`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`COREPHOTONICS LTD.,
`
`Patent Owner
`
`———————
`
`IPR2019-00030
`U.S. Patent No. 9,857,568
`_______________
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §312 AND 37 C.F.R. §42.104
`
`
`
`
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`TABLE OF CONTENTS
`
`I. 
`
`INTRODUCTION ........................................................................................... 1 
`
`II.  MANDATORY NOTICES ............................................................................. 1 
`
`A. 
`
`B. 
`
`C. 
`
`Real Party-in-Interest ........................................................................... 1 
`
`Related Matters ..................................................................................... 2 
`
`Lead and Back-up Counsel and Service Information .......................... 2 
`
`III.  GROUNDS FOR STANDING ........................................................................ 2 
`
`IV.  NOTE REGARDING PAGE CITATIONS AND EMPHASIS ...................... 3 
`
`V.  OVERVIEW OF THE ’568 PATENT ............................................................ 3 
`
`A. 
`
`B. 
`
`Summary of the ’568 Patent ................................................................. 3 
`
`Prosecution History .............................................................................. 8 
`
`VI.  LEVEL OF ORDINARY SKILL IN THE ART ............................................. 9 
`
`VII.  CLAIM CONSTRUCTION .......................................................................... 10 
`
`A. 
`
`B. 
`
`“Total Track Length (TTL)” .............................................................. 10 
`
`“Effective Focal Length (EFL)” ......................................................... 11 
`
`VIII.  RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF ................................................................................. 12 
`
`IX. 
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE .... 12 
`
`A. 
`
`B. 
`
`C. 
`
`Challenged Claims ............................................................................. 12 
`
`Statutory Grounds for Challenge........................................................ 12 
`
`Claims 1-5 are obvious under post-AIA 35 U.S.C. § 103 over
`Ogino. ................................................................................................. 13 
`
`ii
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`

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`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`Summary of Ogino ................................................................... 13 
`
`Claim 1 ..................................................................................... 19 
`
`Claim 2 ..................................................................................... 45 
`
`Claim 3 ..................................................................................... 46 
`
`Claim 4 ..................................................................................... 46 
`
`Claim 5 ..................................................................................... 46 
`
`D. 
`
`Claims 1-5 are obvious under post-AIA 35 U.S.C. § 103 over
`Ogino in view of Beich ...................................................................... 47 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`Summary of Beich ................................................................... 47 
`
`Reasons to combine Ogino and Beich ..................................... 48 
`
`Claim 1 ..................................................................................... 52 
`
`Claim 2 ..................................................................................... 70 
`
`Claim 3 ..................................................................................... 71 
`
`Claim 4 ..................................................................................... 71 
`
`Claim 5 ..................................................................................... 72 
`
`X. 
`
`CONCLUSION .............................................................................................. 73 
`
`CERTIFICATE OF WORD COUNT ...................................................................... 74 
`
`CERTIFICATE OF SERVICE ................................................................................ 75 
`
`
`
`
`
`iii
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`

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`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`PETITIONER’S EXHIBIT LIST
`
`October 3, 2018
`
`Ex.1001 U.S. Patent No. 9,857,568
`
`Ex.1002
`
`Prosecution History of U.S. Patent No. 9,857,568
`
`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
`
`Reserved
`
`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
`
`Reserved
`
`Ex.1014
`
`Reserved
`
`Ex.1015
`
`Reserved
`
`iv
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`Ex.1016
`
`Reserved
`
`Ex.1017 U.S. Patent App. Pub. No. 2013/0077183 to An et al. (“An”)
`
`Ex.1018 Michael P. Schaub, THE DESIGN OF PLASTIC OPTICAL SYSTEMS
`(2009) (“Schaub”)
`
`Ex.1019 Optical Society of America, HANDBOOK OF OPTICS, vol. II 2nd ed.
`(1995) (“Handbook of Optics”)
`
`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
`
`v
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 9,857,568 (“the ’568 patent,” Ex.1001) is generally directed
`
`to “[a]n optical lens assembly [that] includes five lens elements and provides a
`
`TTL/EFL<1.0.” Ex.1001, Abstract. The claims of the ’568 patent similarly recite
`
`“a plurality of refractive lens elements” with a number of limitations such as “at
`
`least one surface of at least one of the plurality of lens elements is aspheric,” “a
`
`total track length (TTL) of 6.5 millimeters or less,” and “a ratio between a largest
`
`optical axis thickness L11 and a circumferential edge thickness L1e of the first lens
`
`element of L11/L1e<4.” Ex.1001, 8:30-41. As shown in this Petition, these
`
`concepts in a lens assembly with five lens elements were known in the art before
`
`the priority date of the ’568 patent.
`
`This Petition, along with the cited evidence, demonstrates that claims 1-5
`
`(all claims) of the ’568 patent are obvious under post-AIA 35 U.S.C. § 103. Apple
`
`Inc. (“Petitioner”) therefore respectfully requests that these claims be found
`
`unpatentable and cancelled.
`
`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`
`The real party-in-interest is Apple Inc.
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`B. Related Matters
`
`As of the filing date of this Petition and to the best knowledge of the
`
`Petitioner, the ’568 patent has been asserted in Corephotonics, Ltd. v. Apple Inc.,
`
`Case No. 5-18-cv-02555 (N.D. Cal. filed Apr. 30, 2018).
`
`C. Lead and Back-up Counsel and Service Information
`
`Lead Counsel
`Michael S. Parsons
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Back-up Counsel
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Jordan Maucotel
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`
`
`Phone: (972) 739-8611
`Fax: (214) 200-0853
`michael.parsons.ipr@haynesboone.com
`USPTO Reg. No. 58,767
`
`
`Phone: (214) 651-5116
`Fax: (214) 200-0853
`andy.ehmke.ipr@haynesboone.com
`USPTO Reg. No. 50,271
`
`Phone: (972) 739-8621
`Fax: (214) 200-0853
`jordan.maucotel.ipr@haynesboone.com
`USPTO Reg. No. 69,438
`
`Please address all correspondence to lead and back-up counsel. Petitioner
`
`consents to electronic service via email.
`
`III. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’568 patent is eligible for inter partes review and
`
`that Petitioner is not barred or estopped from requesting inter partes review
`
`2
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`challenging the patent claims on the grounds identified in this Petition. Petitioner
`
`has not filed a civil action challenging the validity of any claim of the ’568 patent.
`
`IV. NOTE REGARDING PAGE CITATIONS AND EMPHASIS
`
`Petitioner’s citations to Ex.1002 and Ex.1011 use the page numbers added
`
`for compliance with 37 C.F.R. § 42.63(d)(2)(ii). Petitioner’s citations to the
`
`remaining exhibits use the page numbers in their original publication. All bold
`
`underline emphasis in any quoted material has been added.
`
`V. OVERVIEW OF THE ’568 PATENT
`A.
`
`Summary of the ’568 Patent
`
`The ’568 patent is directed to “[a]n optical lens assembly [that] includes five
`
`lens elements and provides a TTL/EFL<1.0.” Ex.1001, Abstract. The ratio of TTL
`
`(“total track length”) over EFL (“effective focal length”) being less than one
`
`indicates a telephoto lens system. See Ex.1006, p.169. According to the Applicant,
`
`the lens system in the ’568 patent is allegedly the answer to the need for good
`
`quality imaging and a small total track length. See Ex.1001, 1:33-36. The lens
`
`system in the ’568 patent includes:
`
`a first lens element with positive refractive power having a convex
`object-side surface, a second lens element with negative refractive
`power having a thickness d2 on an optical axis and separated from the
`first lens element by a first air gap, a third lens element with negative
`
`3
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`refractive power and separated from the second lens element by a
`second air gap, a fourth lens element having a positive refractive
`power and separated from the third lens element by a third air gap,
`and a fifth lens element having a negative refractive power, separated
`from the fourth lens element by a fourth air gap, the fifth lens element
`having a thickness d5 on the optical axis.
`
`Ex.1001, 1:51-62. An example of the lens system in the ’568 patent is provided
`
`below:
`
`
`
`Ex.1001, Fig. 1.
`
`The ’568 patent describes a number of embodiments, that adjust well-known
`
`parameters with respect to the lens assembly shown above. For example, one
`
`embodiment describes an F number (“F#”) of less than 3.2. Ex.1001, 2:8-9. Other
`
`4
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`claimed characteristics include the shape of the lens elements meeting certain
`
`conditions and the ratio between the optical axis thickness of the first lens element
`
`L11 and the circumferential edge thickness of the first lens element L1e being less
`
`than a certain value. See, e.g., Ex.1001, 2:1-45; 8:38-41. Figure 1 from Ogino,
`
`annotated below, shows these concepts of optical axis thickness L11 and
`
`circumferential edge thickness L1e.
`
`Optical Axis Thickness L11
`
`Circumferential Edge Thickness L1e
`
`Ex.1003, p.14; Ex.1001, Fig.1 (annotated).
`
`For each embodiment, the ’568 patent includes optical data for each lens
`
`element, such as radius of curvature (“R”) and data (i.e., aspheric coefficients) that
`
`
`
`5
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`describes the surface of each lens element. See Ex.1001, Tables 1-6. The ’568
`
`patent also includes the so-called surface “sag” equation, which is the standardized
`
`equation use for mathematically representing the surfaces of aspheric lens element.
`
`Ex.1001, 3:43-4:9; see also Ex.1018, p.96. The ’568 patent explains the sag
`
`equation as follows:
`
`Detailed optical data is given in Table 1, and the aspheric surface data
`is given in Table 2, wherein the units of the radius of curvature (R),
`lens element thickness and/or distances between elements along the
`optical axis and diameter are expressed in mm “Nd” is the refraction
`index. The equation of the aspheric surface profiles is expressed by:
`
`
`
`where r is distance from (and perpendicular to) the optical axis, k is
`the conic coefficient, c=l/R where R is the radius of curvature, and a
`are coefficients given in Table 2.
`
`Ex.1001, 3:43-4:9.
`
`Because the sag equation is used to mathematically represent each aspheric
`
`surface of a lens element, it can be used to determine the lens element’s thickness
`
`for an r value (i.e., radius from the optical axis), including the circumferential edge
`
`thickness for a specified lens diameter. Ex.1003, p.15. For the first lens element,
`
`this can be done by determining Z for the object-side and image-side surfaces at
`
`6
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`the lens’s overall radius, and then subtracting the Z values from the thickness of
`
`the lens at the optical axis. Ex.1003, p.15. This is confirmed by the ’568 patent,
`
`which notes that edge thickness can be determined using the optical data and
`
`aspheric coefficients. See Ex.1001, 5:21-23 (stating that edge thickness of the first
`
`lens element, L1e, can be determined using the optical data and aspheric
`
`coefficients for the first lens element); see also Ex.1018, p.96.
`
`As set forth in this Petition, adjusting these parameters and characteristics or
`
`the values claimed for these parameters were not new or non-obvious as of the
`
`earliest effective filing date of the ’568 patent. Ex.1003, p.16. Prior to July 4, 2013,
`
`five element lens assemblies for mobile phones were well known, including
`
`telephoto lenses. See Ex.1006, pp.169-82; Ex. 1005, Fig. 6, 1:52-56, 8:8-25. For
`
`example, Ogino (Ex.1005) teaches a similar five lens system with a TTL to EFL
`
`ratio of less than one. Ex.1003, p.16. Ogino’s lens system also includes a number
`
`of other features consistent with the ’568 patent including the shape of the lenses
`
`and the ratio between the thicknesses of the first lens on the optical axis versus the
`
`edge being less than 3.0. Ex.1003, p.16. As a result, the disclosures provided in
`
`Ogino and the other prior art discussed below renders obvious each and every
`
`element of the claims of the ’568 patent. Ex.1003, p.16.
`
`7
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`B.
`
`Prosecution History
`
`The ’568 patent issued on January 2, 2018 from U.S. Patent Application No.
`
`15/418,925 (“the ’925 application”) filed on January 30, 2017. See Ex.1001. The
`
`’568 patent is a continuation-in-part of U.S. Patent Application No. 15/170,472
`
`(“the ’472 application”) that issued as U.S. Patent No. 9,568,712. See Ex.1001.
`
`The ’472 application is a continuation of a string of applications that originate from
`
`Application No. PCT/IB2014/062465 filed on June 20, 2014, which claims the
`
`benefit of Provisional Application No. 61/842,987 filed on July 4, 2013. See
`
`Ex.1001.
`
`The ’925 application was originally filed with five claims with claim 1 being
`
`in independent form. Ex.1002, p.317. Absent the issuance of any Office Actions or
`
`other rejections, the Examiner issued a Notice of Allowance on November 8, 2017.
`
`Ex.1002, pp.234-241. In the Allowance, the Examiner recited claim 1 and stated
`
`that “[t]he prior art does not show or fairly suggest the claimed invention of a lens
`
`assembly having the claimed structure and claimed limitations.” Ex.1002, p.239.
`
`One day after the Allowance, the Applicant filed an Information Disclosure
`
`Statement (“IDS”) that the Examiner rejected because it was presented after
`
`payment of the issue fee. See Ex.1002, p.2-8. This is confirmed by the Examiner’s
`
`missing signature in the IDS. See Ex1002, p.6.
`
`8
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`As observed from the prosecution history, the prior art presented in this
`
`petition to render the claims obvious was not cited by the Examiner and thus was
`
`not used as a basis for allowing the claims.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`The level of ordinary skill in the art may be reflected by the prior art of
`
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). 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.
`
`9
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`VII. CLAIM CONSTRUCTION
`
`This Petition presents claim analysis in a manner that is consistent with a
`
`claim term’s plain and ordinary meaning in light of the specification. See 37 C.F.R.
`
`§ 42.100(b). Accordingly, claim terms are given their ordinary and accustomed
`
`meaning as would be understood by a person of ordinary skill in the art in the
`
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`
`(Fed. Cir. 2007) (citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`
`banc)). For terms not addressed below, Petitioner submits that no specific
`
`construction is necessary for this proceeding.1
`
`A.
`
`“Total Track Length (TTL)”
`
`This term is used in claim 1 which recites “wherein the lens assembly has a
`
`total track length (TTL) of 6.5 millimeters or less ….” Ex.1001, 8:34-36. In
`
`reference to this term, the specification of the ’568 patent states 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.” Ex.1001, 2:2-4. The electronic sensor or
`
`image sensor “is disposed at the image plane 114 for the image formation.”
`
`Ex.1001, 3:40-42. This is consistent with other examples in the art. For instance,
`
`Chen (Ex.1008) states that “TTL is defined as the on-axis spacing between the
`
`1 Petitioner does not concede that any term not construed herein meets the statutory
`
`requirements of 35 U.S.C. § 112.
`
`10
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`object-side surface of the first lens element and the image plane when the first lens
`
`element is positioned closest to the imaged object.” Ex.1008, 3:24-27.
`
`In the specification of the ’568 patent, the TTL of each lens system
`
`embodiment can be determined by summing the widths of lens elements and
`
`spacing between lens elements of the lens system from the object side of the first
`
`lens to the image plane. See, e.g., Ex.1001, Table 1, Table 3, Table 5; Ex.1003,
`
`p.19.
`
`Accordingly, a POSITA would find, in light of the specification, the term
`
`“total track length (TTL)” to include “the length of the optical axis spacing
`
`between the object-side surface of the first lens element and the image plane.”
`
`Ex.1003, p.19.
`
`B.
`
`“Effective Focal Length (EFL)”
`
`This term is used in claim 1 which recites “wherein the lens assembly has an
`
`effective focal length (EFL).” Ex. 1001, 8:34-36. While the specification of the
`
`’568 patent does not offer an express definition for this term, 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 (EFL).”
`
`Ex.1007, 2:59-61. This definition of EFL is also consistent with how lens design
`
`software such as Zemax computes the EFL and focal length of a lens system.
`
`Ex.1003, p.19.
`
`11
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`Accordingly, a POSITA would find, in light of the specification, the term
`
`“effective focal length (EFL)” to include “the focal length of a lens assembly.”
`
`Ex.1003, p.19.
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioner asks that the Board review the accompanying prior art and
`
`analysis, institute a trial for inter partes review of claims 1-5 (all claims) of the
`
`’568 patent, and cancel these claims as unpatentable.
`
`As explained below and in the declaration of Petitioner’s expert, Dr. José
`
`Sasián, the concepts described and claimed in the ’568 patent were not new. This
`
`Petition explains where each element of claims 1-5 is found in the prior art and
`
`why the claims would have been obvious to a person of ordinary skill in the art
`
`(“POSITA”) before the earliest claimed priority date of the ’568 patent.
`
`IX.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`A. Challenged Claims
`
`Claims 1-5 of the ’568 patent are challenged in this petition.
`
`B.
`
`Statutory Grounds for Challenge
`
`Claims 1-5 of the ’568 patent are obvious under post-AIA 35 U.S.C § 103
`
`over U.S. Patent No. 9,128,267 to Ogino (Ex.1005, “Ogino”). Ogino was filed on
`
`March 26, 2014, and issued on September 8, 2015. Ogino claims priority to
`
`12
`
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`

`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`Japanese Application No. 2013-072282 that was filed on March 29, 2013. As
`
`observed in Ogino’s file history (Ex.1011), the application was filed in English
`
`(see Ex.1011, pp.209-87) and a certified copy of the Japanese application was
`
`received by the Patent Office (see Ex.1011, pp.146-85). Accordingly, Ogino’s
`
`effective filing date under § 102(a)(2) is the filing date of the Japanese application
`
`filed on March 29, 2013. Thus, Ogino is prior art to the ’568 patent under 35
`
`U.S.C. § 102(a)(2).
`
`Claims 1-5 of the ’568 patent are obvious under post-AIA 35 U.S.C. § 103
`
`over Ogino in view of William S. Beich et al., “Polymer Optics: A manufacturer’s
`
`perspective on the factors that contribute to successful programs” (“Beich,”
`
`Ex.1020). Beich was published in 2010 and is therefore prior art to the ’568 patent
`
`under post-AIA 35 U.S.C. § 102(a)(1). See Ex.1020, p.1; Ex.1022, pp.19-23.
`
`C. Claims 1-5 are obvious under post-AIA 35 U.S.C. § 103 over
`Ogino.
`
`1.
`
`Summary of Ogino
`
`Similar to the lens system described in the ’568 patent, Ogino discloses a
`
`five-lens system for use in portable devices. See Ex.1005, Abstract, 1:6-16. In fact,
`
`Ogino’s lens system is similarly designed for use in portable devices such as “a
`
`digital still camera, a cellular phone with a camera, a mobile information terminal
`
`(PDA: Personal Digital Assistance), a smartphone, a tablet terminal, and a mobile
`
`game machine, on which the imaging lens is mounted to perform photography.”
`
`13
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`Petition for Inter Partes Review of U.S. Patent No. 9,857,568
`
`Ex.1005, 1:11-16. Ogino’s lens system is also similarly designed to meet a demand
`
`for five-lens systems in portable devices to “to enhance the resolution and
`
`performance of the imaging lens.” Ex.1005, 1:30-31.
`
`Ogino offers several embodiments that each includes five lenses, each lens
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`having an aspheric surface. Ex.1005, 13:4-5. In each embodiment, the lens system
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`includes:
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`in order from the object side, five lenses of: the first lens L1 that has a
`positive refractive power and has a meniscus shape which is convex
`toward the object side; the second lens L2 that has a biconcave shape;
`the third lens L3 that has a meniscus shape which is convex toward
`the object side; the fourth lens L4 that has a meniscus shape which is
`convex toward the image side; and the fifth lens L5 that has a negative
`refractive power and has at least one inflection point on an image side
`surface.
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`Ex.1005, 13:8-16.
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`The lens system in Fig. 6 (i.e., Example 6) is particularly relevant to the
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`claims in the ’568 patent, and is reproduced below:
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`Ex.1005, Fig. 6.
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`In Example 6, the five lens elements are identified as L1-L5 and are
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`aspheric. Ex.1005, 13:4-5. Example 6 also includes “optical members CG [that]
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`may be disposed between the fifth lens L5 and the imaging device 100 based on
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`the configuration of a camera on which the imaging lens is mounted.” Ex.1005,
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`5:55-57. The optical member CG is optional and may be excluded to “reduce the
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`number of components, and to reduce the total length.” Ex.1005, 5:66-6:2.
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`The lens system in Fig. 6 (i.e., Example 6) is described with reference to
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`Table 11, reproduced below:
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`
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`Ex.1005, 22:10-35 (Table 11). Ogino describes Table 11 as follows:
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`[T]he column of the on-axis surface spacing Di shows spaces (mm) on
`the optical axis between the i-th surface Si and the (l+1) th surface2
`
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`2 A POSITA would understand that the patentee’s recitation of “the (l+1)th
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`surface” is a typographical error, and actually refers to the (i+1)th surface, as
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`Si+1 on the optical axis from the object side. The column of Ndj
`shows values of the refractive index of the j-th optical element from
`the object side for the d-line (587.56 mm). The column of vdj shows
`values of the Abbe number of the j-th optical element from the object
`side for the d-line.
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`Ex.1005, 14:40-47. In other words, the column Di corresponds to the on-axis
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`spacing of and between each lens element and is identified in Fig. 6 as D1 to D13;
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`the column ndj provides the refractive index or power of each lens element L1-L5
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`and the optional member CG; and the column vdj provides the Abbe number of
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`each lens element L1-L5 and the optional member CG. Ex.1003, p.24.
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`Also included in Table 11 is “the focal length f of the whole system (mm),”
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`designated as “f=4.428”; “the back focal length Bf (mm),” designated as
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`“BF=1.424”; and “the total lens length TL (mm)” or total track length, designated
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`as “TL=4.387.” Ex.1005, 14:47-50, 22:10-15 (Table 11). Since the optical member
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`CG (designated as element 12 in Table 11) is optional, “the back focal length Bf
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`indicates an air-converted value, and likewise, in the total lens length TL, the back
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`focal length portion uses an air-converted value.” Ex.1005, 14:51-53. In other
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`words, Ogino provides the back focal length Bf and the total lens length TL as if
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`the optional optical member CG was removed and only air existed between the
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`evidenced by the sentence’s reference to the i-th surface, and the surface Si+1.
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`Ex.1003, p.23, n.1.
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`fifth lens element L5 and the image plane. Ex.1003, p.24. This means that the total
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`lens length TL without the optical member CG is 4.387 mm, as given in Table 11,
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`and can be calculated by summing the widths D2 to D10 and the back focal length
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`Bf. Ex.1003, p.24.
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`Similar to the ‘568 patent, Ogino also provides the surface “sag” equation
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`that describes the surfaces of an aspheric lens element, and which can be used to
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`determine a lens element’s circumferential edge thickness for a specified lens
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`diameter based on the aspheric surface profile (Z) calculated for each lens surface.
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`Ex.1005, 15:1-18. Ogino states:
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`As aspheric surface data, values of coefficients Ai and KA in the
`aspheric surface expression represented by the following expression
`(A) are shown. Specifically, Z represents the length (mm) of a
`perpendicular from a point on an aspheric surface at height h from an
`optical axis to a plane that contacts with the vertex of the aspheric
`surface (the plane perpendicular to the optical axis).
`
`
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`Here, 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.
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`Ex.1005, 15:1-18; Ex.1003, p.25. As with the ’568 patent, once Z is determined for
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`the object-side and image-side surfaces for any of Ogino’s lens elements, the edge
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`thickness can be determined using the lens element’s thickness at the optical axis
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`and the Z values for the two surfaces. Ex.1003, p.25.
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`The following analysis describes how Ogino renders obvious each and every
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`element of at least claims 1-5 of the ’568 patent. A corresponding claim chart is
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`contained in Dr. Sasián’s expert declaration. See Ex.1003, pp.26-51.
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`2.
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`Claim 1
`
` [1.0] A lens assembly, comprising:
`
`Ogino discloses this limitation because it teaches “a fixed-focus imaging
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`lens that forms an optical image of a subject on an imaging device.” Ex.1005, 1:7-
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`8. Ogino also teaches that its device “is an imaging lens substantially consisting of,
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`in order from an object side, five lenses.” Ex.1005, 2:1-3. An imaging lens
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`consisting of five lenses is a “lens assembly.” Ex.1003, p.26. One particularly
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`relevant example of Ogino’s five-lens imaging apparatus is Example 6 shown in
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`Fig. 6. Thus, Ogino’s imaging lens with five-lenses teaches a “lens assembly” as
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`recited in the claim. Ex.1003, p.26.
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`[1.1] a plurality of refractive lens elements arranged along an optical axis,
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`Ogino discloses this limitation because the lens assembly of Example 6
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`includes a plurality of refractive lenses (labeled L1 to L5) arranged along an
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`optical axis (labeled Z1) as shown in Fig. 6 below:
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`Optical Axis Z1
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`Plurality of Refractive Lens Elements L1 to L5
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`
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`Ex.1003, pp.26-27; Ex.1005, Fig.6 (annotated).
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`As shown in Fig. 6, Ogino teaches that each lens L1 to L5 is a refractive
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`lens: “the positive refractive power of the first lens L1” (Ex.1005, 9:11-12), “the
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`refractive power of the second lens L2” (Ex.1005, 9:29), “third lens L3 has a
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`negative refractive power” or “a positive refractive power” (Ex.1005, 7:51-53),
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`“fourth lens L4 have a positive refractive power” (Ex.1005, 7:67-8:1) and “fifth
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`lens L5 has a negative refractive power” (Ex.1005, 8:8). See Ex.1003, p.27.
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`As also shown in Fig. 6, Ogino specifically states that its refractive lenses
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`are arranged along the same optical axis designated as Z1. See Ex.1003, pp.27-28;
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`Ex.1005, 5:13-15 (“The reference sign Di represents an on-axis surface spacing
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`between i-th surface and (i+1) th surface on an optical axis Z1.”).
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`Thus, Ogino’s Example 6 lens assembly with five refractive lens elements
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`arranged along a Z1 optical axis teaches “a plurality of refractive lens elements
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`arranged along an optical axis” as recited in the claim. Ex.1003, p.28.
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`[1.2] with a first lens element on an object side
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`Ogino discloses this limitation because the Example 6 lens assembly in Fig.
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`6 includes five lenses “in order from the object side, five lenses of: the first lens
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`L1….” Ex.1005, 13:3-9; see also Ex.1003, pp.28-29. Fig. 6 showing the first lens
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`L1 among the plurality of five lenses is provided below:
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`First Lens L1
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`Object Side
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`Ex.1003, p.29; Ex.1005, Fig. 6 (annotated).
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`Image Side
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`
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`Thus, Ogino’s Example 6 lens assembly that includes a plurality of lenses
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`with a first lens L1 from the object side teaches “with a first lens element on an
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`object side” as recited by the claim. Ex.1003, p.29.
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`[1.3] wherein at least one surface of at least one of the plurality of lens elements
`is aspheric,
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`Ogino discloses this limitation because it states that “[i]n the imaging lenses
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`according to Examples 1 to 6, both surfaces of each of the first to fifth lenses
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