Case 3:19-cv-04809 Document 1 Filed 08/14/19 Page 1 of 53
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`RUSS, AUGUST & KABAT
`Marc A. Fenster, State Bar No. 181067
`mfenster@raklaw.com
`Benjamin T. Wang, State Bar No. 228712
`bwang@raklaw.com
`Neil A. Rubin, State Bar No. 250761
`nrubin@raklaw.com
`James S. Tsuei (CA Bar No. 285530)
`jtsuei@raklaw.com
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
`Telephone: (310) 826-7474
`Facsimile: (310) 826-6991
`
`Attorneys for Plaintiff
`COREPHOTONICS, LTD.
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`COREPHOTONICS, LTD.
`
`Plaintiff,
`
`Civil Action No.
`
`vs.
`
`APPLE INC.
`
`COMPLAINT FOR PATENT
`INFRINGEMENT
`
`Defendant.
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`DEMAND FOR JURY TRIAL
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`RUSS, AUGUST & KABAT
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`COMPLAINT
`
`3:19-cv-4809
`
`APPLE V. COREPHOTONICS
`IPR2020-00478
`Exhibit 2004
`Page 1
`
`

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`Case 3:19-cv-04809 Document 1 Filed 08/14/19 Page 2 of 53
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`
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`COMPLAINT
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`1.
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`Plaintiff Corephotonics, Ltd. (“Corephotonics”) hereby submits its Complaint
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`against Defendant Apple Inc. (“Apple”) and alleges as follows:
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`NATURE OF THE ACTION
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`This is a civil action for infringement under the patent laws of the United States, 35
`
`2.
`U.S.C. § 1, et seq.
`3.
`
`The United States Patent and Trademark Office duly and legally issued U.S. Patent
`
`9,661,233 (the “’233 patent”), entitled “Dual Aperture Zoom Digital Camera,” on May 23, 2017.
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`Corephotonics is the legal owner of the ’233 patent by assignment. A true and correct copy of the
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`’233 patent is attached hereto as Exhibit A.
`4.
`
`The United States Patent and Trademark Office duly and legally issued U.S. Patent
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`10,230,898 (the “’898 patent”), entitled “Dual Aperture Zoom Camera With Video Support And
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`Switching / Non-Switching Dynamic Control,” on March 12, 2019. Corephotonics is the legal
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`owner of the ’898 patent by assignment. A true and correct copy of the ’898 patent is attached
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`hereto as Exhibit B.
`5.
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`The United States Patent and Trademark Office duly and legally issued U.S. Patent
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`10,288,840 (the “’840 patent”), entitled “Miniature Telephoto Lens Module And A Camera
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`Utilizing Such A Lens Module,” on May 14, 2019. Corephotonics is the legal owner of the ’840
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`patent by assignment. A true and correct copy of the ’840 patent is attached hereto as Exhibit C.
`6.
`
`The United States Patent and Trademark Office duly and legally issued U.S. Patent
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`10,317,647 (the “’647 patent”), entitled “Miniature Telephoto Lens Assembly,” on June 11, 2019.
`
`Corephotonics is the legal owner of the ’647 patent by assignment. A true and correct copy of the
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`’647 patent is attached hereto as Exhibit D.
`7.
`
`The United States Patent and Trademark Office duly and legally issued U.S. Patent
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`10,324,277 (the “’277 patent”), entitled “Miniature Telephoto Lens Assembly,” on June 18, 2019.
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`Corephotonics is the legal owner of the ’277 patent by assignment. A true and correct copy of the
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`’277 patent is attached hereto as Exhibit E.
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`1
`COMPLAINT
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`RUSS, AUGUST & KABAT
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`APPLE V. COREPHOTONICS
`IPR2020-00478
`Exhibit 2004
`Page 2
`
`

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`Case 3:19-cv-04809 Document 1 Filed 08/14/19 Page 3 of 53
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`8.
`
`The United States Patent and Trademark Office duly and legally issued U.S. Patent
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`10,330,897 (the “’897 patent”), entitled “Miniature Telephoto Lens Assembly,” on June 25, 2019.
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`Corephotonics is the legal owner of the ’897 patent by assignment. A true and correct copy of the
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`’897 patent as-issued, together with a certificate of correction dated July 23, 2019, is attached
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`hereto as Exhibit F.
`9.
`
`The United States Patent and Trademark Office duly and legally issued U.S. Patent
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`10,225,479 (the “’479 patent”), entitled “Dual Aperture Zoom Digital Camera,” on March 5, 2019.
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`Corephotonics is the legal owner of the ’479 patent by assignment. A true and correct copy of the
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`’479 patent is attached hereto as Exhibit G.
`10.
`
`The United States Patent and Trademark Office duly and legally issued U.S. Patent
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`10,015,408 (the “’408 patent”), entitled “Dual Aperture Zoom Digital Camera,” on July 3, 2018.
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`Corephotonics is the legal owner of the ’408 patent by assignment. A true and correct copy of the
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`’408 patent is attached hereto as Exhibit H.
`11.
`
`The United States Patent and Trademark Office duly and legally issued U.S. Patent
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`10,356,332 (the “’332 patent”), entitled “Dual Aperture Zoom Camera With Video Support And
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`Switching / Non-Switching Dynamic Control,” on July 16, 2019. Corephotonics is the legal owner
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`of the ’332 patent by assignment. A true and correct copy of the ’332 patent is attached hereto as
`
`Exhibit I.
`12.
`
`The United States Patent and Trademark Office duly and legally issued U.S. Patent
`
`10,326,942 (the “’942 patent”), entitled “Dual Aperture Zoom Digital Camera,” on June 18, 2019.
`
`Corephotonics is the legal owner of the ’942 patent by assignment. A true and correct copy of the
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`’942 patent is attached hereto as Exhibit J.
`13.
`
`Apple has infringed and continues to infringe one or more claims of each of the
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`’233 patent, the ’898 patent, the ’840 patent, the ’647 patent, the ’277 patent, the ’897 patent, the
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`’479 patent, the ’408 patent, the ’332 patent, and the ’942 patent (collectively the “Asserted
`
`Patents”), at least by importing, using, selling, and/or offering to sell the iPhone 7 Plus, iPhone 8
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`Plus, iPhone X, iPhone Xs, and/or iPhone Xs Max (the “Accused Products”), as set forth in detail
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`below. Corephotonics seeks, among other things, monetary damages and injunctive relief.
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`
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`2
`COMPLAINT
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`RUSS, AUGUST & KABAT
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`APPLE V. COREPHOTONICS
`IPR2020-00478
`Exhibit 2004
`Page 3
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`

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`Case 3:19-cv-04809 Document 1 Filed 08/14/19 Page 4 of 53
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`
`
`THE PARTIES
`
`14.
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`Plaintiff Corephotonics is a company organized and existing under the laws of the
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`State of Israel with its principal place of business at 25 HaBarzel St., Tel Aviv 6971035, Israel.
`15.
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`Defendant Apple is a corporation organized and existing under the laws of the State
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`of California with its principal place of business at 1 Infinite Loop, Cupertino, California.
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`JURISDICTION AND VENUE
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`16.
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`This Court has subject matter jurisdiction over Corephotonics’ claims for patent
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`infringement pursuant to the 28 U.S.C. §§ 1331 and 1338(a).
`17.
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`Apple is subject to this Court’s personal jurisdiction because Apple resides and has
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`its primary place of business within this District. This Court also has personal jurisdiction over
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`Apple because Apple has committed and induced acts of patent infringement and has regularly
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`and systematically conducted and solicited business in this District by and through at least its sales
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`and offers for sale of Apple products and services, and other contractual arrangements with Apple
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`customers and third parties using such Apple products and services located in and/or doing
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`business in this District.
`18.
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`Venue is proper in this District under 28 U.S.C. §§ 1391(b) and 1400(b) because
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`Apple resides in this District, has a regular and established place of business in this District, and
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`has committed acts of infringement in this District.
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`INTRADISTRICT ASSIGNMENT
`
`19.
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`This action for patent infringement is assigned on a district-wide basis under Civil
`
`L.R. 3-2(c).
`
`A.
`20.
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`FACTUAL ALLEGATIONS
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`Corephotonics’ Dual Camera Technology Innovations
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`Corephotonics is a pioneer in the development of dual camera technologies for
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`mobile devices. Corephotonics was founded in 2012 to develop the next generation of mobile
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`phone cameras. Its founders brought with them decades of experience in the fields of optics and
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`miniature digital cameras and were led by Dr. David Mendlovic, a Professor at Tel Aviv University
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`and former Chief Scientist of the Israeli Ministry of Science.
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`
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`COMPLAINT
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`RUSS, AUGUST & KABAT
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`APPLE V. COREPHOTONICS
`IPR2020-00478
`Exhibit 2004
`Page 4
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`

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`Case 3:19-cv-04809 Document 1 Filed 08/14/19 Page 5 of 53
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`21.
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`Corephotonics’ dual-aperture camera technology changes the way smartphones
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`take pictures by using advanced lens design and sophisticated computational optics. The advanced
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`lens design is used to create a miniature telephoto lens that can fit within the confines of a modern,
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`thin smartphone but still provide the superior image quality and light sensitivity demanded by
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`smartphone consumers.
`22.
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`Corephotonics’ innovative dual-aperture camera technology uses two fixed-focal
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`length lenses, a wide-angle lens as typically found in smartphones with single-aperture cameras,
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`and a miniature telephoto lens. Traditional optical zoom is accomplished by using a variable focal
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`length lens assembly. At the small formats required for smartphones, however, it is difficult to
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`reliably include movable components, so smartphones were stuck with small, fixed lenses. This
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`means that in a typical single-aperture smartphone camera, all zoom functionality is provided with
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`digital zoom, i.e., a processor digitally modifies the image to create a magnified but poorer
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`resolution image. With Corephotonics’ dual-aperture camera technology, by contrast, the second
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`camera with telephoto lens provides much higher optical resolution than the wide-angle camera.
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`Images from both of these cameras can also be processed by computational algorithms to create
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`an effectively greater level of zoom without degrading image quality by combining digital and
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`optical zoom.
`23.
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`For video, which captures thirty or more frames per second, Corephotonics
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`discovered that implementing image fusion for each frame demands higher than normal processing
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`resources and power. At the same time, the beneficial pixel finesse achieved by image fusion is
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`less observable at the rapid frame rate of HD video due to human perception limits. Corephotonics
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`thus developed technology for dual-aperture cameras where image fusion is only used when taking
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`still pictures, but not for video. In video, when zooming in, digital zoom is used first on the image
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`from the wide-angle camera only and then switched to the image from the telephoto camera only.
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`When zooming back out, a similar transition happens from using the telephoto camera only,
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`switching back to the wide-angle camera only. This approach conserves resources and power.
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`Because the two lenses are different and necessarily view the subject from different points of view,
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`COMPLAINT
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`RUSS, AUGUST & KABAT
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`APPLE V. COREPHOTONICS
`IPR2020-00478
`Exhibit 2004
`Page 5
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`

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`Case 3:19-cv-04809 Document 1 Filed 08/14/19 Page 6 of 53
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`Corephotonics also developed special processing that can ensure that the transition from the wide
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`lens to the telephoto lens and back would be smooth.
`24.
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`Corephotonics has filed for and received patents on its advanced telephoto lens
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`designs, multi-aperture camera technologies, and optical processing technologies, including the
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`patents-in-suit. Corephotonics is continuing to develop multi-aperture camera technologies, and it
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`has filed and obtained patents on these technologies as well.
`25.
`
`The press recognized Corephotonics’ pioneering advances in dual-aperture camera
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`technology for smartphones. For example, Corephotonics demonstrated its dual-aperture camera
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`technology at Mobile World Congress (MWC) 2014 and received very positive reviews from the
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`tech media, including headlines such as “Corephotonics’ dual-camera tech will change smartphone
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`imaging”1 and statements like “We think [the Corephotonics dual camera technology] has the
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`potential to change the direction of smartphone photography.”2
`26.
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`Corephotonics now employs over 60 staff, the majority of whom are engineers,
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`scientists, and technologists. Corephotonics depends on its patents to protect its business and
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`continue to develop its innovative miniaturized multi-camera technologies, for mobile devices and
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`new applications. The customers of Corephotonics’ technology offerings include leading camera
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`module and mobile device manufacturers.
`27.
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`Corephotonics spent years demonstrating its technologies to Apple and discussing
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`potential collaborations and business arrangements. Apple, however, refused. Instead, Apple has
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`gone ahead and marketed its newest generations of iPhones with dual cameras that employ
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`Corephotonics’ innovative designs – without any regard to Corephotonics’ intellectual property
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`rights.
`
`
`imaging,” C|Net,
`smartphone
`tech will change
`1 “Corephotonics’ dual-camera
`https://www.cnet.com/news/corephotonics-dual-camera-tech-will-change-smartphone-imaging/
`2 “Best of Mobile World Congress: Samsung Galaxy S5, Mozilla $25 phone, smart glove and
`more,” C|Net, ”https://www.cnet.com/news/best-of-mobile-world-congress-samsung-galaxy-s5-
`mozilla-25-phone-smart-glove-and-more/
`5
`COMPLAINT
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`RUSS, AUGUST & KABAT
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`APPLE V. COREPHOTONICS
`IPR2020-00478
`Exhibit 2004
`Page 6
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`

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`Case 3:19-cv-04809 Document 1 Filed 08/14/19 Page 7 of 53
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`
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`B.
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`Apple’s Interest in Corephotonics’ Technology and Intellectual
`Property
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`28.
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`As one of its first acts as a company, Corephotonics reached out to Apple in the
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`hopes of establishing a strategic partnership. The founding team contacted someone they knew
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`from their previous work in digital camera technology, Graham Townsend, then Senior Director
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`Camera Hardware at Apple, highlighting some of the innovations Corephotonics was working on
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`related to a high-end compact camera module (“CCM”) solution. Throughout 2012, Corephotonics
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`and Apple had meetings regarding the early technologies that Corephotonics was developing
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`during that time. At an early meeting in June 2012, Corephotonics told Apple of its intention to
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`protect its current and future developments in multi-camera technology with patents.
`29.
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`In May 2013, an Apple engineer emailed Corephotonics communicating Apple’s
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`interest in learning more about Corephotonics’ other technology offerings and intellectual
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`property, in particular a telephoto lens that for a dual-aperture camera that included a telephoto
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`lens and associated software algorithms, and expressed interest in learning more about that
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`invention. Corephotonics provided a brief description of its telephoto lens architecture that was
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`part of its intellectual property and referenced other pending patents.
`30.
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`In June 2013, a meeting was held at Corephotonics’ headquarters in Tel Aviv, Israel
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`with Mr. Townsend and other Apple camera engineers. At this meeting Corephotonics described
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`its intellectual property and technology plans, which included a detailed presentation and
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`discussion of computational algorithms for dual-aperture cameras and numerous system
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`architecture and design details for a dual system. These design details closely resembled what was
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`eventually deployed in the market by Apple. At the same time, Corephotonics also engaged in
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`engineering discussions of its telephoto lens design, and sent a file describing the lens design and
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`including key design details. Corephotonics provided Apple with a full set of technology
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`descriptions covering what was discussed. At the meeting, Corephotonics provided Mr. Townsend
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`with a USB drive containing presentation files, which included a Corephotonics’ five element
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`telephoto lens design layout, information about Corephotonics’ algorithm, and a slide describing
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`Corephotonics’ pending patent applications and patent plans, including filing of applications
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`underlying the Asserted Patents. Corephotonics followed up with further correspondence, which
`6
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`COMPLAINT
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`RUSS, AUGUST & KABAT
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`APPLE V. COREPHOTONICS
`IPR2020-00478
`Exhibit 2004
`Page 7
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`

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`Case 3:19-cv-04809 Document 1 Filed 08/14/19 Page 8 of 53
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`included technical descriptions and responses to Apple’s technical inquiries. Later, in October
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`2013, a larger team, this time including members of Apple’s image processing and system groups,
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`visited Corephotonics’ Tel Aviv office again for more in-depth discussions, which included dual
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`camera processing methods.
`31.
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`During this period through late 2014, Corephotonics personnel visited Apple’s
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`facilities in California on numerous occasions, meeting with key members of Apple’s camera team,
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`including the leaders of Apple’s hardware and software efforts. Corephotonics personnel set up
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`numerous simulations and demonstrations of its technology for Apple. Apple further evaluated
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`Corephotonics’ test boards, lens modules, and simulation files at its own facilities, in the absence
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`of Corephotonics personnel.
`32.
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`During this period in 2014, Corephotonics learned from the contractor who was
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`manufacturing Corephotonics’ prototype telephoto lens modules that Apple had sought
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`Corephotonics’ samples from them without notifying Corephotonics, and the contractor had
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`rejected that request. Corephotonics then contacted Apple and agreed to provide Apple with
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`physical samples of Corephotonics’ lens and camera modules, which embody the claimed designs
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`of Corephotonics ’647, ’277, and ‘897 patents.
`33.
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`Apple also received “black box” simulation files for Corephotonics’ lens designs
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`and a software simulator for the computational algorithms for image processing, and also was
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`provided access to Corephotonics’ system prototypes, which simulated embodiments of U.S.
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`Patent Nos. 9,185,291 (“’291 patent”) and 9,538,152 (“’152 patent) (as well as continuations
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`therefrom, such as the ’233, ‘479, and ’408 patents asserted in this Complaint).
`34.
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`In May 2014, Corephotonics was told by Apple that high-level technical staff and
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`executives in Apple’s camera engineering group had observed a demonstration of Corephotonics’
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`technology and had reacted very positively. Corephotonics understood that Apple’s management
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`had determined to move forward and engage with Corephotonics.
`35.
`
`In June 2014, Apple expressed interest in licensing Corephotonics’ dual camera
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`algorithms and software for commercial use in its devices, and a meeting was arranged for July
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`30, 2014. Apple provided a business proposal prior to that meeting. Corephotonics provided
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`
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`7
`COMPLAINT
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`RUSS, AUGUST & KABAT
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`APPLE V. COREPHOTONICS
`IPR2020-00478
`Exhibit 2004
`Page 8
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`

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`Case 3:19-cv-04809 Document 1 Filed 08/14/19 Page 9 of 53
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`Apple’s business team with a description of its range of technology offerings and provided Apple
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`with a description of its (then) over ten patent families, including low-profile telephoto lens designs
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`for mobile cameras and algorithms for improving dual-aperture cameras with telephoto lenses.
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`During this meeting, in response to Corephotonics claim about the commercial value of its patents,
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`Apple’s lead negotiator responded that even if Apple infringed, it would take years and millions
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`of dollars in litigation before Apple might have to pay something.
`36.
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`After the meeting, Apple asked Corephotonics to provide a sample of its telephoto
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`lens. Apple indicated that it intended to evaluate Corephotonics’ lens design and that it could
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`potentially engage with Corephotonics on lens design technology depending on the outcome of
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`that evaluation.
`37.
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`By late August, business negotiations were halted by Apple. Technical discussions
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`between Apple and Corephotonics continued until later that year, while Corephotonics was waiting
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`to hear from Apple’s business team.
`38.
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`On November 18, 2014, an article appeared in the media reporting that Apple would
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`potentially adopt dual-aperture camera technology, suggesting that it would be similar to the dual
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`camera technology that Corephotonics had developed and presented earlier that year, and which
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`Corephotonics had been discussing over this period with Apple.3 Apple did not engage in further
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`efforts to obtain a license to Corephotonics’ intellectual property.
`39.
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`In January 2016, after sporadic contacts with Apple personnel through 2015,
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`Corephotonics again reached out to Apple. Corephotonics’ CEO, Dr. Mendlovic, emailed a high-
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`level hardware executive suggesting continued collaboration. Corephotonics pointed out,
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`“Corephotonics had the privilege to be the first to invent, implement and demonstrate dual cameras
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`which outperform the best single compact cameras. Thus, our IP portfolio is the widest and, in our
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`opinion, has the best defensive value for such applications.” Corephotonics offered to discuss
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`collaboration and joint projects with Apple. The Apple executive wrote back that he was looking
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`into it, and that another Apple engineer would be in touch. That engineer and a colleague from
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`3 See “Apple May Introduce ‘Biggest Camera Jump Ever’ in Next-Generation iPhone,”
`https://www.macrumors.com/2014/11/18/apple-biggest-camera-jump-ever/.
`8
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`COMPLAINT
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`RUSS, AUGUST & KABAT
`
`APPLE V. COREPHOTONICS
`IPR2020-00478
`Exhibit 2004
`Page 9
`
`

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`Case 3:19-cv-04809 Document 1 Filed 08/14/19 Page 10 of 53
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`Apple visited Corephotonics’ facility in Israel for an in-person meeting, at which Corephotonics
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`presented some of its most recent technology offerings.
`40.
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`At that meeting and in subsequent meetings and communications, Apple expressed
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`interest in learning more about Corephotonics’ technologies. Corephotonics indicated a desire to
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`formalize a business arrangement, and in June 2016, Mr. Townsend emailed Corephotonics
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`introducing them to Apple personnel on its business side to engage in setting up a deal that would
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`govern the technology collaboration. Corephotonics sent Apple a proposal, and in August 2016,
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`Apple followed up and asked Corephotonics to provide a proposal for licensing its intellectual
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`property to Apple. Corephotonics informed Apple that its intellectual property included over 25
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`patent families, and discussions continued to proceed.
`41.
`
`On September 7, 2016, Apple announced the iPhone 7 Plus, which included, for
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`the first time for Apple, a rear dual camera assembly including a telephoto camera for enhanced
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`zoom – one of Corephotonics’ core innovative concepts. Apple specifically touted the telephoto
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`camera on iPhone 7 Plus as a key feature. The hardware specifications and important software
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`functionalities were similar to what Corephotonics had shown and demonstrated to Apple
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`throughout the aforementioned exchanges starting in 2013.
`42.
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`By October 2016, negotiations between Corephotonics had stopped progressing,
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`and Corephotonics arranged a face-to-face meeting with Apple. Two meetings were set up, which
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`included technical and business personnel from Apple. During these meetings, Corephotonics
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`offered to negotiate an agreement with Apple for access to Corephotonics’ technology offerings
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`and patents. Corephotonics offered to share its patents with Apple employees at both meetings. At
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`the second meeting, Mr. Townsend stated that he was not permitted by his company to look at the
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`patents, and he asked Corephotonics instead to send it to Apple’s business personnel instead. One
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`of Apple’s business personnel followed up immediately thereafter with an unsolicited email
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`stating, “Please do not send any patents to us until further notice. Legal counsel might reach out
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`with any questions.”
`43.
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`Corephotonics did not hear from Apple’s legal counsel after receiving that email.
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`In an attempt to continue efforts to develop a business relationship, during 2017 Corephotonics
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`COMPLAINT
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`RUSS, AUGUST & KABAT
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`APPLE V. COREPHOTONICS
`IPR2020-00478
`Exhibit 2004
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`again met with and communicated with individuals from Apple’s camera team on several
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`occasions, but Apple no longer expressed interest in continuing to discuss a collaboration with
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`Corephotonics.
`44.
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`On October 31, 2017, Corephotonics wrote to Apple informing it that after
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`examining Apple’s iPhone 7 Plus and 8 Plus cameras and zoom functionality, it believed that these
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`products infringed certain of Corephotonics’ patents. Apple did not respond.
`45.
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`On November 6, 2017, Corephotonics filed a complaint alleging and describing the
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`infringement by Apple’s iPhone 7 Plus product of U.S. Patent Nos. 9,402,032 (“’032 patent”),
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`9,568,712 (“’712 patent”), the ’291 patent”, and the ’152 patent. That case is pending in this
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`District before the Honorable Judge Lucy Koh, Case No. 5:17-cv-06457-LHK, and is
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`administratively stayed pending resolution of inter partes review (“IPR”) proceedings initiated by
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`Apple against Corephotonics’ patents.
`46.
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`On April 16, 2018, Corephotonics wrote to Apple informing it that it had examined
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`Apple’s iPhone 7 Plus, iPhone 8 Plus, and iPhone X products and concluded those products
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`infringed U.S. Patent No. 9,857,568 (“the ’568 patent”) as well as recently allowed claims in U.S.
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`Patent Application 15/424,853 (’853 application), the latter of which is a continuation of the ’291
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`patent.
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`47.
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`On April 25, 2018, Apple responded to Corephotonics’ April 18, 2018
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`correspondence with a letter of its own, wherein Apple stated that Corephotonics had not
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`“articulate[d] any detail for its claim” relating to the ’568 patent and’853 application but suggested
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`that it had begun an “investigation into [Corephotonics’] allegations.”
`48.
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`On April 30, 2018, Corephotonics filed a second complaint alleging and describing
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`infringement by Apple’s iPhone 7 Plus, iPhone 8 Plus, and iPhone X products of the ’712 patent
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`and U.S. Patent No. 9,568,712 and the ’568 patent. That case is pending in this District before
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`Judge Koh, Case No. 5:18-cv-02555-LHK, and is administratively stayed pending the resolution
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`of related IPR proceedings.
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`Exhibit 2004
`Page 11
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`49.
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`On July 26, 2018, Corephotonics wrote to Apple to informing it that the ’853
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`application had been issued as the ’408 patent, and reiterated Corephotonics’ belief that the iPhone
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`X infringed the issued claims of the ’408 patent.
`50.
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`On August 8, 2018, Apple responded to Corephotonics’ July 26, 2018 letter,
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`contending again that Corephotonics had provided insufficient information regarding the ’408
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`patent and that such fact “impede[d] Apple’s investigation into [the] allegations.”
`51.
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`On November 30, 2018, Corephotonics wrote to Apple to inform it that Apple
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`infringed claims that would soon issue in U.S. Patent Application Nos. 15/540,676 (“the ’676
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`application”), 15/817,235 (“the ’235 application”), 15/976,391 (“the ’391 application”), and
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`15/976,422 (“the ’422 application”). Attached to that letter were charts, prepared by
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`Corephotonics, describing Apple’s infringement of certain recently-allowed claims of the ’408
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`patent, the ’391 application, the ’422 application; the ’235 application, and U.S. Patent Application
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`15/324,720 (“the ’720 application”).
`52.
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`Of the patent applications identified by Corephotonics in its November 30, 2018
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`the ’676 application issued as the ’840 patent;
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`the ’235 application issued as the ’277 patent;
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`letter, all subsequently matured into issued patents now asserted in this Complaint:
`•
`•
`•
`•
`•
`53.
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`the ’391 application issued as the ’897 patent;
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`the ’422 application issued as the ’647 patent; and
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`the ’720 application issued as the ’898 patent.
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`During the relevant time period, Corephotonics continued to prosecute and obtain
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`continuation patents on the patents it had already specifically identified and/or asserted against
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`Apple in its pending litigations. This included U.S. Application No. 16/048,242, which is a
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`continuation of the ’291 patent (and the ’408 patent, as well) and later issued as the ’479 patent.
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`C.
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`Apple’s Analysis of Corephotonics’ Patents and Patent Applications
`During Apple’s Pursuit of its Own Patents
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`54.
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`During the period that Apple was in discussions with Corephotonics, and
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`investigating and evaluating Corephotonics’ technology, Apple was filing its own patent
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`APPLE V. COREPHOTONICS
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`Exhibit 2004
`Page 12
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`applications on small-format camera designs, including telephoto cameras that could be used in a
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`mobile device. During this time, Corephotonics’ patents and related patent applications were
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`significant in the art. Apple was well aware of Corephotonics’ patents and related patent
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`applications, including the patents in suit and applications that issued as the patents in suit, as it
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`sought to obtain its own patents over Corephotonics’ prior art.
`55.
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`For instance, Apple filed U.S. Patent Application No. 14/069,027 (the “’027
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`application”), which later issued as U.S. Patent No. 9,223,118. On February 18, 2015, the U.S.
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`Patent & Trademark Office issued an Office Action in the prosecution of the ’027 application. The
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`examiner cited published application U.S. Pub. App. No. 2015/0029601A1 to Dror, et al. (the
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`“Dror Application”), as anticipating, or rendering obviousness in combination with other
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`references, all the pending claims of the ’027 application. The Dror Application is a family member
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`of certain of the patents asserted by Corephotonics in this action and its two previously-filed
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`actions (referred to herein nonexclusively as “Dror family” patents and applications). Amendments
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`and arguments associated with those amendments were filed on May 15, 2015, which extensively
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`discussed Corephotonics’ patent application and analyzed purported differences between its
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`disclosures and the claims of Apple’s ’027 application. The inventor of Apple’s ’027 application,
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`Roman Mercado continued to work for Apple through the introduction of the iPhone 7 Plus.
`56.
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`Apple was familiar with and had analyzed the extent of Corephotonics’ patent
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`portfolio throughout its pursuit of Apple’s own patents. By way of example, the earliest IDS that
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`Apple filed for the ’720 application, filed on September 30, 2015, included four references, of
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`which two of the four were Corephotonics patent applications. Other examples of Apple’s actual
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`knowledge and familiarity with Corephotonics’ patent portfolio include:
`• Apple also disclosed the Dror Application as prior art to its ’720 application, submitted in
`Apple’s March 24, 2016 IDS filing. Apple further disclosed the Dror Application as prior
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`art to its ’716 application and its ’136 application.
`• The ’291 patent to Shabtay et al. (of which multiple patents asserted in this Complaint are
`continuations, such as the ’233 patent, ’408 patent, and ‘479 patent) is cited on the face of
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`12
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`RUSS, AUGUST & KABAT
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`APPLE V. COREPHOTONICS
`IPR2020-00478
`Exhibit 2004
`Page 13
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`

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`Case 3:19-cv-04809 Document 1 Filed 08/14/19 Page 14 of 53
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`numerous patents assigned to Apple, such as U.S. Patent Nos. 9,769,389; 9,774,787;
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`9,781,345; 10,063,783; 10,122,931; 10,136,048; and 10,264,188.
`• Published patent applications within the same family as the ’291 patent (nonexclusively
`referred to herein as “Shabtay family” patents and app