Trials@uspto.gov
`571-272-7822
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`
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`Paper No. 9
`
`Entered: April 16, 2019
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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 IPR2019-00030
`Patent 9,857,568 B2
`____________
`
`
`
`Before MARC S. HOFF, BRYAN MOORE, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`ULLAGADDI, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`Paper No. 9
`
`Entered: April 16, 2019
`
`
`
`
`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 B2
`____________
`
`
`
`Before MARC S. HOFF, BRYAN MOORE, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`ULLAGADDI, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2019-00030
`Patent 9,857,568 B2
`
`
`I.
`INTRODUCTION
`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.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless it is determined that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least one of the claims challenged in the
`petition. Based on the information presented in the Petition and the
`supporting evidence, we are persuaded that there is a reasonable likelihood
`Petitioner would prevail with respect to at least one of the challenged claims.
`Accordingly, we institute an inter partes review of claims 1–5 on all of the
`grounds set forth in the petition.
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far. This is not a final
`decision as to patentability of the challenged claims.
`II.
`BACKGROUND
`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.
`B.
`The ’568 Patent (Ex. 1001)
`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, [45], [22], [63]. The ’568 patent
`concerns an optical lens assembly with five lens elements. Id. at [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.
`In order from an object side to an image side, optical lens assembly
`100 comprises: optional stop 101; first plastic lens element 102 with positive
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`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,
`[T]he distances between various elements (and/or surfaces) are
`marked “Lmn” (where m refers to the lens element number, n=1
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`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
`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.
`C.
`Challenged Claims
`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.
`
`Proposed Grounds of Unpatentability
`D.
`Petitioner advances the following challenges supported by the
`declaration of Dr. José Sasián (Ex. 1003).
`Reference(s)
`U.S. Patent No. 9,128,267 to Ogino et al.
`(“Ogino,” Ex. 1005)
`
`Basis Claims Challenged
`§ 103 1–5
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`Reference(s)
`Ogino and “Polymer Optics: A
`Manufacturer’s Perspective on the Factors
`that Contribute to Successful Programs” to
`Beich et al. (“Beich,” Ex. 1020)
`
`
`
`Basis Claims Challenged
`§ 103 1–5
`
`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.
`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).
`
`
`1 The Final Rule changing the claim construction standard in IPR
`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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`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 for our analysis on
`whether to institute a trial. See, e.g., Nidec Motor Corp. 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.” We further
`direct the parties to address fully the meaning of these terms at trial.
`1.
`Effective Focal Length (EFL)
`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 Li (Ex. 1007), which states that
`“[t]he focal length of a lens assembly [is] also referred to as the effective
`focal length[.]” Pet. 11 (quoting Ex. 1007, 2:59–60).
`Having reviewed the evidence of record at this stage of this
`proceeding, Petitioner persuades us that Li supports construing the term
`“effective focal length” as “the focal length of a lens assembly.” See id. at
`12. For purposes of this Decision, we construe the term “effective focal
`length” in this manner. This construction coincides with the construction of
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`the same term in the ’1140IPR (Paper 10, 10) and the ’1146IPR (Paper 8, 7–
`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 that
`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 “the 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 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).
`
`Patent Owner contends that
`
`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’.”
`Prelim. Resp. 1 (quoting Ex. 1001, 2:2–4) (emphasis omitted). Although the
`’568 patent discloses TTL with reference to an electronic sensor in column
`2, lines 2–4, 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.
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`Patent Owner does not direct us, 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. We further note that the figures of the ’568 patent
`appear to only depict the image plane, and not the electronic sensor.
` At this stage of the proceeding, Petitioner persuades us that a person
`of ordinary skill in the art at the time of the invention would have
`understood TTL to mean “the length of the optical axis spacing between the
`object-side surface of the first lens element and the image plane,” and we
`construe this term accordingly. This construction is consistent with the ’568
`patent in which the TTL of each lens system embodiment can be obtained by
`summing the disclosed widths of lens elements and spacing between lens
`elements. See Ex. 1001, Tables 1, 3, and 5.
`This construction coincides with the construction of the same term in
`the ’1140IPR (Paper 10, 10–11) and the ’1146IPR (Paper 8, 8).
`B.
`Principles of Law
`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).
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`“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
`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.
`C. 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, at this stage of the proceeding, that the evidence supports
`Petitioner’s arguments and Dr. Sasián’s testimony and thus, establishes a
`reasonable likelihood of prevailing with respect to this ground.
`1.
`Overview of Ogino
`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
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`Patent 9,857,568 B2
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`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 object 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.
`
`
`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.
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`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
`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 refractive power. Ex. 1005, 9:11. Second lens L2 is
`characterized as having “refractive power.” Id. at 9:32. Third lens L3 is
`disclosed as having “negative refractive power in the vicinity of the optical
`axis.” Id. at 7:60–62. Fourth lens L4 is disclosed as having “positive
`refractive power.” Id. at 7:67. Fifth lens L5 is disclosed as having “negative
`refractive power.” Id. at 8:8.
`“wherein at least one surface of at least one of the plurality of
`lens elements is aspheric”
`Petitioner contends Ogino discloses this limitation because it states
`that “[i]n the imaging lenses according to Examples 1 to 6, both surfaces of
`each of the first to fifth lenses L1 to L5 are aspheric.” Pet. 22–23 (quoting
`Ex.1005, 15:22–24, Table 11).
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`“wherein the lens assembly has an effective focal length
`(EFL)”
`As discussed above in Section II.A.1, we construe EFL as “the focal
`length of a lens assembly.” Petitioner contends that “Ogino teaches for each
`of its embodiments, that ‘f is a focal length of a whole system.’” Id. at 24
`(quoting Ex. 1005, 3:16) (citing Ex.1003, 30–31). In Table 11, Ogino
`discloses that the focal length f of the entire lens system of Example 6 is
`provided in Table 11 as f = 4.428 mm. Id. (quoting Ex. 1005, Table 11)
`(citing Ex. 1005, 14:47–53). Table 11 of Ogino is reproduced below.
`
`
`Table 11 of Ogino discloses optical parameters for the lens assembly of
`Example 6, which is depicted in Figure 6.
`“a total track length (TTL) of 6.5 millimeters or less and a ratio
`TTL/EFL of less than 1.0”
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`As discussed above in Section II.A.2, we construe TTL as “the on-
`axis spacing between the object-side surface of the first lens element and the
`image plane.” Petitioner contends that a person of ordinary skill in the art
`“would identify the total track length of Ogino’s Example 6 lens apparatus
`to be the distance between the object-side surface of the first lens L1 and the
`image plane 100 (R14).” Pet. 25 (citing Ex. 1005, Fig. 6; Ex.1003, 32).
`As noted by Petitioner, Ogino explicitly discloses that optical member
`CG depicted in Figure 6 may be omitted in order to “reduce the number of
`components, and to reduce the total length.” Id. at 26 (citing Ex. 1005,
`5:65–6:2). According to Petitioner, “[o]mitting optical member CG in this
`way, the total track length can be calculated by summing the widths of D2 to
`D10 and the air-converted value of back focal length Bf, as provided in
`Ogino Table 11.” Id. at 27 (quoting Table 11). The sum of widths D2 to
`D10 and Bf results in a TTL of 4.387, which is the value depicted in Table
`11 of Ogino. Ex. 1005, Table 11; see Pet. 28 (citing in part Ex. 1003, 34–
`35).
`
`With Ogino disclosing a TTL of 4.387 and an EFL of 4.428, Ogino
`also discloses a ratio of TTL/EFL of 0.9907, which is less than 1.0. See Pet.
`28–29.
`Despite Ogino’s explicit disclosure that “an effect similar to the
`optical member CG may be given to the fifth lens L5 or the like by applying
`a coating to the fifth lens L5 or the like without using the optical member
`CG” (Ex. 1005, 5:65–6:1), Patent Owner contends that Petitioner “relies on
`modifying Example 6 to remove one of its optical elements, ‘CG’” and “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
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`satisfy the claim requirements).” Prelim. Resp. 2. Patent Owner
`acknowledges that Ogino discloses “an ‘optional’ CG,” but argues that “it is
`not connected to any particular embodiment,” and that “Ogino provides no
`disclosure as to what a potential modified Example 6 would look like or how
`it would perform—either in the cited portion or elsewhere.” Id. at 19.
`However, “the test for obviousness is not . . . that the claimed invention must
`be expressly suggested in any one or all of the references . . . [r]ather, the
`test is what the combined teachings of the references would have suggested
`to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
`1981).
`Petitioner also contends Ogino’s disclosure that “the imaging lens can
`be more appropriately made to have a telephoto type configuration” and that
`thus, “A POSITA would recognize that the telephoto type configuration of
`Ogino’s Example 6 lens assembly means that its TTL is less than the EFL
`resulting in a ratio less than one.” Pet. 28–29 (citing Ex. 1005, 8:12–14;
`Ex.1003, 35). Despite Ogino’s explicit disclosure, Patent Owner contends
`that “Ogino does not assert that it teaches lens systems that are, in fact,
`telephoto,” (see Prelim. Resp. 20–22). For reasons similar to those set forth
`above, we do not agree with Patent Owner’s contention.
` “a F number smaller than 3.2”
`According to Petitioner, Figure 13 of Ogino depicts “optical data for
`the lens system of Example 6, including the Fno of 2.64,” which is less than
`3.2. Pet. 29 (citing Ex.1003, 36; Ex.1005, Fig. 13). Ogino explicitly
`discloses that “Fno. indicates an F-number” with respect to Figure 13. Id. at
`30 (citing Ex.1005, 15:44–48).
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`“a ratio between a largest optical axis thickness L11 and a
`circumferential edge thickness L1e of the first lens element of
`L11/L1e<4”
`Petitioner cites Table 11 of Ogino as disclosing that the optical axis
`thickness L11 of the first lens element L1 is 0.557 mm, and that this
`disclosure teaches the claimed “L11.” Pet. 30–31 (Ex. 1005, Table 11).
`Petitioner contends that the ordinarily skilled artisan would have understood
`that the claimed “L1e” (i.e., the flat circumferential edge of the first lens
`element) is calculated based on
`
`[T]he aspheric surface profile (Z) of the object-side and image-
`side lens surfaces[,] [which] can be determined at any point on
`the surfaces using the standard sag equation:
`
`(cid:1829) (cid:3401)(cid:1860)(cid:2870)
`1(cid:3397)√1 –(cid:1837)(cid:1827) (cid:3401)(cid:1829)(cid:2870)(cid:1860)(cid:2870)(cid:3397)Ʃ (cid:1827)(cid:1861)(cid:3401) (cid:1860)(cid:3036)
`
`(cid:1852)(cid:3404)
`
`where, “Z is a depth of the aspheric surface (mm), h is a distance
`(height) from the optical axis to the lens surface (mm), C is a
`paraxial curvature=1/R (R: a paraxial radius of curvature), Ai is
`an i-th order aspheric surface coefficient (i is an integer equal to
`or greater than 3), and KA is an aspheric surface coefficient.”
`Pet. 31–32 (citing Ex.1003, 37–38; Ex.1005, 15:1–18; Ex.1018, 96).
`Petitioner further contends that “[t]he Z value therefore depends on
`the distance h from the optical,” and that “[a]s is readily apparent to a
`POSITA, the Z values for the object-side and image-side surfaces can be
`calculated when the h variable is set to the radius of the lens element.” Pet.
`32 (citing Ex.1003, 39). According to Petitioner,
`[T]he circumferential edge thickness of the first lens element of
`Ogino’s Example 6 can be determined using the lens’s thickness
`at the optical axis and the Z values at the edge, for both the
`object-side and image-side surfaces. To calculate the Z values for
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`these surfaces, the equation requires the radius of curvature (R),
`the aspheric coefficients (Ai and KA), and the diameter of the
`lens element (half of which is the h variable) for each surface.
`These values are provided by Ogino.
`Specifically, for determining edge thickness by calculating the Z
`value of the object-side and image-side surfaces of the first lens
`element, Ogino provides the radius of curvatures (R) in rows 2
`(object-side) and 3 (image-side) of Table 11 and aspheric surface
`coefficients (KA and Ai) in rows 1 (object-side) and 2 (image-
`side) of Table 12.
`Id. at 32–33 (citing Ex. 1003, 39–41, Ex. 1005, Table 11, Table 12) (internal
`citations omitted) (emphasis added).
`Petitioner acknowledges that Ogino does not explicitly disclose the
`diameter of the lens element, D, but contends that this value can be
`calculated based on the diameter of the entrance pupil of the lens system,
`which is in turn calculated based on the following equation:
`
`(cid:1858)(cid:1866)(cid:1867).(cid:3404)(cid:1858)(cid:1830)
`
`Pet. 33 (citing Ex. 1003, 41; Ex. 1010, 187). Based on the disclosed values
`for focal length and f number in Ogino, Petitioner calculates a diameter, D,
`of 1.6773 mm, and in turn, a Z1 (sag) value for the object-side surface
`(.3087) and a Z2 value for image-side surface (-0.0284) at the minimum
`usable edge of the first lens element. Pet. 35–36 (citing Ex. 1003, 42; Ex.
`1005, 15:1–3). Petitioner calculates the claimed “L1e” based on the
`following equation:
`
`(cid:1838)1(cid:1857)(cid:3404)(cid:1852)(cid:2870)(cid:3398)(cid:1852)(cid:2869)(cid:3397)(cid:1838)11
`
`to yield a value of 0.2199, thus satisfying the inequality recited in claim 1.
`Id. at 36.
`
`17
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`IPR2019-00030
`Patent 9,857,568 B2
`
`Petitioner contends that, although “Ogino does not specify a first lens
`
`diameter, “a POSITA would have recognized that it would have been a
`design need and choice for the lens designer working with the manufacturer,
`based on considerations such as those described above.” Pet. 43 (citing
`Ex.1003, 49). Relying on the testimony of Dr. Sasián and other evidence,
`Petitioner presents several arguments about considerations the ordinarily
`skilled artisan would have taken into account in determining the lens
`diameter, D, and edge thickness, L1e, of a lens element on pages 37 through
`45 of the Petition.
`In particular, Petitioner quotes the Handbook of Optics (Ex. 1019), as
`stating that “it is good policy to avoid element forms wherein the center-to-
`edge thickness ratio exceeds three for positive elements.” Pet. 41 (quoting
`Ex. 1019, 34.15) (citing Ex. 1018, 92) (emphasis omitted). Petitioner
`contends that the person of ordinary skill in the art would have understood
`that, “[t]o maintain such a center-to-edge thickness ratio for ease of
`manufacturability, the first lens element could have a lens diameter of up to
`1.75825 mm,” which Petitioner notes is a 4.8% increase over the diameter of
`the entrance pupil disclosed in Ogino. Pet. 41–42 (Ex.1003, 47–48).
`Petitioner presents calculations that show this larger lens diameter still
`satisfies the inequality recited in claim 1. Id. at 42.
`We have reviewed Petitioner’s arguments and evidence concerning
`claims 1 and we are persuaded, at this stage of the proceeding, that Petitioner
`has shown a reasonable likelihood of prevailing in demonstrating that claim
`1 is obvious in view of Ogino.
`
`18
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`IPR2019-00030
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`
`Dependent Claims 2–5
`3.
`Patent Owner does not present separate arguments for claims 2–5.
`See generally Prelim. Resp. We have reviewed Petitioner’s arguments and
`evidence concerning claims 2–5 and are persuaded, at this stage of the
`proceeding, that Petitioner has also shown a reasonable likelihood of
`prevailing in demonstrating that these claims are also obvious in view of
`Ogino. See Pet. 45–47.
`D. Obviousness over Ogino and Beich
`1.
`Overview of Beich
`Beich concerns “the process of creating state-of-the-art polymer optics
`and a review of the cost tradeoffs between design tolerances, production
`volumes, and mold cavitation.” Ex. 1020, 2. Beich discloses design
`considerations, or “rules of thumb” with respect to shape and tolerances of
`polymer-based optical devices that drive cost and manufacturability.” Id. at
`7. These considerations include such knowledge as “thicker parts take
`longer to mold than thinner parts” and “[o]ptics with extremely thick centers
`and thin edges are very challenging to mold.” Id.
`2.
`Independent Claim 1
`For the challenge based on Ogino and Beich, Petitioner relies on
`Ogino in the same manner as set forth with respect to challenge based on
`Ogino alone, except with respect to the limitation that recites “a ratio
`between a largest optical axis thickness L11 and a circumferential edge
`thickness L1e of the first lens element of L11/L1e<4.” Pet. 52–53. For this
`limitation, Petitioner relies on Beich and Ogino. Id. at 53–61.
`Petitioner argues that, although “Ogino does not discuss
`manufacturing or materials in regard to its lens elements, a POSITA would
`
`19
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`IPR2019-00030
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`
`recognize that only a few methods and materials would preferably be
`utilized to craft such small components.” Pet. 49 (citing Ex.1019, p.34.14;
`Ex.1003, 53–54). The underlying evidence discloses that injection molding
`is “the preferred polymer manufacturing technology for optical elements
`having a diameter smaller than 0.1 m and a thickness not greater than 3 cm.”
`Ex.1019, p.34.14.
`Petitioner argues that it
`[W]ould have been obvious for a POSITA to combine the
`teachings of Ogino and Beich because such a combination would
`have been nothing more than using Beich’s “rules of thumb” to
`make design choices to aid in the manufacturability of Ogino’s
`Example 6 lens assembly. Ex.1003, pp.52-53. Specifically, a
`POSITA would apply Beich’s rule of thumb regarding a
`desirable ratio of center-to-edge thickness to the Ogino Example
`6 first lens element, which would aid in selecting the lens’s
`diameter. Ex.1003, p.53. Applying Beich’s manufacturing
`considerations to Ogino in this way would yield the predictable
`result of a first lens element that functions as required and is
`easier to manufacture since it maintains a center-to-edge
`thickness ratio of less than 3.0. Ex. 1003, p.53.
`Pet. 48.
`Petitioner relies on Ogino to calculate the Z values for the lens
`element in substantially the same manner as set forth with respect to the
`challenge over Ogino alone and relies on Beich for an explicit disclosure of
`the motivation to choose certain optical design parameters. See Pet. 53–61.
`Specifically, Petitioner asserts that
`a POSITA would recognize that it would be desirable to maintain
`the circumferential edge thickness (L1e) of the first lens element
`between 0.1858 mm and 0.2199 mm— resulting in a L11/L1e
`ratio between 2.533 and 2.998—because Beich explicitly
`teaches that the ratio between a “center thickness” (e.g.,
`largest optical axis thickness L11) and an “edge thickness”
`
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`IPR2019-00030
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`
`(i.e., circumferential edge thickness L1e) should be less than
`3. Thus, Beich explicitly instructs a POSITA looking to
`manufacture Ogino’s Example 6 to make design choices that
`would result in a ratio of L11/L1e of less than 3. Ex.1003,
`p.58. A ratio of 3 is less than a ratio of 4.0, so the application of
`Beich’s rule of thumb to Ogino’s Example 6 lens assembly
`renders this limitation obvious.
`Pet. 53–54 (citing Ex.1003, p.58; Ex.1020, 7) (internal citations omitted)
`(emphasis added).
`Patent Owner does not present any arguments with respect to Beich.
`See generally Prelim. Resp. We have reviewed Petitioner’s arguments and
`evidence concerning claim 1 and are persuaded, at this stage of the
`proceeding, that Petitioner has shown a reasonable likelihood of prevailing
`in demonstrating that claim 1 is obvious in view of Ogino and Beich.
`3.
`Dependent Claims 2–5
`Patent Owner does not present separate arguments for claims 2–5.
`See generally Prelim. Resp. We have reviewed Petitioner’s arguments and
`evidence concerning claims 2–5 and are persuaded, at this stage of the
`proceeding, that Petitioner has also shown a reasonabl
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