent, the term ‘image plane’ refers to the physical surface on
`which an image is captured.” PO Resp. 23; see id. at 23–24 (arguing the
`image plane as disclosed in the ’568 patent refers to a physical surface,
`either on a plastic film or electronic sensor). Patent Owner cites additional
`extrinsic evidence, U.S. Patent Pub. No. 2011/0261471 A1 (“Taniyama,”
`Ex. 2018), and argues that “the ‘image plane’ . . . is expressly understood by
`its inventors to ‘include’ the electronic image sensor expected to be used
`with the system,” because “[t]he electronic sensor, after all, contains the
`‘planar surface where the image is formed.’” Id. at 25 (citing Ex. 2024, 6;
`Ex. 2005 ¶ 68) (emphasis added); see also Ex. 2018 ¶ 68 (“Image plane
`Simg includes an image sensor, such as a CCD or the like.”).
`Patent Owner’s contention acknowledges that image plane as
`disclosed in the ’568 patent is clear––it refers to a physical surface, either on
`a plastic film or electronic sensor. PO Resp. 23–24 (citing Ex. 2005 ¶¶ 66,
`67; Ex. 2024, 6; Ex. 1001, 1:66–67, 3:39–40, 5:64–65, 7:21–22). Patent
`Owner further acknowledges that “as it is used in Kingslake and in the ’568
`patent, the term ‘image plane’ refers to the physical surface on which an
`image is captured.” Id. at 23. Like the ’568 patent, Taniyama discloses that
`an image plane is coincident with or corresponds to an image sensor. Ex.
`2018 ¶¶ 68, 78. We are not persuaded that Patent Owner’s position––that
`including image plane in the construction of TTL introduces ambiguity––is
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`supported by the cited evidence. We are persuaded, instead, that “the image
`plane and the sensor are taught by the ’568 patent to be coincident,” and
`“[t]hus, there is no ambiguity in the ’568 patent about where the image plane
`is located or that TTL is measured to the image plane,” as Petitioner argues
`in its Reply. Reply 13 (Ex. 1026 ¶ 5; Ex. 1003, 33–35). Patent Owner
`acknowledges as much, noting that “as these terms[, i.e., the image plane
`and the sensor,] are used in the specification of the ’568 patent, the image
`plane is the surface of the sensor.” Sur-reply 2.
`We find that the ’568 patent discloses that the electronic sensor
`corresponds to or is coincident with the image plane and thus, the TTL could
`be measured with respect to either the sensor (electronic or film) or the
`image plane and reach the same result. Based upon the complete trial
`record, we maintain our construction of TTL from the ’1140IPR and the
`’1146IPR3, which encompasses “the length of the optical axis spacing
`between the object-side surface of the first lens element and one of: an
`electronic sensor, film, and an image plane corresponding to either the
`
`
`3 The panel authorized, and the parties filed, supplemental briefing to
`address this construction before it was adopted in both the related ’1140IPR
`and ’1146IPR, and that the parties responded to this construction in the
`hearing in this proceeding (with citations to the transcript). See, e.g., Paper
`28 (PO’s demonstratives), 5; ’1140IPR, Paper 31; ’1146IPR, Paper 30; see
`also Trial Practice Guide Update 13–14 (July 2019),
`https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-
`update3.pdf; Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d
`1328, 1339 (Fed. Cir. 2018) (finding that the Board did not violate the
`Administrative Procedure Act when it adopted its own claim construction in
`the final decision because the parties had notice and an opportunity to be
`heard).
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`electronic sensor or a film sensor.” See ’1140IPR, Paper 37, 18; ’1146IPR,
`Paper 37, 14.
`Principles of Law
`B.
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). The burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp.
`Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the
`burden of proof in an inter partes review). Furthermore, Petitioner cannot
`satisfy its burden of proving obviousness by employing “mere conclusory
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`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
`Cir. 2016).
`Thus, to prevail in an inter partes review, Petitioner must explain how
`the proposed combinations of prior art would have rendered the challenged
`claims unpatentable. We analyze the challenges presented in the Petition in
`accordance with the above-stated principles.
`Level of Ordinary Skill in the Art
`C.
`We review the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art at the time of the
`invention. Graham, 383 U.S. at 17. Petitioner contends:
`Here, a person of ordinary skill in the art (“POSITA”) would
`include someone who had, at the priority date of the ’568 patent
`(i) a Bachelor’s degree in Physics, Optical Sciences, or
`equivalent training, as well as (ii) approximately three years of
`experience in and/or manufacturing multi-lens optical systems.
`Ex.1003, pp.8-9. Such a person would have had experience in
`analyzing, tolerancing, adjusting, and optimizing multilens
`systems, and would have been familiar with the specifications of
`lens systems. Ex.1003, p.8. In addition, a POSITA would have
`known how to use lens design software such as Codev, Oslo, or
`Zemax, and would have taken a lens design course. Ex.1003,
`p.9. Lack of work experience can be remedied by additional
`education, and vice versa. Ex.1003, p.9.
`Pet. 9. Petitioner contends that this definition differs from the definition set
`forth in the ’1140IPR, as it “includes training or experience in lens
`manufacturing,” because of the differing disclosures of the ’032 patent at
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`issue in the ’1140IPR and the ’568 patent at issue in the present proceeding.
`Reply 1–2.
` Patent Owner takes issue with Petitioner’s definition, contending,
`instead, that
`[a] person of ordinary skill in the art (“POSITA”) would have
`possessed an undergraduate degree in optical engineering,
`electrical engineering, or physics, with the equivalent of three
`years of experience in optical design at the time of the effective
`filing date of the ’568 patent, July 4, 2013. Ex. 2005, ¶ 14. A
`POSITA would not necessarily have had any experience in
`manufacturing lenses or optical systems. See id. ¶¶ 15-20.
`PO Resp. 14 (emphasis added). Patent Owner further contends that
`Petitioner’s own expert, Dr. Sasián, “confirmed at his deposition that a
`person with three years of design experience and no manufacturing
`experience could meet his POSITA definition.” Id. at 15 (citing Ex. 2012,
`20:12–22). Patent Owner argues that its expert, Dr. Moore, testifies that
`“the work of a lens designer does not typically overlap with that of a lens
`manufacturer, except in the way that the design and production stages of any
`given product would typically overlap.” Id. (citing Ex. 2005 ¶ 19).
`Patent Owner presents similar arguments with respect to the challenge
`applying Ogino in view of Beich. Id. at 16. Patent Owner contends that the
`“Beich reference itself notes the disjoint between engineering teams (that
`design lenses) and manufacturers” and the problems caused therefrom. Id.
`(citing Ex. 1020, 2; Ex. 2005 ¶¶ 19, 120–21). Patent Owner further contends
`that Petitioner fails to show that an optics designer would have relied on the
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`rules of thumb used in optics manufacturing that are described in Beich. Id.
`at 52.
`
`Even assuming, arguendo, we were to credit Patent Owner’s expert
`testimony as to the disjointed nature of optical lens assembly design
`experience and manufacturing experience, we are not persuaded that a
`person of ordinary skill in the art at the time of the invention having only
`design experience would be so completely unaware of manufacturing
`considerations so as to preclude taking into account the very general
`guidance of Beich. See Reply 24–25. Beich teaches that a lens designer
`should have a basic understanding of the manufacturing process, which
`would include the limits for fabricating lens elements in an optical lens
`assembly. Ex. 1020, 7. We are persuaded that the information conveyed in
`Beich would have been understood, known, and applied by the ordinarily
`skilled lens designer (see Reply 4–6 (citing Ex. 2014, 4, 9, 11, Fig. 9.2)),
`irrespective of whether such person had manufacturing experience. Stated
`differently, although an ordinarily skilled designer of an optical lens
`assembly may not have had any real-world manufacturing experience, we
`are persuaded that such person would still have taken into account
`manufacturing concerns.
`Although there are differences between the definitions proposed, our
`conclusions rendered in this decision do not turn on selecting a particular
`definition for the level of ordinary skill in the art, for the reasons discussed
`above. We determine, on this record, that the level of ordinary skill
`proposed by Patent Owner is consistent with the ’568 patent and the asserted
`prior art. We agree with Patent Owner’s proposal regarding the level of
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`ordinary skill except for Patent Owner’s arguments about manufacturing
`discussed above. As such, we adopt Patent Owner’s proposal.
`D. Obviousness over Ogino
`Petitioner contends that claims 1–5 are unpatentable under 35 U.S.C.
`§ 103 as obvious over Ogino. Pet. 13–47. For the reasons that follow, we
`are persuaded that Petitioner establishes, by a preponderance of the
`evidence, that claims 1–4 are unpatentable as obvious over Ogino. We are
`not persuaded that Petitioner shows, by a preponderance of the evidence,
`that claim 5 is unpatentable as obvious over Ogino.
`Overview of Ogino
`1.
`Ogino concerns an imaging lens substantially consisting of, in order
`from an object side, five lenses: a first lens L1 that has a positive refractive
`power and has a meniscus shape, which is convex toward the object side; a
`second lens L2 that has a biconcave shape; a third lens L3 that has a
`meniscus shape, which is convex toward the object side; a fourth lens L4
`that has a meniscus shape, which is convex toward an image side; and a fifth
`lens L5 that has a negative refractive power and has at least one inflection
`point on an image side surface. See Ex. 1005, 2:4–13. Figure 6 of Ogino is
`reproduced below.
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`Figure 6 is a lens cross-sectional view illustrating a configuration example of
`an imaging lens according to an embodiment of the invention. See id. at
`4:9–11.
`
`Independent Claim 1
`2.
`“A lens assembly, comprising: a plurality of refractive lens
`elements arranged along an optical axis with a first lens
`element on an object side”
`Petitioner contends Ogino discloses “a fixed-focus imaging lens that
`forms an optical image of a subject on an imaging device.” Pet. 19 (quoting
`Ex. 1005, 1:7–8). Petitioner points primarily to Ogino’s Example 6, shown
`in Figure 6 reproduced above, which includes lenses L1 to L5 arranged
`along optical axis Z1, in order from an object side. Id. at 14–15, 19 (citing
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`20
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`Ex. 1005, Fig. 6, 13:3–9; Ex. 1003, 26, 28–29). Citing several passages of
`Ogino spanning columns 7 through 9, Petitioner further contends that, “[a]s
`shown in Fig. 6, Ogino teaches that each lens L1 to L5 is a refractive lens.”
`Id. at 21 (citing in part Ex. 1003, 27).
`Ogino’s first lens L1 is disclosed as having positive refracti
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