UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`APPLE INC.,
`Petitioner
`v.
`COREPHOTONICS LTD.,
`Patent Owner
`
`_______________
`U.S. Patent No. 10,015,408
`_______________
`DECLARATION OF JOSÉ SASIÁN, PH.D.
`UNDER 37 C.F.R. § 1.68 IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW
`
`APPL-1003 / Page 1 of 68
`Apple v. Corephotonics
`
`

`

` Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`TABLE OF CONTENTS
`
`I.
`INTRODUCTION ........................................................................................... 1
`II. QUALIFICATIONS ........................................................................................ 3
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 7
`IV. RELEVANT LEGAL STANDARDS ............................................................. 9
`A. Anticipation ........................................................................................... 9
`B. Obviousness ........................................................................................... 9
`V. THE ’408 PATENT ....................................................................................... 11
`A.
`Summary of the ’408 Patent ................................................................ 11
`B.
`Prosecution History of the ’408 Patent ............................................... 14
`VI. CLAIM CONSTRUCTION .......................................................................... 16
`A. “smooth transition” (claim 6) ......................................................... 16
`VII. GROUNDS .................................................................................................... 18
`A. Ground 1: Claims 5-6 are unpatentable under 35 U.S.C. § 103 over
`Golan and Kawamura .......................................................................... 18
`1.
`Summary of Golan .................................................................... 18
`2.
`Summary of Kawamura ............................................................ 20
`3.
`Reasons to Combine Golan and Kawamura ............................. 24
`4.
`Claim 5 ...................................................................................... 28
`5.
`Claim 6 ...................................................................................... 48
`VIII. DECLARATION ........................................................................................... 61
`IX. APPENDIX .................................................................................................... 62
`A. Analysis of Kawamura Example 1 as input in ZEMAX lens design
`software (February 14, 2011 version) ................................................. 62
`Analysis of Kawamura Example 2 as input in ZEMAX lens design
`software ............................................................................................... 63
`Analysis of Kawamura Example 3 as input in ZEMAX lens design .. 64
`C.
`D. Analysis of Kawamura Example 4 as input in ZEMAX lens design
`software ............................................................................................... 65
`
`B.
`
`
`
`- i -
`
`APPL-1003 / Page 2 of 68
`
`

`

` Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`
`
`
`
`
`
`
`
`
`
`
`
`- ii -
`
`APPL-1003 / Page 3 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`I.
`INTRODUCTION
`
`1.
`
`I, José Sasián, have been retained by counsel for Apple Inc. (“Apple”
`
`or “Petitioner”) as a technical expert in connection with the proceeding identified
`
`above. I submit this declaration in support of Apple’s Petition for Inter Partes
`
`Review of U.S. Patent No. 10,015,408 (“the ’408 Patent”).
`
`2.
`
`Compensation for my work in this matter is based on an hourly rate.
`
`In addition, reasonable and customary expenses associated with my work and
`
`testimony in this matter are reimbursed. This compensation is not contingent on
`
`the outcome of this matter, nor is it contingent on the specifics of my testimony. I
`
`have no personal or financial stake, nor any interest in the outcome of the present
`
`proceeding.
`
`3.
`
`In the preparation of this declaration, I have studied:
`
`(1) The ’408 Patent, APPL-1001;
`
`(2) The prosecution file history of the ’408 Patent (’853 App), APPL-
`
`1002;
`
`(3) U.S. Patent Application Publication No. 2012/0026366 to Golan, et al.
`
`(“Golan”), APPL-1005;
`
`(4) Warren J. Smith, MODERN LENS DESIGN (1992) (“Smith”), APPL-
`
`1006;
`
`
`
`- 1 -
`
`APPL-1003 / Page 4 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`JP Patent Application Publication No. S58-62609 to Kawamura
`(5)
`
`(“Kawamura”), Certified English translation and Original, APPL-1007;
`
`(6) U.S. Patent No. 7,777,972 to Chen et al. (“Chen”), APPL-1008;
`
`(7) ZEMAX Development Corporation, ZEMAX Optical Design
`
`Program User’s Manual, February 14, 2011 (“ZEMAX User’s Manual”), APPL-
`
`1009;
`
`(8) U.S. Patent No. 7,990,422 to Ahiska et al. (“Ahiska”), APPL-1010;
`
`(9) U.S. Patent App. Pub. No. US20120314296 to Shabtay et al. (“Shabtay
`
`296”), APPL-1011;
`
`(10) U.S. Patent No. 8,553,106 to Scarff (“Scarff”), APPL-1012;
`
`(11) Japanese Patent Pub. No. JP2013106289 to Konno et al. (“Konno
`
`Japanese”), APPL-1014;
`
`(12) Japanese Patent Pub. No. JP2013106289 to Konno et al., Certified
`
`English translation (“Konno”), APPL-1015;
`
`(13) Jacobson et al., The Manual of Photography – Photographic and
`
`Digital Imaging, 2000 (“Jacobson”), APPL-1016.
`
`4.
`
`In forming the opinions expressed below, I have considered:
`
`(1) The documents listed above;
`
`(2) References on the face of the ’408 Patent, including:
`
`a. U.S. Patent Application Pub. No. 2017/0276911 to Huang;
`
`
`
`- 2 -
`
`APPL-1003 / Page 5 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`b. U.S. Patent Application Pub. No. 2009/0002839 to Sato;
`
`c. U.S. Patent Application Pub. No. 2013/0335833 to Liao.
`
`(3) Any additional documents discussed below; and
`
`(4) My own knowledge and experience based upon my work in the fields
`
`of imaging systems as described below.
`
`II. QUALIFICATIONS
`
`5. My qualifications and professional experience are described in my
`
`Curriculum Vitae, a copy of which can be found in exhibit APPL-1004. The
`
`following is a brief summary of my relevant qualifications and professional
`
`experience.
`
`6.
`
`I have substantial academic and industry experience with imaging
`
`systems, including the design and integration of optics, sensors, and digital
`
`processing in imaging systems. My research interests have included most aspects
`
`of image generation and creation, and the major themes of my research has been
`
`directed to optical sciences and optical engineering, including optical
`
`instrumentation, optical design, and optical fabrication and testing.
`
`7.
`
`I am currently a full-time, tenured Professor of Optical Sciences at the
`
`College of Optical Sciences at the University of Arizona in Tucson, Arizona, a
`
`position I have held since 2002. As a professor, I teach and perform research in the
`
`field of imaging systems. For example, I teach my students how to design lenses
`
`
`
`- 3 -
`
`APPL-1003 / Page 6 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`and mirrors and how to think about light so that they can design sharp imaging
`
`systems.
`
`8.
`
`As part of my academic and research responsibilities I am frequently
`
`involved with the design, fabrication, and testing of optical devices. Prior to
`
`receiving tenure, I was an Associate Professor of Optical Sciences at the University
`
`of Arizona from 1995 to 2001. Prior to joining the University of Arizona faculty, I
`
`was a member of the technical staff of AT&T Bell Laboratories from 1990 to
`
`1995. From 1984 to 1987, I was a Research Assistant, and from 1988 to 1990, I
`
`was a Research Associate, in the Optical Sciences Center at the University of
`
`Arizona. From 1976 to 1984, I was an optician at the Institute of Astronomy at the
`
`University of Mexico.
`
`9.
`
`I received a Bachelor of Science degree in Physics from the
`
`University of Mexico in 1982, a Master of Science degree in Optical Sciences from
`
`the University of Arizona in 1987, and a Ph.D. degree in Optical Sciences from the
`
`University of Arizona in 1988. My research areas include optical design,
`
`fabrication, and testing of optical instruments, astronomical optics, diffractive
`
`optics, opto-mechanical design, light in gemstones, lithography optics, and light
`
`propagation.
`
`10. At the University of Arizona, I have taught the courses Lens Design
`
`OPTI 517 (1997-present), Introduction to Aberrations OPTI 518 (2005-present),
`
`
`
`- 4 -
`
`APPL-1003 / Page 7 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`Advanced Lens Design OPTI 696A (2008, 2012, 2017), Illumination Optics
`
`Seminar (1997-2000), Introduction to Opto-mechanics OPTI 690 (1998, 2001,
`
`2003, 2004, 2005) and Optical Shop Practices OPTI 597A (1996-present). I teach
`
`students how to design lens systems, how to grind, polish, and test aspheric
`
`surfaces, how to mount lenses properly so that their physical integrity is preserved,
`
`and how to align lens systems.
`
`11.
`
`I have directed several student reports, theses, and dissertations in the
`
`areas of optical imaging. I have lectured regarding my work, and have published,
`
`along with students and colleagues, over one hundred scientific papers in the area
`
`of optics. These include technical papers, student reports and theses done under my
`
`direction, related to miniature lenses. For example:
`
`• Yufeng Yan, Jose Sasian, "Miniature camera lens design with a freeform
`
`surface," Proc. SPIE 10590, International Optical Design Conference
`
`2017, 1059012 (27 November 2017); doi: 10.1117/12.2292653
`
`• Dmitry Reshidko, Jose Sasian, “Optical analysis of miniature lenses with
`
`curved imaging surfaces,” Appl. Opt. Oct. 54(28):E216-23, 2015.
`
`• Sukmock Lee, Byongoh Kim, Jiyeon Lee, and Jose Sasian, “Accurate
`
`determination of distortion for smart phone cameras,” Applied Optics,
`
`Vol. 53, Issue 29, pp. H1-H6 (2014).
`
`
`
`- 5 -
`
`APPL-1003 / Page 8 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`• Ying Ting Liu, “Review and Design of a Mobile Phone Camera Lens for
`
`21.4 Mega-Pixels Image Sensor,” M. Sc. Report, University of Arizona,
`
`2017.
`
`• Luxin Nie, “Patent Review of Miniature Camera Lenses,” M. Sc. Report,
`
`University of Arizona, 2017.
`
`• Cheng Kuei-Yeh, “Cell phone zoom lens design and patent research,” M.
`
`Sc. Report, University of Arizona, 2010.
`
`• Rob Bates, “Design for Fabrication: Miniature Camera Lens Case
`
`Study,” M. Sc. Report, University of Arizona, 2008.
`
`12. Since 1995, I have been a consultant and have provided to industry
`
`solutions to a variety of projects that include lenses for cell-phones, lenses for
`
`microscopes, and lenses for fast speed photography. I also have consulted in the
`
`area of plastic optics. I hold patents and patent applications related to lens systems.
`
`13.
`
`I have been a topical editor and reviewer for the peer-reviewed
`
`journals Applied Optics and Optical Engineering. I am a fellow of the International
`
`Society for Optics and Photonics (SPIE), a fellow of the Optical Society of
`
`America (OSA), and a lifetime member of the Optical Society of India.
`
`14.
`
`I have served as a co-chair for the conferences “Novel Optical
`
`Systems: Design and Optimization” (1997-2006), “Optical systems alignment,
`
`tolerancing, and verification” (2007-2019), and “International Optical Design
`
`
`
`- 6 -
`
`APPL-1003 / Page 9 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`Conference,” (2002). I have taught in Japan (2014, 2016, and 2017) the course:
`
`Advanced Lens Design: Art and Science.
`
`15.
`
`I have been a co-editor of approximately 24 published conference
`
`proceedings from SPIE. I am the author of the book, "Introduction to Aberrations
`
`in Optical Imaging Systems," by Cambridge University Press, 2013, and of the
`
`book, “Introduction to Lens Design,” by Cambridge University press 2019. I am
`
`named as an inventor on approximately 13 U.S. patents.
`
`16. A list of my publications is contained in my CV at exhibit APPL-
`
`1004.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`17.
`
`I understand that the level of ordinary skill may be reflected by the
`
`prior art of record, and that a Person of Ordinary Skill in The Art (“POSITA”) to
`
`which the claimed subject matter pertains would have the capability of
`
`understanding the scientific and engineering principles applicable to the pertinent
`
`art. I understand that a POSITA has ordinary creativity, and is not an automaton.
`
`18.
`
`I understand that there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention; (2) the
`
`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems.
`
`
`
`- 7 -
`
`APPL-1003 / Page 10 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`19.
`I am familiar with the imaging system art pertinent to the ’408 Patent.
`
`I am also aware of the state of the art at the time the application resulting in the
`
`’408 Patent was filed. I have been informed by counsel to Apple that the earliest
`
`claimed priority date for the ’408 Patent is June 13, 2013, although any given
`
`claim of the ’408 Patent may or may not be entitled to the earliest claimed date.
`
`20. Based on the technologies disclosed in the ’408 Patent and the claims
`
`discussed below, I believe that a POSITA would include someone who had, as of
`
`the claimed priority date of the ’408 patent, a bachelor’s degree or the equivalent
`
`degree in electrical and/or computer engineering, physics, optical sciences or a
`
`related field and 2-3 years of experience in imaging systems including optics and
`
`image processing. Such a person would have had experience in analyzing,
`
`tolerancing, adjusting, and optimizing multilens systems with lens design
`
`software, would have been familiar with the specifications of lens systems, and
`
`would be familiar with image sensors and image processing. In addition, I
`
`recognize that someone with less formal education but more experience, or more
`
`formal education but less experience could have also met the relevant standard for
`
`a POSITA. I believe that I am at least a POSITA and, furthermore, I have
`
`supervised students and engineers who were also POSITAs. Accordingly, I
`
`believe that I am qualified to opine from the perspective of a POSITA regarding
`
`the ’408 Patent and the claims discussed below.
`
`
`
`- 8 -
`
`APPL-1003 / Page 11 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`21. For purposes of this Declaration, unless otherwise noted, my opinions
`
`and statements, such as those regarding the understanding of a POSITA (and
`
`specifically related to the references I listed above), reflect the knowledge that
`
`existed in the art before the earliest claimed priority date of the ’408 Patent.
`
`IV. RELEVANT LEGAL STANDARDS
`
`22.
`
`I have been asked to provide my opinions regarding whether claims 5-
`
`6 (the “Challenged Claims”) of the ’408 Patent would have been obvious to a
`
`POSITA at the time of the alleged invention in light of the prior art.
`
`23.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ’408 Patent, I am relying on certain legal
`
`principles explained to me by counsel to Apple.
`
`24.
`
`I understand that a claim is unpatentable if it is anticipated under 35
`
`U.S.C. § 102 or obvious under 35 U.S.C. § 103.
`
`A. Anticipation
`
`25.
`
`I have been informed by counsel that a patent claim is unpatentable as
`
`anticipated if each element of that claim is present either explicitly or inherently in
`
`a single prior art reference. I have also been informed that, to be an inherent
`
`disclosure, the prior art reference must necessarily disclose the limitation.
`
`B. Obviousness
`
`26.
`
`I have been informed and I understand that a claimed invention is
`
`
`
`- 9 -
`
`APPL-1003 / Page 12 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`unpatentable under 35 U.S.C. § 103(a) 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 to a POSITA at the time the invention was made. I
`
`understand that the appropriate analysis for determining obviousness of a claimed
`
`invention takes into account factual inquiries, including the level of ordinary skill
`
`in the art, the scope and content of the prior art, and the differences between the
`
`prior art and the claimed subject matter as a whole.
`
`27.
`
`I have been informed and I understand that the United States Supreme
`
`Court has recognized several rationales for combining references or modifying a
`
`reference to show obviousness of claimed subject matter. Some of these rationales
`
`include the following: (a) combining prior art elements according to known
`
`methods to yield predictable results; (b) simple substitution of one known element
`
`for another to obtain predictable results; (c) use of a known technique to improve a
`
`similar device (method, or product) in the same way; (d) applying a known
`
`technique to a known device (method, or product) ready for improvement to yield
`
`predictable results; (e) choosing from a finite number of identified, predictable
`
`solutions, with a reasonable expectation of success; and (f) some teaching,
`
`suggestion, or motivation in the prior art that would have led a POSITA to modify
`
`the prior art reference or to combine prior art reference teachings to arrive at the
`
`claimed invention. I have also been informed and I understand that a
`
`
`
`- 10 -
`
`APPL-1003 / Page 13 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`demonstration of obviousness does not require a physical combination or bodily
`
`incorporation, but rather may be found based on consideration of what the
`
`combined teachings would have suggested to a POSITA at the time of the alleged
`
`invention.
`
`V. THE ’408 PATENT
`
`A.
`
`Summary of the ’408 Patent
`
`28. The ’408 Patent is titled “Dual Aperture Zoom Digital Camera” and
`
`was issued on July 3, 2018. (APPL-1001), ’408 Patent, Title. The ’408 Patent is
`
`directed to a “dual-aperture zoom digital camera operable in both still and video
`
`modes.” (APPL-1001), ’408 Patent, Abstract. In its background, the ’408 Patent
`
`acknowledges that using digital zooming is an “alternative approach [to optical
`
`zooming] for approximating the zoom effect,” and use of “multi-aperture imaging
`
`systems to approximate the effect of a zoom lens are known.” (APPL-1001), ’408
`
`Patent, 1:46-51, 1:55-56. For example, the ’408 Patent acknowledges that US
`
`Patent Application Publication No. 2008/0030592 to Border et al. (“Border”)
`
`describe a digital camera including “two lenses having different focal lengths,” but
`
`alleges that Border “requires, in video mode, very large processing resources in
`
`addition to high frame rate requirements and high power consumption (since both
`
`cameras are fully operational).” (APPL-1001), ’408 Patent, 2:7-34. For further
`
`example, the ’408 Patent acknowledges that US Patent Application Publication No.
`
`
`
`- 11 -
`
`APPL-1003 / Page 14 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`2010/0277619 to Scarff (“Scarff”) describes a camera with two lens/sensor
`
`combinations to provide a zoomed image based on a zoom amount requested by a
`
`user, but alleges that Scarff “leads to parallax artifacts when moving to the Tele
`
`camera in video mode.” (APPL-1001), ’408 Patent, 2:35-51.
`
`29.
`
`“[T]o address and correct many of the problems and disadvantages of
`
`known dual-aperture optical zoom digital cameras,” the ’408 Patent alleges that it
`
`provides “an overall zoom solution that refers to all aspects: optics, algorithmic
`
`processing and system hardware (HW). The proposed solution distinguishes
`
`between video and still mode in the processing flow and specifies the optical
`
`requirements and HW requirements. In addition, it provides an innovative optical
`
`design that enables a low TTL/EFL ratio using a specific lens curvature order.”
`
`(APPL-1001), ’408 patent, 4:3-12.
`
`30. Specifically, the ’408 Patent describes that “optical design
`
`considerations were taken into account to enable reaching optical zoom resolution
`
`using small total track length (TTL),” which “refer to the Tele lens.” (APPL-
`
`1001), ’408 patent, 12:38-41.
`
`31. The ’408 Patent provides two embodiments of the Tele lens illustrated
`
`in FIGS. 8 and 9 respectively, which are reproduced below. The embodiment of
`
`FIG. 8 includes “a fourth lens 808 with positive power,” while claim 5 requires a
`
`fourth lens element with negative power. (APPL-1001), ’408 patent, 12:48.
`
`
`
`- 12 -
`
`APPL-1003 / Page 15 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`
`
`
`(APPL-1001), ’408 Patent, FIGS. 8 and 9
`
`32. Regarding the embodiment of FIG. 9, the ’408 Patent describes that
`
`“the camera has a lens block that includes (along an optical axis starting from an
`
`object) a first lens element 902 with positive power a second lens element 904 with
`
`negative power, a third lens element with positive power 906 and a fourth lens
`
`element with negative power 908, and a fifth lens element 910 with positive or
`
`negative power. In this embodiment, f=7.14, F#=3.5, TTL=5.8 mm and
`
`FOV=22.70°.” (APPL-1001), ’408 Patent, 12:54-62. It is noted that the ’408
`
`Patent does not provide a lens prescription table (including e.g., axial distances,
`
`radii of curvature, Abbe numbers, etc.).
`
`33. Representative independent claim 5 of the ’408 Patent is reproduced
`
`below:
`
`
`
`- 13 -
`
`APPL-1003 / Page 16 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`5. A zoom digital camera comprising:
`a) a first imaging section that includes a fixed focal length first lens
`with a first field of view (FOV1) and a first image sensor; and
`b) a second imaging section that includes a fixed focal length second
`lens with a second FOV (FOV2) that is narrower than FOV, and a second
`image sensor,
`wherein the second lens includes five lens elements along an optical
`axis starting from an object starting with a first lens element with positive
`power,
`wherein the five lens elements further include a second lens element
`with negative power, a fourth lens element with negative power and a fifth
`lens element,
`wherein a largest distance between consecutive lens elements along
`the optical axis is a distance between the fourth lens element and the fifth
`lens element, and
`wherein a ratio of a total track length (TTL) to effective focal length
`(EFL) of the second lens is smaller than 1.
`
`(APPL-1001), ’408 Patent, 13:1-18.
`
`34. As I discuss below in more detail, the system and method presented in
`
`the ’408 Patent, namely, a zoom digital camera using 1) first and second imaging
`
`sections with respective first and second lenses and image sensors, and 2) the
`
`second lens including five lens elements with specific power, distance, and
`
`TTL/EFL ratio configurations were well known to persons of ordinary skill in the
`
`art before the earliest priority date of the ’408 Patent.
`
`B.
`
`Prosecution History of the ’408 Patent
`
`35. As my opinions are focused on claims 5-6 (the “Challenged Claims”)
`
`of the ’408 Patent, the summary of prosecution history below is focused on claims
`
`8, 9, and 11 in the prosecution history. Specifically, in notice of allowance,
`
`
`
`- 14 -
`
`APPL-1003 / Page 17 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`Examiner’s amendment canceled claim 8, amended claim 9, and added claim 11.
`
`(APPL-1002), ’853 App, 164-167. Claims 9 and 11 issued as claims 5 and 6
`
`respectively.
`
`36. On February 5th, 2017, the Applicant filed U.S. Patent Application
`
`No. 15/424853 (“the ’853 App”) including claims 1-9, which ultimately issued as
`
`the ’408 Patent. (APPL-1002), ’853 App, 1-39.
`
`37.
`
`In the Office Action mailed April 7, 2017, the Examiner rejected
`
`claims 8-9 as unpatentable over U.S. Patent App. Pub. No. 2008/0030592 to
`
`Border et al. (“Border”) in view of U.S. Patent App. Pub. No. 2012/0314296 to
`
`Shabtay et al. (“Shabtay ’296”). (APPL-1002), ’853 App, 74-75.
`
`38.
`
`In the response filed July 17, 2017, the Applicant did not amend
`
`claims 8-9, but argued that Shabtay ’296 does not teach, and in fact, teaches away
`
`from the required TTL to EFL ratio as claimed. (APPL-1002), ’853 App, 96.
`
`39.
`
`In the Office Action of October 12, 2017, the Examiner indicated that
`
`claims 8-9 are allowed. ’853 App, 115. In the response filed October 19, 2017,
`
`the Applicant amended claim 9 to change “a fifth lens element with positive or
`
`negative power” to “a fifth lens element with positive power.” (APPL-1002), ’853
`
`App, 134.
`
`40. On January 5, 2018, an examiner interview was conducted to discuss
`
`amendments for claims 8-9 to distinguish prior art JP2013/106289 and US Patent
`- 15 -
`
`
`
`APPL-1003 / Page 18 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`No. 9,405,099 to Jo and add new claim 11. (APPL-1002), ’853 App, 170.
`
`41. On February 9, 2018, a notice of allowance issued, including an
`
`examiner’s amendment to cancel claim 8, amend claim 9, and add a new claim 11.
`
`(APPL-1002), ’853 App, 159-169.
`
`42. The ’408 Patent issued on June 13, 2018. The allowed claim subset
`
`including claims 9 and 11 were issued as claims 5 and 6 of the ’408 Patent,
`
`respectively.
`
`VI. CLAIM CONSTRUCTION
`
`43.
`
`It is my understanding that in order to properly evaluate the ’408
`
`Patent, the terms of the claims must first be interpreted. It is my understanding that
`
`for the purposes of this inter partes review, the claim terms are given their ordinary
`
`and accustomed meaning as would be understood by one of ordinary skill in the
`
`art, unless the inventor has set forth a special meaning for a term. In order to
`
`construe the following claim terms, I have reviewed the entirety of the ’408 Patent,
`
`as well as its prosecution history.
`
`A. “smooth transition” (claim 6)
`
`44.
`
`It is my opinion that, in the context of the ’408 Patent, a POSITA
`
`would have understood “smooth transition” to mean “transition with a reduced
`
`discontinuous image change,” for example, a transition with a continuous image
`
`change.
`
`
`
`- 16 -
`
`APPL-1003 / Page 19 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`45. The specification of the ’408 Patent supports the proposed
`
`construction. Regarding the term “smooth transition” under “Video Mode
`
`Operation/Function,” the ’408 Patent provides,
`
`Smooth Transition
`
`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. However, a change in the zoom factor for
`the same camera and POV is viewed as a continuous change. A “smooth
`transition” is a transition between cameras or POVs that minimizes the
`jump effect.
`
`(APPL-1001), ’408 Patent, 10:35-43. As such, the ’408 Patent defines the term
`
`“jump” to mean “discontinuous” image change, and defines a “smooth transition”
`
`to be a transition that minimizes the “discontinuous” image change. Furthermore,
`
`the ’408 Patent provides that “smooth transition” includes at least a transition with
`
`“a continuous change.”
`
`46. The ’408 Patent provides examples of techniques that may be used to
`
`achieve smooth transition:
`
`This may include matching the position, scale, brightness and color of the
`output image before and after the transition. 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. 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), ’408 Patent, 10:43-51. A POSITA would have understood that these
`
`descriptions are merely examples for achieving smooth transition, and therefore are
`- 17 -
`
`
`
`APPL-1003 / Page 20 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`not definitions for smooth transition.
`
`47.
`
`It is therefore my opinion that a POSITA would have understood
`
`“smooth transition” to mean “transition with a reduced discontinuous image
`
`change,” for example, a transition with a continuous image change.
`
`VII. GROUNDS
`
`A. Ground 1: Claims 5-6 are unpatentable under 35 U.S.C. § 103
`over Golan and Kawamura
`
`48.
`
`In my opinion, Golan in view of Kawamura renders claims 5 and 6
`
`obvious.
`
`1.
`
`Summary of Golan
`
`49. U.S. Patent Application Publication No. 2012/0026366 to Golan et al.
`
`(“Golan”) was published on February 2, 2012. Golan is titled “Continuous Electronic
`
`Zoom for an Imaging System with Multiple Imaging Devices Having Different Fixed
`
`FOV,” and discloses providing a video output with “a continuous electronic zoom for
`
`an image acquisition system, the system including multiple imaging devices having
`
`different fixed FOV.” (APPL-1005), Golan, FIG. 1, Title, [0002].
`
`50. Golan teaches use of wide and tele lenses and employs wide and tele
`
`images during digital zooming, which “facilitates a light weight electronic zoom with
`
`a large lossless zooming range.” (APPL-1005), Golan, [0009]. Specifically, as
`
`illustrated in FIG. 1 below, Golan discloses zoom control sub-system 100 for an
`
`image acquisition system including “multiple image sensors, each with a fixed and
`- 18 -
`
`
`
`APPL-1003 / Page 21 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`preferably different FOV.” (APPL-1005), Golan, [0036]. Golan’s zoom control
`
`subsystem 100 includes a tele image sensor 110 coupled with a narrow lens 120
`
`having a tele FOV 140, a wide image sensor 112 coupled with a wide lens 122 having
`
`a wide FOV 142, a zoom control module 130 and an image sensor selector 150.
`
`(APPL-1005), Golan, FIG. 1, [0037].
`
`(APPL-1005), Golan, FIG. 1
`
`
`
`51. Golan teaches that, in embodiments of FIGS. 1 and 2, each image frame
`
`of video output is generated based on an acquired image frame from “the relevant
`
`
`
`- 19 -
`
`APPL-1003 / Page 22 of 68
`
`

`

`Declaration of José Sasián, Ph.D.
`
` Inter Partes Review of U.S. Patent 10,015,408
`image sensor” of an image acquisition device selected based on the user input zoom
`
`fac