`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Paper 18
`
`
`APPLE INC.,
`Petitioner
`v.
`COREPHOTONICS, LTD.,
`Patent Owner
`———————
`
`IPR2020-00489
`U.S. Patent 10,015,408
`_______________
`
`
`PETITIONER’S REPLY
`
`
`
`

`

`
`
`
`Petitioner’s Reply
`
` IPR2020-00489 (Patent No. 10,015,408)
`Table of Contents
`
`I. 
`II. 
`
`Introduction ...................................................................................................... 1 
`Claim Construction .......................................................................................... 1 
`A. 
`“smooth transition” (claim 6) ................................................................ 1 
`1. 
`Petitioner’s proposed construction is consistent with the
`construction adopted in the Institution Decision. ....................... 1 
`Patent Owner’s proposed construction imports an
`unsupported limitation of “no jump in the ROI region,” and
`should be rejected........................................................................ 2 
`III.  Claim 5 is Obvious over Golan in Combination with Kawamura. ................. 7 
`A. 
`Patent Owner mischaracterizes Golan as limited to miniature
`cameras using miniature lenses. ............................................................ 7 
`1. 
`Golan’s teachings include non-miniature cameras using non-
`miniature lenses. .......................................................................... 8 
`Patent Owner’s mischaracterization of Golan is based on its
`improper reliance on Golan’s example 5-Megapixel image
`sensor. ....................................................................................... 10 
`Patent Owner’s mischaracterization of Golan is further based
`on its misunderstanding of how Golan achieves “light weight
`electronic zoom.” ...................................................................... 12 
`A POSITA would have looked to the Kawamura design in selecting
`a design for Golan’s tele lens. ............................................................. 14 
`1. 
`Patent Owner’s no motivation to combine arguments are
`based on misunderstanding of “heavy” and “lightweight” in
`Golan and based on incorrect calculation of the scaling factor
`for using a Kawamura lens in Golan. ....................................... 14 
`Patent Owner’s list of miniature telephoto lens requirements
`should be rejected because they are based on
`mischaracterizing Golan as limited to miniature camera using
`miniature lenses. ........................................................................ 16 
`Patent Owner’s argument that a POSITA would have looked
`to one of the hundreds of known miniature lens designs,
`
`2. 
`
`2. 
`
`3. 
`
`B. 
`
`2. 
`
`3. 
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`
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`C. 
`
`D. 
`
`Petitioner’s Reply
`
` IPR2020-00489 (Patent No. 10,015,408)
`instead of Kawamura, when looking for lens to use in Golan
`is based on mischaracterization of Golan and its tele lens. ...... 17 
`Patent Owner’s analysis is incorrect because it is based on a
`POSITA’s understanding of technology in 1981 and incorrect
`understanding of ongoing relevance of older lens designs. ................ 20 
`Lens design software analysis supports the Golan and Kawamura
`combination. ........................................................................................ 22 
`1. 
`Patent Owner fails to provide any optics design software
`analysis to support his opinion, which a POSITA at the time
`of the invention would have performed to evaluate prior art. .. 22 
`To the extent that Golan is limited to miniature camera using
`miniature lenses, modifications or adjustments would have
`been within the level of a POSITA to accommodate the
`teachings of Kawamura in the system of Golan. ...................... 22 
`VI.  Claim 6 is Obvious over Golan in Combination with Kawamura. ............... 23 
`A.  Golan discloses “smooth transition” under the correct construction. . 24 
`B. 
`Patent Owner’s implicit importation of an extraneous requirement
`of addressing parallax should be rejected. .......................................... 24 
`Conclusion ..................................................................................................... 27 
`V. 
`IV.  Certificate of Word Count ............................................................................. 28 
`CERTIFICATE OF SERVICE ............................................................................ 29 
`
`
`2. 
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`Petitioner’s Reply
`
` IPR2020-00489 (Patent No. 10,015,408)
`PETITIONER’S EXHIBIT LIST
`Updated: March 25, 2021
`
`APPL-1001
`
`APPL-1002
`APPL-1003
`APPL-1004
`APPL-1005
`
`APPL-1008
`APPL-1009
`
`U.S. Patent No. 10,015,408 to Shabtay et al. (the “’408
`Patent”)
`Prosecution File History of the ’408 Patent (the “’853 App”)
`Declaration of Dr. José Sasián
`CV of Dr. José Sasián
`U.S. Patent Application Publication No. 2012/0026366 to Golan
`et al. (“Golan”)
`APPL-1006 Warren J. Smith, Modern Lens Design (1992) (“Smith”)
`APPL-1007
`JP Patent Application Publication No. S58-62609 to
`Kawamura (“Kawamura”), English translation, Declaration,
`and Original
`U.S. Patent No. 7,777,972 to Chen et al. (“Chen”)
`ZEMAX Development Corporation, ZEMAX Optical Design
`Program User’s Manual, February 14, 2011 (“ZEMAX User’s
`Manual”)
`U.S. Patent 7,990,422 to Ahiska et al. (“Ahiska”)
`U.S. Patent App. Pub. No. US2012/0314296 to Shabtay et al.
`(“Shabtay 296”)
`U.S. Patent No. 8,553,106 to Scarff (“Scarff”)
`Declaration of Dr. José Sasián Supporting Petitioner’s Reply
`(“Sup. Decl.”)
`Japanese Patent Pub. No. JP2013106289 to Konno (Original)
`
`APPL-1010
`APPL-1011
`
`APPL-1012
`(New) APPL-
`1013
`APPL-1014
`
`
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`
`
`APPL-1015
`
`APPL-1016
`
`(New) APPL-
`1017
`(New) APPL-
`1018
`(New) APPL-
`1019
`(New) APPL-
`1020
`(New) APPL-
`1021
`(New) APPL-
`1022
`(New) APPL-
`1023
`
`(New) APPL-
`1024
`(New) APPL-
`1025
`(New) APPL-
`1026
`
`
`
`Petitioner’s Reply
`
` IPR2020-00489 (Patent No. 10,015,408)
`Japanese Patent Pub. No. JP2013106289 to Konno, Certified
`English translation (“Konno”)
`Ralph E. Jacobson et al., The Manual of Photography:
`photographic and digital imaging, 9th Edition, 2000
`(“Jacobson”)
`Deposition transcript of Dr. Duncan Moore, March 11, 2021
`(“Moore Deposition”)
` U.S. Patent No. 9,185,291 to Shabtay et al. (“’291 Patent”)
`
` U.S. Patent No. 9,661,233 to Shabtay et al. (“’233 Patent”)
`
` U.S. Patent No. 10,326,942 to Shabtay et al. (“’942 Patent”)
`
`U.S. Patent App. Pub. No. 2008/0030592 to Border et al.
`(“Border”)
`U.S. Patent No. 8,896,697 to Golan et al. (“’697 Patent”)
`
`Rob Bates, The Modern Miniature Camera Objective: An
`Evolutionary Design Path from the Landscape Lens, 2013
`(“Bates”)
`Tamir Eshel, “IAI Unveils the Ghost – a Miniature UAV For
`Special Operations,” August 8, 2011 (“Eshel”)
`Warren J. Smith, Modern Lens Design, 2nd Edition, 2005
`(“Smith 2005”)
`NextVision MicroCam-D,
`https://www.aeroexpo.online/prod/nextvision-stabilized-
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`Petitioner’s Reply
`
` IPR2020-00489 (Patent No. 10,015,408)
`systems/product-185740-28436.html (“NextVision
`MicroCam-D”)
`Fujinon Broadcast ENG series Fujinon A36 x 10.5 and A36 x
`14.5 lenses (“Fujinon 36X Lenses”)
`Fujinon A36X14.5 BERD-R28 Ebay Listing, March 30, 2020,
`(“Fujinon 36X Lens Ebay Listing”)
`Kodak EasyShare V610 dual lens digital camera manual, 2006
`(“Kodak EasyShare V610)
`UAS VISION, “Lightweight UAS Demand Accelerates
`Development of Lightweight Payloads,”
`https://www.uasvision.com/2013/02/13/lightweight-uas-
`demand-accelerates-development-of-lightweight-payloads/,
`February 13, 2013 (“UAS VISION”)
`U.S. Patent No. 8,462,209 to Sun (“Sun”)
`
`U.S. Patent No. 7,974,460 to Elgersma (“Elgersma”)
`
`U.S. Patent No. 5,880,892 to Ohtake (“Ohtake”)
`
`NextVision-Sys.com 2012 Website Video Capture, September
`2, 2012 (“NextVision 2012 Website Video Capture”)
`NextVision Stabilized Systems Ltd. Company Profile,
`September 02, 2012 (“NetVision Company Profile”)
`
`(New) APPL-
`1027
`(New) APPL-
`1028
`(New) APPL-
`1029
`(New) APPL-
`1030
`
`
`(New) APPL-
`1031
`(New) APPL-
`1032
`(New) APPL-
`1033
`(New) APPL-
`10341
`(New) APPL-
`1035
`
`
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`
`I.
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`
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`
`Petitioner’s Reply
` IPR2020-00489 (Patent No. 10,015,408)
`
`Introduction
`For the reasons discussed in the Petition and elaborated below, the
`
`challenged claims of the ’408 Patent are unpatentable. Patent Owner’s argument
`
`that a POSITA would not have been motivated to combine Golan and Kawamura is
`
`based on mischaracterization of Golan as a miniature camera requiring miniature
`
`lenses, legally incorrect analysis based on computer simulation abilities and lens
`
`fabrication technology in the 1980s, and opinion testimony unsupported by
`
`underlying lens design software analysis. In addition, Patent Owner’s new
`
`construction seeks to import unsupported limitations into claim 6 to overcome
`
`clear disclosures of the actual limitations in the grounds instituted for trial.
`
`II. Claim Construction
`A. “smooth transition” (claim 6)
`
`1.
`
`Petitioner’s proposed construction is consistent with the
`construction adopted in the Institution Decision.
`In the Petition, Petitioner proposed to construe “smooth transition” as
`
`“transition with a reduced discontinuous image change,” for example, a transition
`
`with a continuous image change. Petition, 10-11. In its Preliminary Response,
`
`Patent Owner countered with a “smooth transition” construction from district court
`
`litigation for related ’291 Patent, which is “a transition between cameras or points
`
`of view that minimizes the jump effect.” POPR, 15-17. In the Institution
`
`Decision, the Board rejected Petitioner’s proposed construction “omit[ting]
`
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`Petitioner’s Reply
` IPR2020-00489 (Patent No. 10,015,408)
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`language directed to a transition between cameras or points of view,” and adopted
`
`
`
`
`
`the construction of “a transition between cameras or points of view that minimizes
`
`the jump effect.” Institution Decision, 10-11.
`
`In the context of claim 6 of the subject ’408 Patent, the language of “a
`
`transition between cameras or points of view” in the construction for “smooth
`
`transition” is redundant and unnecessary, because claim 6 itself provides “a smooth
`
`transition when switching between a low zoom factor (ZF) value and a higher ZF
`
`value or vice versa.” APPL-1001, 14:22-24; APPL-1013, ¶¶4-5. Given the
`
`language of the claim, Petitioner’s proposed construction is entirely consistent with
`
`that adopted in the Institution Decision, and Petitioner’s analysis applies to either
`
`construction. Id
`
`2.
`
`Patent Owner’s proposed construction imports an
`unsupported limitation of “no jump in the ROI region,” and
`should be rejected.
`In its Response, Patent Owner shifts from its positions in POPR and the ’291
`
`patent litigation, and proposes to construe “smooth transition” to instead mean “a
`
`transition that minimizes the jump effect such that there is no jump in the ROI
`
`region.” Response, 16 (emphasis added). To import the unsupported limitation of
`
`“no jump in the ROI region” into the claim term, Patent Owner mischaracterizes a
`
`statement in the specification of the ’408 Patent as a “clear, lexicographic statement,”
`
`and incorrectly applies this alleged “clear, lexicographic statement.” Patent Owner’s
`
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`Petitioner’s Reply
` IPR2020-00489 (Patent No. 10,015,408)
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`proposed construction is belied by the specification and the claim context of related
`
`
`
`
`
`patents, and should be rejected.
`
`a.
`
`Patent Owner mischaracterizes a statement in ’408 Patent
`describing examples as a “clear, lexicographic statement.”
`Patent Owner’s construction is based on mischaracterization of a statement
`
`in ’408 Patent describing examples as a “clear, lexicographic statement,”
`
`(Response, 15), and should be rejected. Regarding “smooth transition,” the ’408
`
`patent provides,
`
`“[1] When a dual-aperture camera switches the camera output between
`sub-cameras or points of view, a user will normally see a “jump”
`(discontinuous) image change. [2] However, a change in the zoom
`factor for the same camera and POV is viewed as a continuous change.
`[3] A “smooth transition” is a transition between cameras or POVs that
`minimizes the jump effect. [4] This may include matching the position,
`scale, brightness and color of the output image before and after the
`transition. [5] However, an entire image position matching between the
`sub-camera outputs is in many cases impossible, because parallax
`causes the position shift to be dependent on the object distance. [6]
`Therefore, in a smooth transition as disclosed herein, the position
`matching is achieved only in the ROI region while scale brightness and
`color are matched for the entire output image area.”
`
`
`APPL-1001, 10:35-51 (statements [1]-[6] numbered for reference).
`
`A POSITA would have understood that the descriptions in statements [4]-[6]
`
`are merely example techniques for achieving smooth transition, not definitions of
`
`smooth transition. APPL-1013, ¶¶7-8. Specifically, statement [4] provides that
`
`the smooth transition “may” include matching the position, scale, brightness and
`
`color, which are each examples of a technique for achieving smooth transition.
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`Petitioner’s Reply
` IPR2020-00489 (Patent No. 10,015,408)
`
`Where smooth transition is implemented using position matching, statement [5]
`
`
`
`
`
`provides that “in many cases” an entire image position matching is impossible,
`
`and indicates to a POSITA that smooth transition includes other cases where entire
`
`image position matching is possible. Statement [6] provides more description for
`
`the situation of statement [5] (i.e., when position matching is used but not possible
`
`for the entire image), and therefore does not provide a definition for smooth
`
`transition.
`
`
`
`Patent Owner’s reliance on “as disclosed herein” of statement [6] as
`
`evidence of a clear lexicographic statement is inapposite. The terms “as disclosed
`
`herein” or “disclosed herein” are used for more than ten times in the specification
`
`of the ’408 patent, and a POSITA would not have understood that using “as
`
`disclosed herein” or “disclosed herein” indicates a clear lexicographic statement.
`
`See, e.g., APPL-1001, 1:20, 3:30, 4:3, 4:19, 5:54, 5:58, 5:61, 6:11, 6:14, 6:21, 8:5,
`
`10:49, 12:64; APPL-1013, ¶9. In fact, the ’408 patent itself cautions that “[n]on-
`
`limiting examples of embodiments disclosed herein are described below,” and
`
`that “embodiments disclosed herein … should not be considered limiting in any
`
`way.” APPL-1001, 5:54-59. As such, a POSITA would not have understood
`
`statement [6] as a clear lexicographic statement based on its “as disclosed herein”
`
`language. Id.
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`b.
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`Petitioner’s Reply
` IPR2020-00489 (Patent No. 10,015,408)
`Patent Owner misapplies the alleged “clear, lexicographic
`statement.”
`Even if statement [6] were a “clear, lexicographic statement” as alleged, which
`
`it is not, Patent Owner misapplies the statement to reach its proposed construction
`
`importing extraneous limitations. APPL-1013, ¶10.
`
`Specifically, statement [6] provides “[6.1] the position matching is achieved
`
`[6.2] only in the ROI region [6.3] while scale brightness and color are matched [6.4]
`
`for the entire output image area.” APPL-1001, 10:48-51 (portions [6.1]-[6.4]
`
`numbered for reference). Instead of including the entire statement [6], Patent Owner
`
`picks just “in the ROI region” from portion [6.2] without including the important
`
`modifier “only,” discards completely portions [6.1] and [6.3]-[6.4], and adds an
`
`unsupported “no jump” without providing any explanation. APPL-1013, ¶11.
`
`As such, Patent Owner’s proposed construction is not supported even if
`
`statement 6 is a “clear, lexicographic statement,” and should be rejected.
`
`c.
`
`Patent Owner’s proposed construction is not supported by the
`claim context of related patents.
`Claim context of US Patent 9,185,291 (“’291 Patent”), US Patent 9,661,233
`
`(“’233 Patent”), and US Patent 10,326,942 (“’942 Patent), each related to the ’408
`
`Patent by continuation and sharing the specification of the ’408 patent, reinforce that
`
`descriptions in statements [4]-[6] of the smooth transition paragraph of the ’408
`
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`Petitioner’s Reply
` IPR2020-00489 (Patent No. 10,015,408)
`
`patent are merely examples for achieving smooth transition, and not definitions of
`
`
`
`
`
`smooth transition. APPL-1013, ¶¶12-14.
`
`For example, the ’291 Patent recites in independent claim 1 “a smooth
`
`transition,” and further recites in claim 3 depending from claim 1 “a region of
`
`interest (ROI).” APPL-1018, 13:18-19; 29-30. Because claim 3 depends from and
`
`further limits claim 1, a POSITA would have understood that “smooth transition” may
`
`be achieved, for example, by a technique performed in the ROI, but is not limited by a
`
`definition of “no jump in the ROI region” as proposed by Patent Owner. APPL-1013,
`
`¶13.
`
`Similarly, from claims of the ’233 and ’942 Patents, a POSITA would have
`
`understood that “smooth transition” may be achieved by example techniques
`
`including position matching (in the ROI or not), matching scale, brightness, or color,
`
`as described in statements [4]-[6]. APPL-1013, ¶14; see APPL-1019, 13:27-54 (’233
`
`Patent reciting, in independent claim 1 “reduce an image jump effect … for
`
`performing position matching” and in dependent claims 3, 4, 5, and 6 respectively
`
`“the position matching is performed in a region of interest,” to reduce the image
`
`jump effect “by matching scale,” “by matching brightness,” “by matching color”);
`
`APPL-1020, 13:35-55 (’942 Patent reciting, in independent claim 1 “shifting …
`
`according to a distance of an object in a Tele image region of interest (ROI)” and in
`
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`Petitioner’s Reply
` IPR2020-00489 (Patent No. 10,015,408)
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`dependent claims 2 and 3 “matching scale” and “to match brightness and color”
`
`
`
`
`
`respectively).
`
`III. Claim 5 is Obvious over Golan in Combination with Kawamura.
`Patent Owner argues that claim 5 is not invalid because “[a] POSITA would
`
`not have been motivated to utilize the Kawamura lens designs in the Golan system,
`
`either unmodified or scaled to a smaller size.” Response, 32. Patent Owner does
`
`not directly dispute any particular limitation of claim 5.
`
`As explained below, Patent Owner’s argument of no motivation to combine
`
`Golan and Kawamura is based on its incorrect premise that Golan’s digital camera
`
`teachings are limited to a miniature camera allegedly requiring miniature lenses,
`
`based on legally incorrect analysis based on computer simulation abilities and lens
`
`fabrication technology in 1981, and based on opinion testimony unsupported by
`
`any underlying lens design software analysis. Patent Owner’s arguments should
`
`be rejected for each of these reasons.
`
`A.
`
`Patent Owner mischaracterizes Golan as limited to miniature
`cameras using miniature lenses.
`
`Patent Owner argues that Golan “calls for the use of miniature digital
`
`sensors,” (Response, 1), and that because cameras using such sensors are
`
`“considered miniature cameras,” Golan “contemplates the use of miniature camera
`
`modules.” Response, 21. However, a POSITA would have understood that
`
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`Petitioner’s Reply
` IPR2020-00489 (Patent No. 10,015,408)
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`Golan’s teachings are not limited to miniature cameras. APPL-1013, ¶15. Patent
`
`
`
`
`
`Owner’s no motivation to combine arguments are based on the incorrect
`
`understanding that Golan is limited to miniature cameras using miniature lenses,
`
`and should be rejected.
`
`1.
`
`Golan’s teachings include non-miniature cameras using
`non-miniature lenses.
` A POSITA would have understood that Golan’s teachings are not limited to
`
`miniature cameras used in mobile devices such as cellphones, and instead include
`
`applications for conventional digital still cameras and other commercial, industrial
`
`and security applications including air-born vehicles/drones applications. APPL-
`
`1013, ¶16. Specifically, Golan never mentions “miniature,” and does not establish
`
`a dimension limitation on either its imaging system or image sensors. As such, a
`
`POSITA would have understood that Golan’s teachings apply to imaging systems
`
`of various sizes using any suitable image sensors. Id.
`
`A POSITA’s understanding of the applicability of Golan’s teachings to
`
`applications beyond the mobile device realm is confirmed by other disclosures
`
`from Golan’s inventors and assignee, NextVision Stabilized Systems Ltd.
`
`(“NextVision”). APPL-1013, ¶17. See APPL-1034 (approximately 4:04 minutes
`
`of video capture including authentication (0:00-0:50min) of flash content retrieved
`
`from an archive.org crawl of the nextvision-sys.com website of September 2, 2012,
`
`depiction (0:50-1:12min) of Nextvision and MicroCam-D product information, and
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`Petitioner’s Reply
` IPR2020-00489 (Patent No. 10,015,408)
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`video (1:22min) from MicroCam-D on a flying drone with “digital zoom” at
`
`
`
`
`
`2:44min and 3:21min); APPL-1035 (captured from APPL-1034 at 0:52min and
`
`reproduced below, illustrating dimensions of MicroCam-D); APPL-1022, 1:14-18
`
`(NextVision patent describing an imaging system “mounted on an air-born
`
`vehicle”); APPL-1024, 2 (describing an unmanned aviation vehicle using
`
`“MicroCam D from Nextvision”); APPL-1026; APPL-1030, 2.
`
`
`
`
`
`APPL-1035 (Captured From APPL-1034 at 0:52min)
`
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`2.
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`
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`Petitioner’s Reply
` IPR2020-00489 (Patent No. 10,015,408)
`Patent Owner’s mischaracterization of Golan is based on its
`improper reliance on Golan’s example 5-Megapixel image
`sensor.
`Patent Owner argues a POSITA would not have used the Kawamura lens
`
`unmodified in Golan because of Golan’s use of “a tiny 5 megapixel sensor.”
`
`Response, 33. Patent Owner further argues that a POSITA would not have scaled
`
`the Kawamura lens to Golan because “the Kawamura lens would need to be scaled
`
`down by a factor of around 14x to 20x in order to provide the same field of view
`
`on a 5 megapixel sensor,” and such “scaling of conventional lens designs to
`
`miniature size is impractical.” Response, 34, 37. Patent Owner’s arguments
`
`should be rejected because they improperly rely on Golan’s example 5-Megapixel
`
`image sensor as a requirement, because they fail to recognize that a POSITA
`
`would have used other sensors (e.g., of different megapixel number or different
`
`dimensions) in Golan’s systems, and because scaling to accommodate a sensor size
`
`was practical and with the skill of a POSITA, as demonstrated by Dr. Sasián.
`
`APPL-1013, ¶18.
`
`Golan provides, “[f]or example, having a 5 Megapixel, 2592x1944, image
`
`sensor array and an output resolution frame of 400x300 yields maximal lossless
`
`electronic zoom of 6.48.” APPL-1005, [0004]. A POSITA would have
`
`understood that Golan’s description of the 5-megapixel image sensor array is
`
`merely an example, not a requirement. APPL-1013, ¶19. Patent Owner’s own
`
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`Petitioner’s Reply
` IPR2020-00489 (Patent No. 10,015,408)
`
`expert agrees that because Golan only “uses this [5-megapixel image sensor array]
`
`
`
`
`
`as an example,” “there must be – may be other choices.” APPL-1017, 141:14-15.
`
`Patent Owner states, without providing a citation, “even Apple’s expert
`
`agrees, using Kawamura’s lenses in Golan would require scaling it down by more
`
`than a factor of 10.” Response, 2. But Dr. Sasián never provided such agreement.
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`On the contrary, Dr. Sasián explains that scaling is “depending on the choice of
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`image sensors,” and scaling down the lens prescriptions in Kawamura by a factor
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`of roughly ten for an example 5-megapixel sensor in Golan is only “one
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`possibility.” EX. 2005, 47:15-17; 49:4-18; APPL-1013, ¶20.
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`Furthermore, even if Golan were limited to a 5-megapixel sensor, Patent
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`Owner’s argument that this requires a 1/4'' or 1/3'' sensor is incorrect, and in fact,
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`contrary to its own expert’s testimony. See, e.g., Response, 1, 20; APPL-1017,
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`133:2-6 (Patent Owner’s own expert stating that he does not believe Golan
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`provides a required image sensor size). A POSITA would have understood that
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`image sensors of different dimensions, for example, a 1/2.5'' sensor, may be used
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`in Golan. See APPL-1029, 62 (describing using a 1/2.5'' CCD image sensor in a
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`dual lens digital camera to provide a 5.3-megapixel image); APPL-1013, ¶21.
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`3.
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`Petitioner’s Reply
` IPR2020-00489 (Patent No. 10,015,408)
`Patent Owner’s mischaracterization of Golan is further
`based on its misunderstanding of how Golan achieves “light
`weight electronic zoom.”
`Patent Owner argues that Golan uses miniature digital sensors (1/4" or 1/3"
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`sensor format) “to achieve its stated goals of light weight and low cost.”
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`Response, 1. Patent Owner’s argument misapprehends how Golan achieves “light
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`weight electronic zoom,” and should be rejected. APPL-1013, ¶22.
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`Golan describes that a camera with a single optical zoom lens having a large
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`dynamic zoom range typically requires “heavy and expensive lenses.” APPL-
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`1005, [0007]. An example of such a heavy and expensive lens is a Fujinon
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`A36X14.5 lens, an optical zoom lens providing a zoom ratio of 36x. APPL-1027,
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`1; APPL-1013, ¶23. The Fujinon A36X14.5 lens is heavy with a weight of 4.58kg
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`(about 10 pounds) and a length of 363.3 mm (about 14.3"), and is expensive (e.g.,
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`a used one priced on eBay for over $10,000). Id.; APPL-1028, 1.
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`To achieve “light weight electronic zoom,” Golan replaces a single optical
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`zoom lens with two fixed focal length lenses and “two (or more) image sensors,
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`having different fixed FOV” to achieve light weight electronic zoom with a large
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`lossless zooming range. APPL-1005, [0009]; APPL-1013, ¶24; APPL-1017,
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`137:20-24 (Patent Owner’s own expert testified that Golan’s light weight digital
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`zoom is achieved by using a wide lens and a telephoto lens instead of using a
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`single conventional zoom lens).
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`Petitioner’s Reply
` IPR2020-00489 (Patent No. 10,015,408)
`A POSITA would have understood that, in Golan, the terms “heavy,”
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`“expensive,” and “light weight” are relative. APPL-1013, ¶25. For example,
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`compared to a camera with a single Fujinon A36X14.5 lens, according to Golan’s
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`teachings, a POSITA could and would have achieved light weight digital zoom of
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`36x by using a wide lens and a telephoto lens (e.g., based on Kawamura’s lens
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`design) that are cheaper and lighter than the Fujinon A36X14.5 lens. As such,
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`Golan does not require using 1/4" or 1/3" miniature digital sensors to achieve a
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`cheaper lightweight digital zoom.
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`Additionally, Patent Owner’s own expert admits that lightweight cameras
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`may be used in applications including drones, endoscope applications, and space
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`applications, without using miniature lenses as defined in the context of cellphone.
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`APPL-1017, 143:16-145:19; 148:16-19.
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`It is worth noting that Patent Owner’s expert has worked on cameras for
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`drones, (APPL-1017, 146:15-18) and admitted that “weight is incredibly
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`important” in drones because “the most important thing is how long can you keep
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`the drone up there. And the lighter it is, the better.” Id., 147:7-14. However,
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`Patent Owner and its expert completely fail to consider drone applications (e.g.,
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`gimbal-stabilized cameras for drones) when evaluating motivations to combine
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`Golan and Kawamura. APPL-1017, 164:13-165:18.
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`Petitioner’s Reply
` IPR2020-00489 (Patent No. 10,015,408)
`B. A POSITA would have looked to the Kawamura design in
`selecting a design for Golan’s tele lens.
`1. Patent Owner’s no motivation to combine arguments are
`based on misunderstanding of “heavy” and “lightweight” in
`Golan and based on incorrect calculation of the scaling
`factor for using a Kawamura lens in Golan.
`First, regarding using Kawamura unmodified in Golan, Patent Owner argues
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`that, a POSITA would not have been motivated to do so because “the goal of
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`Golan was to avoid ‘heavy and expensive lenses’,” and in the context of camera
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`design, “the 7-inch Kawamura lenses would have been considered ‘heavy’.”
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`Response, 32. Patent Owner’s argument, based on misunderstandings of Golan’s
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`use of “heavy,” “expensive,” and “light weight,” and how Golan achieves “light
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`weight electronic zoom,” should be rejected. APPL-1013, ¶26.
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`As discussed above at III.A.3, in Golan, the terms “heavy,” “expensive,” and
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`“light weight” are relative. As such, compared to a camera with a single optical
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`zoom lens (e.g., Fujinon A36X14.5 lens), in the combination of Golan and
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`Kawamura, a POSITA would have achieved light weight digital zoom of 36x by
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`using a wide lens and a telephoto lens based on Kawamura’s lens design that are
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`cheaper and lighter than that single optical zoom lens. APPL-1013, ¶27.
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`Patent Owner further argues that a POSITA would not have used Kawamura
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`unmodified in Golan because Golan’s sensors dimensions are much smaller than a
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`56mm x 67mm film size of Kawamura. Response, 34. However, as explained at
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`Petitioner’s Reply
` IPR2020-00489 (Patent No. 10,015,408)
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`V.A, Golan does not establish sensor dimension limitations and, when applying
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`Golan’s teachings, a POSITA would have used image sensors of dimensions
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`suitable for a particular application, including sensors with sizes similar to a film
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`size of Kawamura. APPL-1013, ¶28; see, e.g., APPL-1031, 2:31-45 (describing
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`using a 60mm x 45mm image sensor in applications including unmanned aerial
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`vehicles); APPL-1032, 1:10, 25-26 (using a 24 mm x 36 mm image sensor in
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`applications including unmanned aerial vehicles); APPL-1013, ¶28.
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`Second, Patent Owner argues a POSITA would not have been motivated to
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`scale Kawamura because “Kawamura lens would need to be scaled down by a
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`factor of around 14x to 20x in order provide the same field of view on a 5-
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`megapixel sensor,” and because allegedly “scaling lens designs by a large factor is
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`not done in practice.” Response, 34. Patent Owner’s requirement for such a large
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`scaling factor is incorrect because it is based on an example 5-megapixel sensor of
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`Golan and unwarranted presumptions regarding the dimensions of such a sensor,
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`and ignores other possible sensor formats for Golan. APPL-1013, ¶29.
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`Furthermore, Patent Owner’s calculation completely ignores any field of view
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`adjustment to the Kawamura lens a POSITA would have performed when
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`combining Golan and Kawamura. Id.
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`As explained by Dr. Sasián with examples in Table 1 of the supporting
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`declaration, in the combination of Golan and Kawamura, a POSITA would have
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`Petitioner’s Reply
` IPR2020-00489 (Patent No. 10,015,408)
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`understood that sensors of various formats may be used in the combination of
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`
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`Golan and Kawamura based on the application, would have applied the appropriate
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`scaling factor based on the image sensor format (e.g., scaling factors less than 10
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`for image sensors of 1/3" or greater), and would have found that modification of
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`Kawamura’s lens for the combination is practical. APPL-1013, ¶¶30-31; Table 1.
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`Further, a POSTA would have found it practical, and indeed, would have modified
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`the field of view of Kawamura’s lens for a tele field of view that’s appropriate for
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`a particular application (e.g., conventional digital still cameras, air-born
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`vehicles/drones applications, etc.), including the example Narrow_FOV described
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`in Golan. Id. Dr. Sasián confirms, based on ZEMAX analysis within the skills of
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`a POSITA, successful scaling of representative Kawamura Example 1 in a
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`combination of Golan and Kawamura (e.g., with a scaling factor of 6.4 with a 1/3''
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`image sensor and a full angle tele FOV of 10.98°). Id., ¶33, Appendix.A.
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`2.
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`Patent Owner’s list of miniature telephoto lens
`requirements should be rejected because they are based on
`mischaracterizing Golan as limited to miniature camera
`using miniature lenses.
`Patent Owner alleges a list of miniature telephoto lens requirements for a
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`telephoto lens in Golan including (1) a scaling factor of 10x or more for
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`Kawamura, (2) an aspheric design with plastic elements, (3) an aperture stop near
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`the first lens element, and (4) a small F-Number between 2 and 3. Response, 33-
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`51. As discussed abov