Trials@uspto.gov
`571-272-7822
`
`
`Paper 26
`Date: May 11, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LG ELECTRONICS INC.,
`Petitioner,
`v.
`IMMERVISION, INC.,
`Patent Owner.
`
`
`IPR2020-00195
`Patent 6,844,990 B2
`
`
`
`
`
`
`
`
`
`Before KRISTINA M. KALAN, WESLEY B. DERRICK, and
`KIMBERLY MCGRAW, Administrative Patent Judges.
`DERRICK, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
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`IPR2020-00195
`Patent 6,844,990 B2
`
`I. INTRODUCTION
`In this inter partes review, LG Electronics Inc. (“Petitioner”)
`challenges the patentability of claim 21 of U.S. Patent No. 6,844,990 B2
`(Ex. 1001, “the ’990 patent”), owned by ImmerVision, Inc. (“Patent
`Owner”).
`We have jurisdiction to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed herein, Petitioner has not
`shown, by a preponderance of the evidence, that claim 21 of the ’990 patent
`is unpatentable.
`A. Procedural History
`On November 27, 2019, Petitioner requested an inter partes review of
`claim 21 of the ’990 patent. Paper 2 (“Pet.”). Patent Owner filed a
`Preliminary Response. Paper 5 (“Prelim. Resp.”). On May 13, 2020, we
`instituted an inter partes review of the challenged claim on all grounds
`raised in the Petition. Paper 6 (“Dec.”). Following institution, Patent Owner
`filed a Patent Owner Response (Paper 12, “PO Resp.”), Petitioner filed a
`Reply to the Patent Owner Response (Paper 16, “Pet. Reply”), and Patent
`Owner filed a Sur-Reply to Petitioner’s Reply (Paper 17, “PO Sur-Reply).
`Petitioner relies on the declaration testimony of Russell Chipman,
`Ph.D. (Exs. 1008, 1017, 1019) to support the Petition. Patent Owner took
`cross-examination via deposition of Dr. Chipman (Ex. 2002). Patent Owner
`relies on the declaration testimony of David Aikens (Ex. 2009). Petitioner
`took cross-examination via deposition of Mr. Aikens (Ex. 1018).
`Oral hearing was requested by both parties. Papers 18, 19. We heard
`argument on February 8, 2021, and a transcript of the hearing has been
`entered into the record. Paper 25 (“Tr.”).
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`IPR2020-00195
`Patent 6,844,990 B2
`B. Real Parties-in-Interest
`Petitioner LG Electronics Inc. identifies LG Electronics U.S.A., Inc.
`and LG Innotek Co. Ltd. as additional real parties-in-interest. Pet. 2. Patent
`Owner ImmerVision, Inc., identifies itself as the real party-in-interest.
`Paper 4, 2. The parties do not raise any issues about real parties-in-interest.
`C. Related Proceedings
`The parties identify two pending district court cases involving
`the ’990 patent: ImmerVision, Inc. v. LG Electronics U.S.A., No. 1-18-cv-
`01630 (D. Del.) and ImmerVision, Inc. v. LG Electronics U.S.A., No. 1-18-
`cv-01631 (D. Del.). Pet. 2; Paper 4, 2–3. The ’990 patent is also the subject
`of an inter partes review in IPR2020-00179. See IPR2020-00179, Paper 6.
`In addition, the ’990 patent: (1) was the subject of Ex Parte
`Reexamination Control No. 90/013,410; (2) was challenged in an inter
`partes proceeding, Panasonic System Networks Co., Ltd. v. 6115187 Canada
`Inc., IPR2014-01438; and (3) was the subject of three other district court
`cases that are no longer pending. See Pet. 2–3; see also Panasonic System
`Networks Co., Ltd. v. 6115187 Canada Inc., IPR2014-01438, Paper 11
`(PTAB Nov. 26, 2014) (terminating proceeding prior to institution following
`settlement).
`D. The ’990 Patent (Ex. 1001)
`The ’990 patent is titled “Method for Capturing and Displaying a
`Variable Resolution Digital Panoramic Image” and issued on January 18,
`2005, from an application filed on November 12, 2003. Ex. 1001, codes
`(22), (45), (54). The application for the ’990 patent is a continuation of
`application No. PCT/FR02/01588, filed on May 10, 2002, and claims
`priority to foreign application FR 01 06261, filed May 11, 2001. Id. at
`codes (30), (63).
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`IPR2020-00195
`Patent 6,844,990 B2
`The ’990 patent relates to capturing a digital panoramic image that
`includes using a panoramic objective lens having “a distribution function of
`the image points that is not linear relative to the field angle [α] of the object
`points of the panorama,” where the “distribution function Fdc . . . determines
`the relative distance dr of an image point in relation to the center of the
`image disk according to the field angle α of the corresponding object point.”
`Id. at code (57), 2:30–34 (as corrected by Jan. 18, 2005, Cert. of Correction).
`The image obtained using such a panoramic objective lens has at least one
`zone that is expanded and another zone that is compressed. Id. at code (57).
`The ’990 patent further explains that an image zone is “expanded” when it
`covers a greater number of pixels on an image sensor than it would with a
`linear distribution lens. Id. at 3:66–4:10. The ’990 patent also provides that
`an “expanded” zone and “compressed” zone can be illustrated by
`comparison to a linear distribution function, with a slope greater than that of
`the linear distribution indicating an expanded zone and a lesser slope
`indicating a compressed zone. Id. at 9:13–35; see also id. at 2:30–42
`(describing how “Figure 4B represents the shape of the distribution function
`Fdc of a classical objective lens,” of ideal form, “a straight line of gradient
`K . . . in which the constant K is equal to 0.111 degree-1 (1/90º)”). Figure 9,
`reproduced below, depicts an image point distribution of a lens having a
`compressed zone between α=0º and α=30º, an expanded zone between α=30º
`and α=70º, and a compressed zone between α=70º and α=90º.
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`IPR2020-00195
`Patent 6,844,990 B2
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`Id., Fig. 9 (depicting plot of a non-linear distribution function of a panoramic
`objective lens). The patent further provides for correcting the non-linearity
`of the panoramic image initially obtained when using such lens. Id. at
`code (57).
`The ’990 patent was the subject of an ex parte reexamination. Id.
`at 25–27 (Ex Parte Reexamination Certificate (10588th)). The
`Reexamination Request—Control No. 90/013,410—was filed November 26,
`2014. Id. at 25; Ex. 1003, 328–339 (“Request by Patent Owner for Ex Parte
`Reexamination of U.S. Patent No. 6,844,990”). Patent Owner requested an
`ex parte reexamination of claims 1–4, 6, 7, 10, 11, 15–20, 22, 23, and 25,
`which request was granted. Pet. 17–18; Ex. 1003, 52–63, 330, 341. The
`Patent Office issued an Office Action on January 29, 2015, rejecting
`independent claim 17—the base claim for claim 21. Ex. 1003, 30, 36–39.
`Patent Owner filed an Amendment on February 12, 2015, canceling
`claim 17. Id. at 19.
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`IPR2020-00195
`Patent 6,844,990 B2
`E. The Challenged Claim
`Challenged claim 21 incorporates the limitations of cancelled
`claim 17, from which it depends. See MPEP § 2260.01 (“the content of the
`canceled base claim . . . [is] available to be read as part of the confirmed or
`allowed dependent claim”). Both claims are reproduced below.
`17. A panoramic objective lens comprising:
`optical means for projecting a panorama into an image plane of
`the objective lens, the optical means having an image point
`distribution function that is not linear relative to the field angle
`of object points of the panorama, the distribution function
`having a maximum divergence of at least ±10% compared to a
`linear distribution function, such that a panoramic image
`obtained by means of the objective lens comprises at least one
`substantially expanded zone and at least one substantially
`compressed zone.
`Ex. 1001, 20:51–61.
`21. The panoramic objective lens according to claim 17,
`wherein the lens compresses the center of the image and the
`edges of the image, and expands an intermediate zone of the
`image located between the center and the edges of the image.
`Id. at 21:7–11.
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`IPR2020-00195
`Patent 6,844,990 B2
`F. Instituted Grounds of Unpatentability at Issue
`We instituted trial on all grounds of unpatentability proposed by
`Petitioner, as shown below:
`Claim Challenged
`21
`
`Reference(s)/Basis
`Tada2
`
`35 U.S.C. §1
`103
`
`21
`
`21
`
`103
`
`103
`
`Tada, Nagaoka3
`
`Tada, Baker4
`
`II. ANALYSIS
`
`A. Principles of Law
`A claim is unpatentable under § 103 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) when in evidence, objective evidence of
`nonobviousness, i.e., secondary considerations. See Graham v. John Deere
`Co., 383 U.S. 1, 17–18 (1966).
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103 effective March 16, 2013.
`Because the challenged patent was filed before March 16, 2013, we refer to
`the pre-AIA version of 35 U.S.C. § 103.
`2 US 5,861,999, issued January 19, 1999 (Ex. 1007).
`3 US 6,128,145, issued October 3, 2000 (Ex. 1004).
`4 US 5,686,957, issued November 11, 1997 (Ex. 1005).
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`Regarding the scope and content of the prior art, “[w]hat a reference
`teaches is a question of fact.” In re Beattie, 914 F.2d 1309, 1311 (Fed. Cir.
`1992). A reference is prior art for what it discloses, even if it is in error,
`unless the error is an “obvious error,” in which case “it cannot be said to
`describe or suggest [what is disclosed in error] to those in the art.” In re
`Yale, 434 F.2d 666, 668–69 (CCPA 1970) (holding that an error in the
`statement of a chemical formula would have been obvious to one of ordinary
`skill in the art and thus would not have put them in possession of the
`compound because they would have disregarded it as an error or replaced it
`with the correct chemical formula); see also In re Clark, 420 F. App’x 994,
`998 (Fed. Cir. 2011) (nonprecedential) (holding that “absent an obvious
`error on the face of a reference, a reference is prior art for what it discloses”
`and that the Board did not err in relying on such a disclosure where there
`was “nothing in the . . . publication indicating that the [relied-on] statements
`. . . were in error.”).
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
`v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
`The Petition guides the proceeding. See Koninklijke Philips N.V. v.
`Google LLC, 948 F.3d 1330, 1335–36 (Fed. Cir. 2020). Our reviewing court
`explains that “[f]rom the outset, we see that Congress chose to structure a
`process in which it’s the petitioner, . . . who gets to define the contours of
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`the proceeding,” and that “the statute envisions that a petitioner will seek an
`inter partes review of a particular kind—one guided by a petition describing
`each claim challenged and the grounds on which the challenge to each claim
`is based.” Id. at 1335 (quoting SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355
`(2018) (internal quotations omitted)) (alterations in original). “[T]he
`petitioner’s petition, not the Director’s discretion is supposed to guide the
`life of the litigation,” and that “the petitioner’s contentions, not the
`Director’s discretion, define the scope of the litigation all the way from
`institution through to conclusion.” Sirona Dental Sys. GmbH v. Institut
`Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (quoting SAS,
`138 S. Ct. at 1356–57 (internal quotations omitted)).
`To prevail, Petitioner must demonstrate by a preponderance of the
`evidence that the claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R.
`§ 42.1(d) (2019). “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”)). This burden never shifts to
`Patent Owner. See Dynamic Drinkware, LLC v. National Graphics, Inc.,
`800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v.
`Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the
`burden of proof in inter partes review).
`B. Level of Ordinary Skill in the Art
`In the Institution Decision, we adopted Petitioner’s description of the
`level of ordinary skill in the art, not contested at that time by Patent Owner,
`and determined that a person of ordinary skill in the art “would have had at
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`least a bachelor’s degree in Physics, Optical Engineering, and/or Electrical
`Engineering, and at least five years’ experience in developing and designing
`optical products or systems and have familiarity with image processing
`algorithms and optical design software.” Dec. 6; Pet. 20 (citing Ex. 1008
`¶ 41).
`
`Patent Owner neither disputes Petitioner’s articulation of the level of
`ordinary skill in the art nor presents its own articulation of the level of skill
`in the art, stating that “for purposes of this Response, Patent Owner does not
`object to Petitioner’s proposed skill level.” PO Resp. 20.
`On this record, we have no reason to fault Petitioner’s definition of
`the level of ordinary skill. We further note that the prior art itself
`demonstrates the level of skill in the art at the time of the invention, and
`there is no apparent inconsistency with Petitioner’s definition. See Okajima
`v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific
`findings on the level of skill in the art . . . [are not required] ‘where the prior
`art itself reflects an appropriate level and a need for testimony is not
`shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp.,
`755 F.2d 158, 163 (Fed. Cir. 1985))). Accordingly, we adopt the level of
`ordinary skill set forth by Petitioner.
`C. Claim Construction
`We apply the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. § 282(b), following the
`standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
`Cir. 2005) (en banc). 37 C.F.R. § 42.100(b). Under Phillips, claim terms
`are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d
`at 1312. “[T]he ordinary and customary meaning of a claim term is the
`meaning that the term would have to a person of ordinary skill in the art in
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`question at the time of the invention.” Id. at 1313. Only those terms that are
`in controversy need be construed, and only to the extent necessary to resolve
`the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`Before institution, Petitioner proposed constructions for particular
`claim terms, which Patent Owner, for the purposes of its Preliminary
`Response, did not contest. Dec. 8–9. On that record, and for the purpose of
`the Institution Decision, we adopted the constructions set forth by Petitioner,
`because the constructions appeared reasonable and were not contested. Id.
`at 9.
`
`Following institution, Patent Owner again neither disputes Petitioner’s
`proposed constructions nor proposes its own, stating, “[w]hile not
`necessarily agreeing with the proposed constructions of those terms, solely
`for purposes of this Response, Patent Owner does not object to the
`constructions set out by Petitioner.” PO Resp. 20.
`Considering again the proposed constructions, on this record, we
`adopt the definitions set forth by Petitioner: (i) “panoramic objective lens”
`means “a super-wide or ultra-wide objective lens”; (ii) “object points of the
`panorama” are “points of the object in the panorama being viewed by the
`lens”; (iii) “image point” means “a point of light projected by the lens onto
`an image plane, said light coming from the corresponding object point of a
`viewed object in the panorama”; (iv) “field angle of object points” are “the
`angles of incident light rays passing through the object points and through
`the center of the panorama photographed, relative to the optical axis of the
`objective lens”; (v) “maximum divergence” is defined by the formula
`“DIVmax %=[[dr(Pd)-dr(Pdl)]/[dr(Pdl)]]*100, in which dr(Pd) is the relative
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`distance in relation to the center of the point of maximum divergence Pd,
`and dr(Pdl) is the relative distance in relation to the center of the
`corresponding point on the linear distribution line”; (vi) “expanded zone”
`means “the portion of the image point distribution function where the
`gradient is higher than the gradient of the linear distribution function”; and
`(vii) “compressed zone” means “the portion of the image point distribution
`function where the gradient is lower than the gradient of the linear
`distribution function.” Dec. 8–9 (citing Ex. 1001, 1:18–20, 2:18–22, 7:2–5,
`7:11–14, 8:38–43, 8:57–65; Ex. 1008 ¶¶ 44, 52, 57, 63).
`We likewise consider again the construction of the “optical means for
`projecting . . .” limitation of cancelled claim 17, and agree it is a means-
`plus-function limitation that should be construed, as Petitioner contends, as
`“‘a series of optical elements, e.g., as shown in Figs. 15, 16, and 18, and
`equivalents thereof’ for performing the claimed function.” Id. at 9 (citing
`Prelim. Resp. 22–24).
`We further determine that no additional claim construction is
`necessary to reach our decision in this case.
`D. Asserted Obviousness over Tada
`Petitioner challenges claim 21 as obvious over Tada. Pet. 33–57.
`1. Overview of Tada (Ex. 1007)
`Tada discloses a method for capturing a digital panoramic image,
`including by use of “a super wide angle lens system which can be used for a
`monitoring camera (CCTV) etc.” Ex. 1007, 1:7–9. Tada states that “[i]t is
`an object . . . to provide a retrofocus type super wide angle lens system . . .
`[having] an angle of view of approximately 120º to 140º.” Id. at 1:48–50.
`Tada identifies Figures 1, 6, 11, and 16 as schematic views “showing the
`lens arrangement” of a first, second, third, and fourth embodiment,
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`respectively, “of a super wide angle lens system. Id. at 3:18–20, 3:32–34,
`3:44–46, 3:57–59, Figs. 1, 6, 11, 16. The third embodiment, depicted in
`Figure 11, reproduced below, “is substantially the same as the second
`embodiment,” depicted in Figure 6, which “is substantially the same as that
`of the first embodiment,” depicted in Figure 1. Id. at 6:2–3, 7:36–43, 8:58–
`62.
`
`
`
`Figure 11 depicts the lens arrangement of a super wide angle lens system.
`Id. at 3:44–46, Fig. 11. The depicted super wide angle lens system consists
`of front lens group 10 and rear lens group 20. See id. at 6:4–5 (identifying
`elements in reference to Figure 1). Figure 11 also depicts features of a
`CCD5 (charge-coupled device) used to capture an image; element C refers to
`
`5 Although neither Tada nor the Petitioner define “CCD,” we understand
`CCD to be a “charge-coupled device.” See, e.g., Ex. 2001 ¶ 595.
`
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`“a glass cover of the CCD” and “surface No. 15 refers to the image pickup
`surface of the CCD.” See id. at 6:26–32 (identifying elements in reference
`to Figure 1). Tada sets forth that its Figures 5 and 6 disclose numerical data
`regarding the third embodiment, including “[t]he surface figure, paraxial
`spherical amount and aspherical amount of surface No. 3.” Id. at 8:63–9:57.
`Tada similarly sets forth that its Tables 1 and 2 disclose numerical data
`regarding the first embodiment (id. at 6:28–32, 6:36–7:29), Tables 3 and 4
`disclose numerical data regarding the second embodiment (7:42–8:53), and
`Tables 7 and 8 disclose numerical data regarding the fourth embodiment
`(9:63–10:50). Tada also sets forth “[v]alues of the ratios defined in
`conditions (1) through (8) for the four embodiments” in its Table 9. Id.
`at 10:53–11:12.
`2. Analysis
`Claim 21, which incorporates the limitations of cancelled claim 17
`from which it depends, is directed to an improved panoramic objective lens.
`In general, claim 17 requires that the panoramic objective lens has optical
`means for projecting a panorama into an image plane of the objective lens,
`the optical means having an image point distribution function that is not
`linear to the field angle of the object points of the panorama, having a
`maximum divergence that is at least ±10% compared to a linear distribution
`function. Ex. 1001, 20:51–67. Claim 21 further requires that “the lens
`compresses the center of the image and edges of the image, and expands an
`intermediate zone of the image located between the center and the edges of
`the image.” Id. at 21:7–11.
`a) Overview of Ground Based on Tada
`Petitioner contends that Tada discloses the claimed panoramic
`objective lens in its “third embodiment of a super wide angle lens system”
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`that compresses the center of the image and edges of the image and expands
`an intermediate zone of the image located between the center and edges of
`the image. Pet. 33–42; Pet. Reply 2–3, 10–19. Petitioner asserts that Tada’s
`“Figure 11. . . shows a third embodiment of a super wide angle lens system”
`and that Table 5 provides for the “prescription of the third embodiment
`lens,” i.e., “[n]umerical data regarding the third embodiment.” Pet. 33–35,
`37. Dr. Chipman testifies that he reconstructed the lens of Figure 11 using
`the numerical data information in Table 5. Ex. 1008 ¶ 46; see also id. ¶ 49
`(stating Tada’s disclosure of, inter alia, schematic views of the lens
`arrangements and tables of measurements of the lens allows one of ordinary
`skill in the art to reconstruct the exact lens system described in Tada). In
`particular, Dr. Chipman testifies that he input certain information from
`Table 5 (i.e., the FNO and W values, the values in the R, D, Nd, and vd
`columns, and the “aspherical data” information) into an “optical design
`program called Code V” and that Code V then generated a depiction of the
`lens system corresponding to the lens prescription in Table 5. Id. ¶ 46; see
`also id. ¶ 50 (stating numerical data regarding Tada’s third embodiment is
`shown in Table 5). Dr. Chipman also testifies that he used the Code V
`program to calculate the characteristics of the lens system to test and show
`how it would function by providing plots of the various characteristics of the
`lens system. Ex. 1008 ¶ 51. Dr. Chipman also testifies that he plotted the
`image point distribution function for the lens system at six wavelengths, and
`that the function is not linear in any of them (id. ¶¶ 52–53), that the
`maximum deviation from a linear distribution function is at least 8.12% to
`9.88%, depending on the wavelength (id. ¶¶ 57–58), and that the lens
`“compresses the center of the image and the edges of the image and expands
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`an intermediate zone of the image located between the center and the edges
`of the image” (id. ¶ 68).
`Petitioner relies on these calculations and plots of Tada’s third
`embodiment lens system of Figure 11 with the prescription set forth in
`Table 5 to show that Tada’s third embodiment meets the limitations of claim
`21, and of claim 17 from which it depends. Pet. 35–57 (citing Ex. 1007,
`Fig. 11, Table 5); Pet. Reply 1–19. That is, Petitioner relies on the lens
`prescription set forth in Table 5 for the lens system depicted in Figure 11,
`and calculations of that lens system’s properties showing it (1) “compresses
`the center of the image and the edges of the image, and expands an
`intermediate zone of the image located between the center and edges of the
`image,” as required by claim 21, and (2) for it to have an image point
`distribution that is not linear relative to the field angle of object points of the
`panorama, having a maximum divergence that is at least ±10% compared to
`a linear distribution function, as required by independent claim 17 from
`which claim 21 depends. Pet. 35–57.
`b) Patent Owner’s Contention of Obvious Error in Tada
`Patent Owner contends that Tada’s third embodiment, as set forth in
`Table 5, has a readily apparent error (i.e., the aspherical data). PO Resp. 1–
`3. Patent Owner argues that the grounds of unpatentability set forth in the
`Petition fail because the disclosure including an apparent error should be
`disregarded or corrected, and it is only in relying on the disclosure in error
`that Petitioner arrives at a lens that compresses the center and edges and
`expands an intermediate zone of an image as required by claim 21. Id. at 1–
`3, 8–14, 24–40; PO Sur-Reply 1–7. Patent Owner relies on Yale for its
`holding that “[w]here a prior art reference contains ‘an error obvious to one
`of ordinary skill in the art, it cannot be said to describe or suggest’ the
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`erroneous feature.” Yale, 434 F.2d at 668–669. In identifying the error,
`Patent Owner contends that Tada’s “ratios (2)–(4) in Table 9 should
`respectively match Table 5’s A4, A6, and A8, but do not.” PO Resp. 13
`(citing Ex. 2002, 47:22–50:24 (cross-examination testimony of
`Dr. Chipman); Ex. 2009 ¶ 69 (testimony of Mr. Aikens that identified
`“values do not match the values in Table 5 because Table 5 is in error”)).
`Patent Owner’s declarant Mr. Aikens also testifies on cross-examination that
`“[b]ecause the focal length is 1 [in each of the four embodiments], Table 9
`rather conveniently gives you the aspheric coefficients for each of the four
`embodiments, and it matches correctly for 1, 2 and 4 and is totally wrong
`for 3.” Ex. 1018, 136:11–15. Patent Owner also sets forth calculations by
`Mr. Aikens for Embodiment 3 using aspherical data information from
`Tada’s Japanese priority application JP 06-2019036, which Patent Owner
`contends is the correct lens prescription, and determines that the
`“compressed zone at the edge of the lens across the visible wavelength
`spectrum” is missing. PO Resp. 32–38 (citing Ex. 2009 ¶¶ 73, 88, 90–100).
`Patent Owner further contends that Petitioner failed to “explain why a
`[person of ordinary skill in the art] would have modified [the lens system
`according to the correct prescription] to include a compressed edge zone.”
`Id. at 40 (emphasis omitted).
`c) Petitioner’s Argument There is No Obvious Error
`In its Reply, Petitioner does not dispute that Dr. Chipman relies on the
`data in Tada’s Table 5 to reconstruct a lens it contends satisfies all of the
`limitations of claim 21, including the “three zone” limitations that require
`
`
`6 The JP 09-201903 application was published as JP H10115778.
`Ex. 2007, 1; Ex. 2008, 2. Patent Owner provides an English language
`translation. Ex. 2008, 1–2.
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`compression of the center and edges and expansion of an intermediate zone
`of the image obtained by means of the lens (i.e., (1) a central compressed
`zone, (2) an intermediate expanded zone, and (3) a compressed edge zone).
`See generally Pet. Reply. Petitioner also does not dispute that if the
`purported error in Tada’s Table 5 was corrected using the aspherical data
`from the Japanese priority application, that a lens reconstructed using the
`Japanese priority application data would not satisfy a limitation of claim 21
`because the lens would not compress the edges of the produced image, and
`thus would not have a compressed edge zone. Id. Petitioner contends,
`rather, that the alleged error in the aspherical data in Tada’s Table 5 is
`irrelevant because it was not apparent or obvious upon reading the reference.
`Id. at 3–10 (citing Yale, 434 F.2d at 669). Petitioner argues that Tada’s
`Table 5, accordingly, should be considered as it reads, neither disregarding
`nor correcting its disclosure, and that Table 5 itself, as written, discloses and
`enables a lens meeting the requirements set forth for Tada’s invention. Id.
`Petitioner further argues that the error in Table 5 would not have been
`“readily apparent” because “there is nothing in Table 5 that would lead a
`[person of ordinary skill in the art] to believe that there is an error.” Id. at 3.
`Petitioner contends that Table 5 “includes all of the information necessary to
`enable a complete lens” (id. at 4 (citing Ex. 1019 ¶¶ 5–8), 2), and that “[t]he
`lens of Table 5 as analyzed by Dr. Chipman discloses all of the elements . . .
`of claim 21” (id. at 3). Petitioner further contends that even if a person of
`ordinary skill in the art “were to check Table 5 with other parts of Tada, it
`would have taken many hours to conclude there was an error.” Id. at 4
`(citing Ex. 1018, 132:1–15, 136:5–137:12). To support its argument that the
`error would not have been readily apparent, Petitioner quotes testimony of
`Patent Owner’s declarant Mr. Aikens that he “had figured out that something
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`was wrong probably within two to three hours. Then modeling the other
`embodiments, that took time. And then continuing to try to understand how
`to recreate the surface, that took more time.” Id. (quoting Ex. 1018, 137:8–
`12).
`
`Petitioner argues that this case differs from those in which errors were
`determined to be “obvious on their face and detectable with little effort.” Id.
`at 5. Specifically, Petitioner argues that “any purported ‘error’ in Table 5 of
`Tada” would not have been like the obvious error in Yale, and, thus, that this
`is not a case “such that a [person of ordinary skill in the art] would ‘mentally
`disregard [the information in Table 5] as a misprint or mentally substitute
`[the information in Tables 6 and 9] in its place.’” Id. at 4–5 (citing Yale,
`434 F.2d at 669). Petitioner relies on the court’s reasoning in Yale “that the
`error was such that ‘[t]he public is not put in possession of the compound;
`thus it would not be obvious to use,’” and argues that here, in contrast, Tada
`puts the public in possession because “Table 5 ‘describes’ the claimed
`invention” and “a [person of ordinary skill in the art] would have been able
`to make the Table 5 lens.” Id. at 5–6 (citing In re Elsner, 381 F.3d 1125,
`1128 (Fed. Cir. 2004); Yale, 434 F.2d at 669). Petitioner further contends
`that the “‘error’. . . in Tada’s Table 5 is more like the errors that courts have
`found do not rise to the level of being excluded.” Id. at 7–8 (citing In re
`Garfinkel, 437 F.2d 1005, 1008 (CCPA 1971); In re Borst, 345 F.2d 851,
`853 n.2 (CCPA 1965); Clark, 420 F.App’x at 998).
`d) Analysis of Tada’s Disclosure
`On this record, we find that there is an obvious error on the face of
`Tada, in Table 5, and that this error cannot be relied on to support the
`grounds of unpatentability set forth by Petitioner.
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`As mentioned above, Tada sets forth numerical data for prescribing
`the lens systems of each of its first, second, third, and fourth embodiments in
`Tables 1, 3, 5, and 7, respectively. See Ex. 1007, 6:36–63 (Table 1), 7:50–
`8:25 (Table 3), 9:1–29 (Table 5), 10:1–29 (Table 7). These tables include
`values for aspherical data (coefficients) for surface No. 3 of the second lens
`element, with each table setting forth K (a conic constant), A4 (representing
`a fo