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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`APPLE INC.,
`Petitioner,
`
`v.
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`COREPHOTONICS, LTD.,
`Patent Owner
`
`_____________________
`
`
`IPR2019-00030
`Patent No. 9,857,568
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`_____________________
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`PETITIONER’S REPLY
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`Petitioner’s Reply
`IPR2019-00030 (Patent No. 9,857,568)
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`I.
`II.
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`B.
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`C.
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`D.
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`B.
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`C.
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`Level of Ordinary Skill in the Art ................................................................... 1
`A.
`The level of ordinary skill in this case addresses additional
`disclosure in the ’568 patent. ................................................................. 1
`Dr. Moore’s deposition
`testimony contradicts his
`declaration testimony and should not be given any weight.
` ............................................................................................................... 2
`Beich (Ex. 1020) confirms that the knowledge of a
`POSITA would have included lens manufacturing issues. ................... 4
`Patent Owner’s evidence confirms that a POSITA’s
`experience would have included lens manufacturing. .......................... 4
`III. Claim Construction: Total Track Length (“TTL”) .......................................... 6
`A.
`Petitioner’s construction of “TTL” is the broadest
`reasonable. ............................................................................................. 6
`Patent Owner’s construction of “TTL” is not supported by
`intrinsic evidence. .................................................................................. 7
`Patent Owner’s reliance on Kingslake (Ex. 2024) to
`redefine “image plane” contradicts the specification of the
`’568 patent. ..........................................................................................10
`IV. Claims 1-5 are obvious in view of Ogino’s Example 6
`embodiment. ..................................................................................................14
`A. Ogino discloses a TTL/EFL ratio of less than 1.0. .............................14
`1.
`Ogino’s Example 6 embodiment has a TTL/EFL
`ratio of less than 1.0 when the optional cover glass
`is removed. ................................................................................15
`Ogino explicitly discloses that the cover glass
`element the Example 6 embodiment is optional. ......................19
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`2.
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`Petitioner’s Reply
`IPR2019-00030 (Patent No. 9,857,568)
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`Ogino Discloses a Lens Assembly with L11/L1e < 4. ........................21
`B.
`Claims 1-5 are obvious in view of Ogino’s Example 6
`embodiment and the teachings of Beich. .......................................................24
`VI. Conclusion .....................................................................................................27
`VII. Certificate of Word Count .............................................................................28
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`V.
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`Petitioner’s Reply
`IPR2019-00030 (Patent No. 9,857,568)
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` PETITIONER’S EXHIBIT LIST
`Updated: August 15, 2019
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`Ex. 1001 U.S. Patent No. 9,402,568
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`Ex. 1002
`
`Prosecution History of U.S. Patent No. 9,402,568
`
`Ex. 1003 Declaration of José Sasián, Ph.D., under 37 C.F.R. § 1.68
`Ex. 1004 Curriculum Vitae of José Sasián
`
`Ex. 1005 U.S. Patent No. 9,128,267 to Ogino et al. (“Ogino”)
`
`Ex. 1006 Warren J. Smith, MODERN LENS DESIGN (1992) (“Smith”)
`Ex. 1007 U.S. Patent No. 7,918,398 to Li et al. (“Li”)
`
`Ex. 1008 U.S. Patent No. 7,777,972 to Chen et al. (“Chen”)
`
`Ex. 1009 U.S. Patent No. 8,233,224 to Chen (“Chen II”)
`Ex. 1010 Max Born et al., PRINCIPLES OF OPTICS, 6th Ed. (1980) (“Born”)
`
`Ex. 1011
`
`Prosecution history of U.S. Patent No. 9,128,267 to Ogino
`
`Ex. 1012
`
`Jane Bareau et al., “The optics of miniature digital camera
`modules,” SPIE Proceedings Volume 6342, International Optical
`Design Conference 2006; 63421F (2006)
`https://doi.org/10.1117/12.692291 (“Bareau”)
`
`Ex. 1013 U.S Patent No. 3,388,956 to Eggert et al. (“Eggert”)
`Ex. 1014 Reserved
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`Ex. 1015 Reserved
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`Ex. 1016 Reserved
`Ex. 1017 U.S. Patent App. Pub. No. 2013/0077183 to An et al. (“An”)
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`Ex. 1018 Michael P. Schaub, THE DESIGN OF PLASTIC OPTICAL SYSTEMS
`(2009) (“Schaub”)
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`Ex. 1019 Optical Society of America, HANDBOOK OF OPTICS, vol. II 2nd ed.
`(1995) (“Handbook of Optics”)
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`Ex. 1020 William S. Beich et al., “Polymer Optics: A manufacturer’s
`perspective on the factors that contribute to successful programs,”
`SPIE Proceedings Volume 7788, Polymer Optics Design,
`Fabrication, and Materials; (August 12, 2010);
`https://doi.org/10.1117/12.861364 (“Beich”)
`
`Ex. 1021 Reserved
`
`Ex. 1022 Declaration of Ingrid Hsieh-Yee, Ph.D., under 37 C.F.R. § 1.68
`Ex. 1023 Course description of OPT 214 from the University of Rochester
`web site
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`Ex. 1024 Course description of OPT 244 from the University of Rochester
`web site
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`Ex. 1025 Deposition transcript of Duncan Moore, Ph.D.
`Ex. 1026 Declaration of Dr. José Sasián, Ph.D. in support of Petitioner’s
`Reply
`Ex. 1027 U.S. Patent No. 9,402,032 (“the ’032 patent”)
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`Introduction
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`I.
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`Petitioner’s Reply
`IPR2019-00030 (Patent No. 9,857,568)
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`The Petition and evidence provide detailed reasons why a person of skill in
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`the art (“POSITA”) would have understood Ogino, both alone and in combination
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`with Beich, to render obvious claims 1-5 of the ’568 patent. None of Patent
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`Owner’s arguments overcome the evidence of record and therefore do not
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`adequately refute the Petition. The Board should find the challenged claims
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`unpatentable in the final written decision.
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`II. Level of Ordinary Skill in the Art
`A. The level of ordinary skill in this case addresses additional
`disclosure in the ’568 patent.
`
`Patent Owner complains that the level of ordinary skill set forth in the
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`Petition differs slightly from the level presented in IPR2018-01140, challenging
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`related U.S. Patent No. 9,402,032 (“the ’032 patent”), because the level here
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`includes training or experience in lens manufacturing. This difference, though,
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`accounts for disclosures in the ’568 patent not appearing in the ’032 patent that
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`describe lens diameter and thickness relationships that impact lens manufacturing.
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`One such exclusive disclosure states that:
`
`Advantageously, the present inventors have succeeded in
`designing the first lens element to have a Lll/Lle ratio
`smaller than 4, smaller than 3.5, smaller than 3.2, smaller
`than 3.1 (respectively 3.01 for element 102 and 3.08 for
`element 302) and even smaller than 3.0 (2.916 for element
`1
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`Petitioner’s Reply
`IPR2019-00030 (Patent No. 9,857,568)
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`202). The significant reduction in the L11/L1e ratio
`improves the manufacturability and increases the
`quality of lens assemblies disclosed herein.
`
`
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`
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`Ex. 1001, 2:38-45 (emphasis added). Each claim also states a limitation directed to
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`lens thickness ratios. See Ex. 1001, 8:30-66. Thus, the level of ordinary skill
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`established by Dr. Sasián in this case is correct because it properly addresses the
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`additional disclosures in the ’568 patent related to lens manufacturing.
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`Patent Owner argues that manufacturing experience “does not accord with
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`the experience of those of ordinary skill in the field” of lens design. Response at
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`15. But the ’568 patent alone does not support Patent Owner’s arguments.
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`B. Dr. Moore’s deposition testimony contradicts his declaration
`testimony and should not be given any weight.
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`Patent Owner relies on Dr. Moore’s conclusion that “[a] POSITA would not
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`necessarily have had any experience in manufacturing lenses or optical systems.”
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`Response at 14 (citing Ex. 2005 ¶¶ 15-20). This conclusion does not withstand
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`scrutiny because Dr. Moore contradicted himself during deposition by admitting
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`that a POSITA, as distinguished from a mere student, would have had experience
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`in lens manufacturing:
`
`Q. Is it important to consider manufacturing issues
`when developing a lens design?
`A. If you’re actually going to go into production,
`yes. As a student, they don't consider manufacturing
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`IPR2019-00030 (Patent No. 9,857,568)
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`issues. They just want to get a solution by the end of the
`semester, and they pay no attention—most of them pay no
`attention to the manufacturability of the lens. But those
`people who make lenses for commercial purpose care
`a lot about manufacturing issues.
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`
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`Ex. 1025, 60:2-11 (emphasis added).
`
`Indeed, Dr. Moore further testified that a POSITA would have spent a good
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`deal of time considering issues like lens manufacturing tolerances:
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`Q. Is a five-lens system considered a complicated
`
`lens?
`
`A. It's pretty complicated with that many aspheres.
`And the whole issue of manufacturability is an
`important one. So when you think about all these
`parameters that are there, you can determine the
`manufacturing tolerances of all of them. So when you
`get the design done, you might spend more time on
`figuring what the tolerances are than you spent on
`doing the design. Because you'll want to be working with
`whoever's going to be the manufacturer to say can we do
`this or this or this. So I've seen that. The tolerancing can
`take a lot longer than the design itself.
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`Ex. 1025, 102:18-103:11. Thus, Dr. Moore’s declaration lacks credibility and
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`should not be given any weight.
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`C. Beich (Ex. 1020) confirms that the knowledge of a POSITA would
`have included lens manufacturing issues.
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`
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`Patent Owner cites Beich (Ex. 1020) to support its argument that the work of
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`lens design and lens manufacturing was “disjointed.” See Response at 16. But
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`Patent Owner’s reliance on Beich is misplaced. Beich identifies issues that arose
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`between lens design and manufacturing in 2010 and then specifically offers some
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`“best practices when working with a polymer optics manufacturer” (Ex. 1020, p.2)
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`to address these issues. These best practices were therefore well within the
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`knowledge of a POSITA as early as 2010. Custom Accessories v. Jeffrey-Allan
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`Industries, 807 F.2d 955, 962 (Fed. Cir. 1986) (“The person of ordinary skill is a
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`hypothetical person who is presumed to be aware of all the pertinent prior art.”).
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`Beich therefore does not reveal a disconnect between lens design and lens
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`manufacturing as of the priority date of the ’568 patent in 2017. Instead, Beich is
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`evidence of the opposite: that a POSITA as early as 2010 would have understood
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`and implemented best practices when designing lenses for manufacturability (e.g.,
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`maintaining a low center-to-edge thickness ratio). Consequently, Patent Owner’s
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`reliance on Beich for showing some disconnect between lens designing and lens
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`manufacturing is not supported by the evidence.
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`D.
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`Patent Owner’s evidence confirms that a POSITA’s experience
`would have included lens manufacturing.
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`Patent Owner’s own exhibit, excerpts from the book “Optical System
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`Petitioner’s Reply
`IPR2019-00030 (Patent No. 9,857,568)
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`Design” published in 2008 (Ex. 2014), offers additional evidence that a POSITA’s
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`knowledge and experience in 2017 would have included lens manufacturing. In
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`fact, the chapter entitled “The Optical Design Process” states that “[t]he optical
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`design process includes a myriad of tasks that the designer must perform and
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`consider in the process of optimizing the performance of an imaging optical
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`system” including to “[a]ssure that the design is manufacturable at a
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`reasonable cost based on a fabrication, assembly, and alignment tolerance
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`analysis and performance error budget.” Ex. 2014, p.4.
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`Exhibit 2014 also discusses manufacturing considerations in steps 4, 10, and
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`11 of Fig. 9.2 (entitled “Lens Design and Optimization Procedure”):
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`Ex. 2014, Fig. 9.2 (p. 9). The text in relation to this figure states that: “in a design
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`task, [] it is usually best to keep element thicknesses set to values which will be
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`viable for the manufacturer.” Ex. 2014, p.11. Thus, lens manufacturing was
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`within the knowledge of a POSITA.
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`III. Claim Construction: Total Track Length (“TTL”)
`Petitioner’s construction of “TTL” is the broadest reasonable.
`A.
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`The Petition, relying on Dr. Sasián’s expert testimony, established that the
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`proper construction of “TTL” in view of the specification of the ’568 patent is “the
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`length of the optical axis spacing between the object-side surface of the first lens
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`element and the image plane.” Petition at 9 (emphasis added). This is the same
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`construction offered and adopted in related IPR2018-01140 and IPR2018-01146.
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`Patent Owner’s expert, Dr. Moore, agreed that this definition is included in
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`the broadest reasonable construction:
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`Q. But if we're just looking for the broadest
`construction of TTL that is reasonable—
`MR. RUBIN: Objection, form.
`Q. —would Dr. Sasian's construction of TTL be
`included in that broadest reasonable construction?
`MR. RUBIN: Objection, form.
`A. I think so.
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`Ex. 1025, 69:15-21 (emphasis added).
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`Dr. Moore also agreed that “TTL” was known in the art before electronic
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`sensors and was used to define the distance to the image plane:
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`Q. So if a person of ordinary skill in the art was
`developing a lens system for a camera, would they
`understand that total track length is the length along the
`optical axis from the object side surface of the first
`element to the image plane?
`A. For a camera? You mean like a film camera?
`Q. Mm-hmm.
`A. It would be to the film.
`…
`Q. A person of ordinary skill in the art would
`understand the film as an image plane; correct?
`A. In, yes, the old days that was—the image plane
`was where the film was placed.
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`Ex. 1025, 68:9-25. Thus, the definition of “TTL” presented in the Petition should
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`be adopted because it is not only the broadest reasonable construction (which
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`Patent Owner does not dispute), but it is also consistent with the plain and ordinary
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`meaning used by POSITAs even prior to electronic sensors.
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`B.
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`Patent Owner’s construction of “TTL” is not supported by
`intrinsic evidence.
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`Patent Owner argues for a narrower construction of “TTL” by requiring an
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`electronic sensor:
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`Patent Owner
`“the length of on optical axis between
`the object-side surface of the first lens
`element and the electronic sensor.”
`Response at 15 (emphasis added)
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`Petitioner
`“the length of on optical axis between
`the object-side surface of the first lens
`element and the image plane.”
`Petition at 9 (emphasis added)
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`Requiring an electronic sensor is incorrect because it imports a limitation from the
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`specification and it is not supported by the intrinsic evidence, as discussed below.
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`Liebel-Flarsheim Company v. Medrad, Inc., 358 F. 3d 898, 904 (Fed. Cir. 2004)
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`(“[I]t is improper to read a limitation from the specification into the claims.”);
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`Vitronics Corp. v. Conceptronic, Inc., 90 F. 3d 1576, 1582 (Fed. Cir. 1996)
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`(“intrinsic evidence is the most significant source of the legally operative meaning
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`of disputed claim language”);
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`First, Patent Owner relies on a supposedly “express” definition for “TTL” in
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`the Summary section of the ’568 patent which states that: “the total track length on
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`an optical axis between the object-side surface of the first lens element and the
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`electronic sensor is marked ‘TTL’.” Ex. 1001, 2:2-4. But this is not an express
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`definition. To qualify as an express definition, the specification must “‘clearly set
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`forth a definition of the disputed claim term’ other than its plain and ordinary
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`meaning” and “must ‘clearly express an intent’ to redefine the term.” Thorner v.
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`Sony Computer Entm’t Am. LLC, 669 F. 3d 1362, 1365 (Fed. Cir. 2012) (quoting
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`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) and
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`Petitioner’s Reply
`IPR2019-00030 (Patent No. 9,857,568)
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`Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir.
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`2008)).
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`The specification fails on both counts because it neither clearly expresses a
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`definition contrary to the plain and ordinary meaning where “TTL” is measured to
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`an image plane and it does not clearly express an intent to redefine “TTL” to
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`require an electronic sensor. Rather, the specification measures “TTL” for each
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`embodiment to the image plane. See Ex. 1001, 3:40-42 (“an image plane 114 for
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`image formation of an object”), 5:64-65 (“an image plane 214 for image formation
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`of an object”), 7:21-22 (“an image plane 314 for image formation of an object”).
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`The single mention of an electronic sensor is in reference to Fig. 1A where “an
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`image sensor (not shown) is disposed at image plane 114 for the image formation.”
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`Ex. 1001, 3:40-42 (emphasis added). Thus, the intrinsic evidence describing each
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`embodiment defines “TTL” to the image plane, not necessarily to an electronic
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`sensor. This is consistent with the plain and ordinary meaning established even
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`before the use of electronic sensors. Ex. 1025, 68:9-25.
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`Patent Owner also points to U.S. Patent No. 8,395,851 (Ex. 2007) as
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`intrinsic evidence (because it is cited in the specification) supporting its
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`construction of “TTL.” See Response at 21-22. But this is reference also
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`contradicts the ’568 patent because, as discussed above, the embodiments in the
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`’568 patent (e.g., Figs. 1A, 2A, and 3A) all define “TTL” to the image plane.
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`C.
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`Petitioner’s Reply
`IPR2019-00030 (Patent No. 9,857,568)
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`Patent Owner’s reliance on Kingslake (Ex. 2024) to redefine
`“image plane” contradicts the specification of the ’568 patent.
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`Patent Owner argues that the term “image plane” “is subject to multiple
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`definitions whose differences materially affect the scope of the ’568 patent’s
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`claims.” Response at 22 (citing Ex. 2005 ¶ 66). The following text from Kingslake
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`(Ex. 2024) is offered in support:
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`According to Patent Owner, “Kingslake provides that ‘image plane’ may mean at
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`least two different concepts: the ‘ideal image plane,’ also known as the Gaussian
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`image or paraxial image plane; and the actual ‘image plane’ comprising the surface
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`at which an image may be formed (i.e., captured).” Response at 23 (quoting Ex.
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`2005 ¶ 66).
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`Based on this extrinsic evidence and Dr. Moore’s opinion, Patent Owner
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`believes that the term “image plane” in the ’568 patent would have been
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`ambiguous. See Response at 28-29. This is incorrect. Ex. 1026 ¶ 3. First, Dr.
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`Moore acknowledged in his declaration (by citing to Dr. Sasian’s book) that the
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`ideal image plane and the actual image plane may be in the same location. Ex.
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`2005 ¶ 70 (“the calculation by design arrives at a theoretical ‘ideal’ plane
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`representing where the physical image plane could potentially be located.”), ¶ 72
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`Petitioner’s Reply
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`(“In an actual lens system, the image may be ‘observed’ somewhere other than the
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`ideal image plane.”). This alone contradicts Dr. Moore’s conclusion that ambiguity
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`exists because the “ideal image plane” and the “actual” or “physical image plane”
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`are mutually exclusive concepts. Ex. 1026 ¶ 3; see Ex. 2005 ¶ 74.
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`Second, the ’568 patent provides lens prescription tables that specify the
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`structure of each disclosed embodiment. See, e.g., Ex. 1001, 4:33-49. Lens
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`prescription tables are a well-established and standard way in lens design to
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`specify the structure of lenses and their imaging, and not the structure of sensors
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`since no sensor structure or location data is shown in the lens prescription table.
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`Id.; Ex. 1026 ¶ 4. A POSITA would have thus understood that the prescription
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`tables of the ’568 patent specify the location of the image plane through the last
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`thickness/distance in the prescription table. Ex. 1026 ¶ 4. For example, as shown in
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`Table 1 of the ’568 patent below, the first embodiment specifies the image plane at
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`a distance of 0.200 mm from the last lens element and spaced from the object side
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`surface of the first lens element by a distance of 5.904 mm (see Ex. 1001, 4:33-48).
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`Defined Position of Image Plane
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`Id. (annotated). The positions of the image planes in the other embodiments are
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`similarly specified. See id., 6:5-25 (Table 3), 7:30-45 (Table 5). The locations of
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`these image planes are unambiguous because prescription tables are produced by
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`lens design software that optimizes the lens structure to provide image quality at
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`the image plane. Ex. 1026 ¶ 4. The software instead provides the location of the
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`image plane where the image quality has been optimized. Id.
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`Additionally, the specification of the ’568 patent teaches that the TTL of
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`each lens system embodiment can be determined by summing the widths of lens
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`elements and spacing between lens elements of the lens system from the object
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`side of the first lens to the image plane. Ex. 1026 ¶ 5; see, e.g., Ex. 1003, p.20;
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`Ex.1001, Table 1, Table 3, Table 5; Ex.1003, p.19. The ’568 patent also teaches
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`that “an image sensor (not shown) is disposed at image plane 114 for the image
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`formation.” Ex. 1001, 3:40-42. Therefore, the image plane and the sensor are
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`taught by the ’568 patent to be coincident. Ex. 1026 ¶ 5. Thus, there is no
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`ambiguity in the ’568 patent about where the image plane is located or that TTL is
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`measured to the image plane. Ex. 1026 ¶ 5; see Ex. 1003, pp.33-35.
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`Third, the ’568 patent teaches against focus shifts (i.e., using a defocus
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`distance as taught in Kingslake), because Figs. 1B and 2B in the ’568 patent show
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`how the image contrast (Modulus of the OTF) would be degraded if incorporating
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`a focus shift:
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`Ex. 1026 ¶ 6; Ex. 1001, Fig. 1B. As shown above, a tiny focus shift of +/- 0.01 mm
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`would lower significantly the image contrast. Ex. 1026 ¶ 7; see Ex. 1001, Fig. 1B.
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`Therefore, a POSITA would have understood that to avoid this degradation of
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`Petitioner’s Reply
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`image contrast, the image plane location and the sensor position are set and are
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`unambiguous. Ex. 1026 ¶ 7; see, e.g., Ex. 1003, p.20; Ex.1001, Table 1, Table 3,
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`Table 5; Ex.1003, p.19 (showing determined locations of image planes).
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`Fourth, the ’568 patent only uses the term “image plane.” Ex. 1026 ¶ 8; see
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`Ex. 1001, 3:41, 5:64, 7:21. It does not distinguish between or even mention an
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`“ideal image plane,” an “actual image plane,” or similar. Ex. 1026 ¶ 8. And,
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`nowhere does the ’568 patent describe using a defocus distance that offsets the
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`actual image plane from the ideal image plane because, as discussed above, the
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`’568 patent teaches against focus shifts. Id. Rather, “image plane” in light of the
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`’568 patent is just the plane “for image formation of an object.” Id.; see Ex. 1001,
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`3:41, 5:64, 7:21. Based on this, a POSITA would not have found any ambiguity in
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`the meaning of “image plane” in relation to the ’568 patent. Ex. 1026 ¶ 8.
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`IV. Claims 1-5 are obvious in view of Ogino’s Example 6 embodiment.
`A. Ogino discloses a TTL/EFL ratio of less than 1.0.
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`Patent Owner argues that claims 1-5 are not obvious over Ogino’s Example
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`6 embodiment because when the embodiment’s optional cover glass (i.e., optical
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`member CG) is included it has a TTL/EFL ratio that falls outside of less than 1.0.
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`See Response at 35-37. Patent Owner’s argument attacks a straw man and is thus
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`irrelevant because Ogino expressly teaches that the cover glass element is optional
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`and can be removed to reduce the total lens length for a telephoto system. See Ex.
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`14
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`Petitioner’s Reply
`IPR2019-00030 (Patent No. 9,857,568)
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`1005, 2:19-34, 5:66-6:2, 8:8-18, 22:10-36 (Table 11); Petition at 15-18, 25-28.
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`Even Patent Owner’s expert, Dr. Moore, agrees that the Example 6 embodiment
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`does not require a cover glass and that the embodiment meets the TTL/EFL
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`limitation when the cover glass element is removed. Ex. 1025, 56:20-57:10. Patent
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`Owner’s contention that some different embodiment may not disclose the
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`limitation, even if true, is irrelevant because the embodiment cited in the Petition
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`expressly discloses the limitation.
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`1. Ogino’s Example 6 embodiment has a TTL/EFL ratio of
`less than 1.0 when the optional cover glass is removed.
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`Ogino’s Example 6 embodiment without the optional cover glass (i.e.,
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`optical member CG) has a TTL/EFL ratio of less than 1.0. See Petition at 15-18,
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`25-28; Ex. 1003 at 27-32. This embodiment is represented in Ogino’s Table 11
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`where the total track length “TL” is listed as 4.387 mm. Ex. 1005, 22:10-36. This
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`total track length value is not “theoretical” as alleged (see Response at 21), but is
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`expressly disclosed as one of two possible implementation—one with the cover
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`glass and one without the cover glass. Ex. 1003 at 33; Ex. 2008, 92:17-93:20; Ex.
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`1005, 22:10-36.
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`The implementation without the cover glass is expressly represented in
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`Table 11 where the total lens length (“TL”) and the back focal length (“Bf”) values
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`both use air-converted values. Ex. 1005, 14:47-54 (“the back focal length Bf
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`15
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`Petitioner’s Reply
`IPR2019-00030 (Patent No. 9,857,568)
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`indicates an air-converted value, and likewise, in the total lens length TL, the
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`back focal length portion uses an air-converted value.”). These air-converted
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`values provide TL and Bf where the cover glass element has been removed, for
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`example, “to reduce the number of components, and to reduce the total length.” Id.,
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`6:1-2. This allows the Example 6 embodiment to “have a telephoto type
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`configuration as a whole, and thus it is possible to appropriately reduce the total
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`length.” Id., 8:13-15.
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`As Patent Owner acknowledges, using Ogino’s “air-converted value”
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`removes the cover glass element from the lens system and reduces the distance to
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`the ideal image plane. See Response at 30, 38 (“The ‘air-converted value of the
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`back focal length’ is the distance from lens L5 at which the theoretical ‘ideal image
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`plane’ would be located if there were no refractive elements (such as the CG)
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`beyond lens L5.”). Patent Owner, however, argues that: “The location of the
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`physical image plane (i.e., the electronic sensor), may differ from the ‘ideal image
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`plane.’” Response at 38-40 (emphasis added). This is inconsistent with Ogino.
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`First, as discussed in detail above, the cover glass in Ogino is optional and
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`Ogino defines the total length of the Example 6 embodiment (TL=4.387 mm)
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`without the cover glass. See Ex. 1005, 2:19-34, 5:66-6:2, 8:8-18, 22:10-36 (Table
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`11). This implementation is modeled below, where the total lens length (i.e., total
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`axial length) has been calculated (4.38671 mm) consistent with Ogino’s disclosure:
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`16
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`Petitioner’s Reply
`IPR2019-00030 (Patent No. 9,857,568)
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`Ex. 1026 ¶ 9; see also Ex. 1005, Fig. 6, Table 11.
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`Second, Ogino states that removing the cover glass is beneficial for reducing
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`the total lens length, thereby providing a telephoto system. See Ex. 1005, Fig. 6,
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`Table 11. And third, Ogino teaches that the image sensor is placed at the image
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`plane (see id., 5:42-44), not some other location separated from the image plane by
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`a defocus distance. Thus, when the cover glass is removed from the Example 6
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`embodiment, the image plane is defined by the back focal length, the total track
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`length would be reduced to 4.387 mm, and the image sensor would be shifted with
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`Petitioner’s Reply
`IPR2019-00030 (Patent No. 9,857,568)
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`the image plane to facilitate a reduced total lens length. Ex. 1026 ¶ 6; see, e.g., Ex.
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`1025, 72:14-22 (“A. Well, if [cover glass] 112 is removed, the [image] plane 114
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`will be shifted to the left.”).
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`Patent Owner’s expert, Dr. Moore, agrees that the total length of Ogino’s
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`Example 6 embodiment with the cover glass removed would use the back focal
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`length value to define the image plane:
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`Q. The BF is the -- well, let me ask you this: What
`is BF in Ogino?
`A. I'll have to look in Ogino. Normally the BF is the
`back focal length. So the question is is the back focal
`length with or without the cover slip—or cover glass. And
`right now I'm confused on that point.
`Q. Okay. Well, let's look at Ogino. I'll help you out
`and move you to column 14, line 50.
`A. Sorry. Column which one?
`Q. Column 14, line 50.
`A. So it's with the—it's an air-converted value.
`Q. Okay. Then turning back to page 30 of Exhibit
`1003, Dr. Sasian's declaration, if the cover glass of Ogino
`is removed, do you agree with Dr. Sasian's calculations
`on page 30?
`A. If the cover glass is removed, that is—that
`definition is—that equation is correct. If the cover glass
`is removed.
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`18
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`Ex. 1025, 135:5-24.
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`Petitioner’s Reply
`IPR2019-00030 (Patent No. 9,857,568)
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`Dr. Moore also agrees that the Example 6 embodiment without the cover
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`glass meets the claimed TTL/EFL ratio:
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`Q. Just so we have a clear record, if the cover glass
`of Ogino is removed, is the ratio of TTL over EFL less
`than 1?
`MR. RUBIN: Objection, form.
`A. If the cover glass is removed, that is correct.
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`Ex. 1025, 78:12-17.
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`Thus, there is no dispute that Ogino’s Example 6 embodiment without the
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`optional cover glass discloses the TTL/EFL ratio recited in the claims.
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`2. Ogino explicitly discloses that the cover glass element the
`Example 6 embodiment is optional.
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`Despite Ogino’s Table 11 explicitly describing the Example 6 embodiment
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`without the cover glass, Patent Owner argues that the cover glass is necessary and
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`even “a mission critical-component.” See Response at 35-37, 44. Patent Owner
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`acknowledges Ogino teaching the cover glass being optional but argues that the
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`teaching “does not refer or relate to Example 6 specifically.” Id. at 36. Rather,
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`Patent Owner argues that “a POSITA would not understand Ogino as disclosing a
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`modification of, specifically, Example 6 to remove the CG element” (id. at 37);
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`that “the CG element is necessary to provide some protection for the sensor” (id. at
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`Petitioner’s Reply
`IPR2019-00030 (Patent No. 9,857,568)
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`46); and that “Ogino makes clear that, if removed, the CG element would need to
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`be replaced with something else” (id. at 45).
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`The evidence does not support these assertions. First, Patent Owner
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`mistakenly focuses on Ogino’s general disclosure that a cover glass is optional and
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`ignores the data in Table 11 explicitly removing the cover glass from the Example
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`6 embodiment. See Ex. 1005, 22:10-36. Second, the ’568 patent likewise teaches
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`that a cover glass (i.e., “glass window”) is optional for each embodiment. See Ex.
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`1001, 3:37-38 (“optical lens system further comprises an optional glass window
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`112”), 5:62-63 (“optional glass window 212”), 7:18-19 (“optional glass window
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`312”); Ex. 1025, 72:6-13 (Dr. Moore admitting CG is optional in the ’568 patent).
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`Third, Dr. Moore admitted in deposition that cover glass is not considered in the
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`TTL measurement when removed:
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`Q. I just want to make sure. Are you saying that you
`cannot have a TTL element if there is no cover glass?
`A. No. You can have a TTL measurement.
`Q. So cover glass isn’t required for a TTL
`element unless it’s present in the system; correct?
`A. If it’s not present, then it doesn’t count.
`Q. But you still can have a TTL measurement;
`correct?
`A. Yes, you can.
`Q. … If cover glass is not present in a lens system,
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`20
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`Petitioner’s Reply
`IPR2019-00030 (Patent No. 9,857,568)
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`it need not be counted in the TTL measurement;
`correct?
`A. That’s correct.
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`Ex. 1025, 70:6-21 (emphasis added).
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`B. Ogino Discloses a Lens Assembly with L11/L1e < 4.
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`Patent Owner argues that nothing in Ogino teaches a first lens element
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`having a ratio of L11/L1e < 4. Response at 48-51. To support this argument, Patent
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`Owner merely stat