`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS LTD.,
`Patent Owner
`
`———————
`
`
`Declaration of José Sasián, PhD
`under 37 C.F.R. § 1.68
`
`Apple v. Corephotonics
`
`Page 1 of 87
`
`Ex. 1003
`
`Exhibit 2009
`IPR2020-00878
`Page 1 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 2
`
`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE ...................... 4
`
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 8
`
`IV. RELEVANT LEGAL STANDARDS ........................................................... 10
`
`A. Anticipation ............................................................................................ 10
`
`B. Obviousness ........................................................................................... 10
`
`V. OVERVIEW OF THE ‘568 PATENT .......................................................... 12
`
`A. Summary of the Patent ........................................................................... 12
`
`B. Prosecution History of the ‘568 Patent .................................................. 16
`
`VI. CLAIM CONSTRUCTION .......................................................................... 18
`
`A. “Total Track Length (TTL)” .................................................................. 18
`
`B. “Effective Focal Length (EFL)” ............................................................ 19
`
`VII.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE .... 19
`
`A. Claims 1-5 are obvious over Ogino ....................................................... 20
`
`1. Summary of Ogino ......................................................................... 20
`
`2. Detailed Analysis ........................................................................... 26
`
`B. Claims 1-5 are obvious over Ogino and Beich ...................................... 51
`
`1. Summary of Beich .......................................................................... 51
`
`2. Reasons to Combine Ogino and Beich .......................................... 52
`
`3. Detailed Analysis ........................................................................... 56
`
`VIII. CONCLUSION .............................................................................................. 76
`
`IX. APPENDIX .................................................................................................... 77
`
`1
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 2 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 2 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`I.
`
`INTRODUCTION
`
`1.
`
`I am making this declaration at the request of Apple Inc. in the matter
`
`of the inter partes review of U.S. Patent No. 9,857,568 (“the ‘568 Patent”) to Dror,
`
`et al.
`
`2.
`
`I am being compensated for my work in this matter at the rate of
`
`$525/hour. I am also being reimbursed for reasonable and customary expenses
`
`associated with my work and testimony in this investigation. My compensation is
`
`not contingent on the outcome of this matter or the specifics of my testimony.
`
`3.
`
`I have been asked to provide my opinions regarding whether claims 1-
`
`5 of the ‘568 Patent are unpatentable, either because they are anticipated or would
`
`have been obvious to a person having ordinary skill in the art (“POSITA”) at the
`
`time of the alleged invention, in light of the prior art. After a careful analysis it is
`
`my opinion that all of the limitations of claims 1-5 would have been either
`
`anticipated or obvious to a POSITA.
`
`4.
`
`In the preparation of this declaration, I have reviewed:
`
`• The ‘568 Patent, Ex.1001;
`
`• The prosecution history of the ‘568 Patent, Ex.1002;
`
`• U.S. Patent No. 9,128,267 to Ogino et al. (“Ogino”), Ex.1005;
`
`• Warren J. Smith, MODERN LENS DESIGN (1992) (“Smith”),
`
`Ex.1006;
`
`
`
`2
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 3 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 3 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`• U.S. Patent No. 7,918,398 to Li et al. (“Li”), Ex.1007;
`
`• U.S. Patent No. 7,777,972 to Chen et al. (“Chen”), Ex.1008;
`
`• Max Born et al., PRINCIPLES OF OPTICS, 6th Ed. (1980) (“Born”),
`
`Ex.1010;
`
`• Jane Bareau et al., “The optics of miniature digital camera
`
`modules,” SPIE Proceedings Volume 6342, International Optical
`
`Design Conference 2006; 63421F (2006)
`
`https://doi.org/10.1117/12.692291 (“Bareau”), Ex.1012;
`
`• U.S. Patent App. Pub. No. 2013/0077183 to An et al. (“An”),
`
`Ex.1017;
`
`• Michael P. Schaub, THE DESIGN OF PLASTIC OPTICAL SYSTEMS
`
`(2009) (“Schaub”), Ex.1018;
`
`• Optical Society of America, HANDBOOK OF OPTICS, vol. II 2nd ed.
`
`(1995) (“Handbook of Optics”), Ex.1019; and
`
`• William S. Beich et al., “Polymer Optics: A manufacturer’s
`
`perspective on the factors that contribute to successful programs,”
`
`SPIE Proceedings Volume 7788, Polymer Optics Design,
`
`Fabrication, and Materials (August 12, 2010);
`
`https://doi.org/10.1117/12.861364 (“Beich”), Ex.1020.
`
`5.
`
`In forming the opinions expressed below, I have considered:
`
`
`
`3
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 4 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 4 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`a)
`
`The documents listed above;
`
`b) My own knowledge and experience based upon my work in the
`
`fields of optics and lens designs, as described below; and
`
`c) The level of skill of a POSITA at the time of the alleged
`
`invention of the ‘568 patent.
`
`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`
`6. My complete qualifications and professional experience are described
`
`in my Curriculum Vitae, a copy of which can be found in Ex.1004. The following
`
`is a brief summary of my relevant qualifications and professional experience.
`
`7.
`
`As shown in my curriculum vitae (Ex.1004), I have extensive
`
`academic and industry experience with optical engineering. Specifically, I have
`
`over thirty years of academic and industry experience in the field of optical
`
`sciences and optical engineering in general, including optical instrumentation,
`
`optical design, and optical fabrication and testing.
`
`8.
`
`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 optical design. For example, I teach my students how to design lenses and
`
`mirrors and how to think about light so that they can design useful optical systems.
`
`
`
`4
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 5 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 5 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`9.
`
`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.
`
`10.
`
`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.
`
`11. At the University of Arizona, I have taught the courses Lens Design
`
`OPTI 517 (1997-present), Introduction to Aberrations OPTI 518 (2005-present),
`
`Advanced Lens Design OPTI 696A (2008, 2012, 2017), Illumination Optics
`
`Seminar (1997-2000), Introduction to Opto-mechanics OPTI 690 (1998, 2001,
`
`
`
`5
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 6 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 6 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`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.
`
`12.
`
`I have directed several student reports, theses, and dissertations in the
`
`areas of lens and mirror design. 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).
`
`• 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.
`
`
`
`6
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 7 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 7 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`• 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.
`
`13. 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.
`
`14.
`
`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.
`
`15.
`
`I have served as a co-chair for the conferences “Novel Optical
`
`Systems: Design and Optimization” (1997-2006), “Optical systems alignment,
`
`tolerancing, and verification” (2007-2017), and “International Optical Design
`
`Conference,” (2002). I have taught in Japan (2014, 2016, and 2017) the course:
`
`Advanced Lens Design: Art and Science.
`
`
`
`7
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 8 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 8 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`16.
`
`I have been a co-editor of approximately 21 published conference
`
`proceedings from SPIE. I am the author of the book, "Introduction to Aberrations
`
`in Optical Imaging Systems," by Cambridge University Press, 2013. I am named as
`
`an inventor on approximately 13 U.S. patents.
`
`17. My curriculum vitae (Ex.1004), includes a more detailed summary of
`
`my background, experience, and publications.
`
`III.
`
` LEVEL OF ORDINARY SKILL IN THE ART
`
`18.
`
`I understand 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.
`
`19.
`
`I am familiar with multi-lens optical systems (including those found in
`
`portable devices such as mobile phones). I am also aware of the state of the art at
`
`the time the application resulting in the ‘568 patent was filed. I have been informed
`
`by Apple’s counsel that the earliest alleged priority date for the ‘568 patent is July
`
`4, 2013. Based on the technologies disclosed in the ‘568 patent, I believe that a
`
`person having ordinary skill in the art (“POSITA”) would include someone who
`
`had, at the priority date of the ‘568 patent, (i) a Bachelor’s degree in Physics,
`
`Optical Sciences, or equivalent training, as well as (ii) approximately three
`
`
`
`8
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 9 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 9 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`years of experience in designing and/or manufacturing multi-lens optical
`
`systems. Such a person would have had experience in analyzing, tolerancing,
`
`adjusting, and optimizing multilens systems, and would have been familiar with
`
`the specifications of lens systems. In addition, a POSITA would have known
`
`how to use lens design software such as Codev, Oslo, or Zemax, and would
`
`have taken a lens design course.
`
`20. Lack of work experience could have been remedied by additional
`
`education, and vice versa. Such academic and industry experience would be
`
`necessary to appreciate what was obvious and/or anticipated in the industry and
`
`what a POSITA would have thought and understood at the time. Based on this
`
`criteria, as of the relevant time frame for the ‘568 patent, I possessed at least
`
`such experience and knowledge of a POSITA. Some of my past students would
`
`have qualified as POSITAs, hence am qualified to opine on the ‘568 patent.
`
`21. For purposes of this Declaration, in general, and unless otherwise
`
`noted, my statements and opinions, such as those regarding my experience and the
`
`understanding of a POSITA generally (and specifically related to the references I
`
`consulted herein), reflect the knowledge that existed in the field as of July 4, 2013.
`
`Unless otherwise stated, my understanding and analysis below is consistent with
`
`the level of a POSITA prior to the priority date of the ‘568 patent.
`
`
`
`9
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 10 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 10 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`IV. RELEVANT LEGAL STANDARDS
`
`22.
`
`I understand that prior art to the ‘568 patent includes patents and
`
`printed publications in the relevant art that predate the priority date of the alleged
`
`invention recited in the ‘568 patent. For purposes of this Declaration, I have been
`
`asked to apply July 4, 2013, the earliest alleged priority date, as the priority date.
`
`23.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ‘568 patent, I am relying on certain basic
`
`legal principles that counsel have explained to me. These principles are reviewed
`
`below.
`
`24.
`
`I understand that a claim is unpatentable if it is anticipated under post-
`
`AIA 35 U.S.C. § 102(a), or obvious under post-AIA 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, and the
`
`fact that the reference might possibly practice or contain a claimed limitation is
`
`insufficient to establish that the reference inherently teaches the limitation.
`
`B. Obviousness
`
`
`
`10
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 11 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 11 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`26.
`
`I have been informed that a claimed invention is unpatentable under
`
`post-AIA 35 U.S.C. § 103 if the differences between the invention and the prior art
`
`are such that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which the subject
`
`matter pertains. I have also been informed by counsel that the obviousness analysis
`
`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.
`
`27.
`
`I have been informed by counsel that the 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 one of ordinary skill to modify the prior art
`
`
`
`11
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 12 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 12 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`reference or to combine prior art reference teachings to arrive at the claimed
`
`invention.
`
`V. OVERVIEW OF THE ‘568 PATENT
`
`A.
`
`Summary of the Patent
`
`28. The ‘568 patent is directed to “[a]n optical lens assembly [that]
`
`includes five lens elements and provides a TTL/EFL<1.0.” Ex.1001, Abstract. A
`
`ratio of total track length (“TTL”) over effective focal length (“EFL”) being less
`
`than one is indicative of a telephoto lens system. See Ex.1006, p.169. As admitted
`
`by the Applicant in the ‘568 patent, it was and still is common to incorporate
`
`digital cameras into a variety of devices including cellular telephones, personal
`
`digital assistants, and other portable electronic devices. See Ex.1001, 1:21-25. The
`
`driving need for cameras in such devices is a growing consumer demand for
`
`portable cameras with “good quality imaging and … a small total track length.”
`
`See Ex.1001, 1:29-33.
`
`29. According to the Applicant, the lens system in the ‘568 patent is
`
`allegedly the answer to the known need for good quality imaging and a small total
`
`track length. See Ex.1001, 1:33-36. The lens system in the ‘568 patent includes:
`
`a first lens element with positive refractive power having a convex
`object-side Surface, a second lens element with negative refractive
`power having a thickness d2 on an optical axis and separated from the
`first lens element by a first air gap, a third lens element with negative
`
`
`
`12
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 13 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 13 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`refractive power and separated from the second lens element by a
`second air gap, a fourth lens element having a positive refractive
`power and separated from the third lens element by a third air gap,
`and a fifth lens element having a negative refractive power, separated
`from the fourth lens element by a fourth air gap, the fifth lens element
`having a thickness d5 on the optical axis.
`
`Ex.1001, 1:51-62. An example of the lens system in the ‘568 patent is provided
`
`below:
`
`
`
`Ex.1001, Fig. 1.
`
`30.
`
`In the ‘568 patent, all of the embodiments have a TTL to EFL ratio
`
`less than 1.0 and an F number (“F#”) of less than 3.2. Ex.1001, 2:8-9. Other
`
`claimed characteristics include the surfaces of at least some of the lens elements
`
`
`
`13
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 14 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 14 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`being aspheric and “a ratio between a largest optical axis thickness L11and a
`
`circumferential edge thickness L1e of the first lens element of L11/L1e<4.0.”
`
`Ex.1001, 2:1-45, 8:38-41. Figure 1 from Ogino, annotated below, shows these
`
`concepts of optical axis thickness L11 and circumferential edge thickness L1e:
`
`Optical Axis Thickness L11
`
`Circumferential Edge Thickness L1e
`
`
`
`Ex.1001, Fig.1 (annotated).
`
`31. For each embodiment, the ‘568 patent includes optical data for each
`
`lens element, such as radius of curvature (“R”) and data (i.e., coefficients) that
`
`describes the surface of each aspheric lens element. See Ex.1001, Tables 1-6. The
`
`‘568 patent also includes the so-called surface “sag” equation, which is the
`
`
`
`14
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 15 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 15 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`standardized equation use for mathematically representing the surface of aspheric
`
`lens element. Ex.1001, 3:43-4:9; see also Ex.1018, p.96. The ‘568 patent’s
`
`explanation of the sag equation is as follows:
`
`Detailed optical data is given in Table 1, and the aspheric surface data
`is given in Table 2, wherein the units of the radius of curvature (R),
`lens element thickness and/or distances between elements along the
`optical axis and diameter are expressed in mm “Nd” is the refraction
`index. The equation of the aspheric surface profiles is expressed by:
`
`where r is distance from (and perpendicular to) the optical axis, k is
`the conic coefficient, c=l/R where R is the radius of curvature, and a
`are coefficients given in Table 2.
`
`
`
`Ex.1001, 3:43-4:9.
`
`32. Because the sag equation is used to mathematically represent each
`
`aspheric surface of a lens element, it can be used to determine the lens element’s
`
`thickness for an r value (i.e., radius from the optical axis), including the
`
`circumferential edge thickness for a specified lens diameter. For the first lens
`
`element, this can be done by determining Z for the object-side and image-side
`
`surfaces at the lens’s overall radius, and then subtracting the Z values from the
`
`thickness of the lens at the optical axis. This is confirmed by the ‘568 patent, which
`
`
`
`15
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 16 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 16 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`notes that edge thickness can be determined using the optical data and aspheric
`
`coefficients. See Ex.1001, 5:21-23 (stating that edge thickness of the first lens
`
`element, L1e, can be determined using the optical data and aspheric coefficients
`
`for the first lens element).
`
`33. As discussed below, none of these characteristics were new. Prior to
`
`July 4, 2013, five element lens assemblies for mobile phones were well known,
`
`including telephoto lenses. See Ex.1006, pp. 169-182; Ex. 1005, Fig. 6, 1:52-56;
`
`8:8-25. For example, Ogino (Ex.1005) teaches a similar five lens system with a
`
`TTL to EFL ratio of less than one. Ogino’s lens system also includes a number of
`
`other features including aspheric lens elements and the ratio between the
`
`thicknesses of the first lens on the optical axis versus the edge being less than 3.0.
`
`In my opinion, the disclosures provided in Ogino and other prior art discussed
`
`below either anticipates or renders obvious each and every element of the claims I
`
`have been asked to analyze in the ‘568 patent, as discussed below.
`
`B.
`
`34.
`
`Prosecution History of the ‘568 Patent
`
`I understand that the ‘568 patent issued on January 2, 2018 from U.S.
`
`Patent Application No. 15/418,925 (“the ‘925 application”) filed on January 30,
`
`2017. See Ex.1001. The ‘568 patent appears to be a continuation-in-part of U.S.
`
`Patent Application No. 15/170,472 (“the ‘472 application”) that issued as U.S.
`
`Patent No. 9,568,712. See Ex.1001. The ‘472 application is a continuation of a
`
`
`
`16
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 17 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 17 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`string of applications that originate from Application No. PCT/IB2014/062465
`
`filed on June 20, 2014, which claims the benefit of Provisional Application No.
`
`61/842,987 filed on July 4, 2013. See Ex.1001.
`
`35.
`
`I understand that the ‘925 application was originally filed with five
`
`claims with claim 1 being in independent form. Ex.1002, p.317. Without issuing
`
`any Office Actions, the Examiner appears to have issued a Notice of Allowance on
`
`November 8, 2017. Ex.1002, pp.234-241. In the Allowance, the Examiner appears
`
`to have recited claim 1 and stated that “[t]he prior art does not show or fairly
`
`suggest the claimed invention of a lens assembly having the claimed structure and
`
`claimed limitations.” Ex.1002, p.239. One day after the Allowance, the Applicant
`
`looks to have filed an Information Disclosure Statement (“IDS”) that did not list
`
`the Ogino reference that my opinion is based on. Ex.1002, pp.2-8. The Examiner
`
`appears to have rejected the IDS filing because it was presented after payment of
`
`the issue fee. Ex.1002, p.2. Consequently, it appears that the Examiner did not
`
`review the references listed in the IDS because the Examiner’s signature is
`
`missing. See Ex1002, p.6.
`
`36. As observed from the prosecution history, it appears that the prior art
`
`that I rely on in this declaration was not cited by the Examiner and thus was not
`
`used as a basis for allowing the claims.
`
`
`
`17
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 18 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 18 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`VI. CLAIM CONSTRUCTION
`
`37.
`
`It is my understanding that in order to properly evaluate the ‘568
`
`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 ‘568 patent, as well as its
`
`prosecution history.
`
`A.
`
` “Total Track Length (TTL)”
`
`38. This term is used in claim 1 which recites “wherein the lens assembly
`
`has a total track length (TTL) of 6.5 millimeters or less ….” Ex.1001, 8:34-36. In
`
`reference to this term, the specification of the ’568 patent states that TTL is the
`
`“total track length on an optical axis between the object-side surface of the first
`
`lens element and the electronic sensor.” Ex.1001, 2:2-4. The electronic sensor or
`
`image sensor “is disposed at the image plane 114 for the image formation.”
`
`Ex.1001, 3:40-42. This is consistent with other examples in the art. For instance,
`
`Chen (Ex.1008) states that “TTL is defined as the on-axis spacing between the
`
`object-side surface of the first lens element and the image plane when the first lens
`
`element is positioned closest to the imaged object.” Ex.1008, 3:24-27.
`
`
`
`18
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 19 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 19 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`39.
`
`In the specification of the ’568 patent, the TTL of each lens system
`
`embodiment can be determined by summing the widths of lens elements and
`
`spacing between lens elements of the lens system from the object side of the first
`
`lens to the image plane. See, e.g., Ex.1001, Table 1, Table 3, Table 5.
`
`40. Accordingly, a POSITA would find the term “total track length
`
`(TTL)” to be “the length of the optical axis spacing between the object-side surface
`
`of the first lens element and the image plane.”
`
`B.
`
`“Effective Focal Length (EFL)”
`
`41. This term is used in claim 1 which recites “wherein the lens assembly
`
`has an effective focal length (EFL).” Ex. 1001, 8:34-36. While the specification
`
`of the ‘568 patent does not offer an express definition for this term, its meaning is
`
`well known in the art, as exemplified in Li (Ex.1007), which states that “[t]he focal
`
`length of a lens assembly [is] also referred to as the effective focal length (EFL).”
`
`Ex.1007, 2:59-61. This definition of EFL is also consistent with how lens design
`
`software such as Zemax computes the EFL and focal length of a lens system.
`
`Accordingly, for the purposes of this proceeding, a POSITA would find term
`
`“effective focal length (EFL)” to include “the focal length of a lens assembly.”
`
`VII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`42.
`
`It is my opinion that claims 1-5 are obvious over U.S. Patent No.
`
`9,128,267 to Ogino (Ex.1005). It is also my opinion that claims 1-5 are obvious
`
`
`
`19
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 20 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 20 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`over the combination of Ogino and the article “Polymer Optics: A manufacturer’s
`
`perspective on the factors that contribute to successful programs,” by William S.
`
`Beich et al., that appeared in the publication SPIE Proceedings Volume 7788,
`
`Polymer Optics Design, Fabrication, and Materials published in August of 2010
`
`(“Beich”).
`
`A. Claims 1-5 are obvious over Ogino
`
`Summary of Ogino
`
`1.
`43. Similar to the lens system described in the ‘568 patent, Ogino
`
`discloses a five-lens system for use in portable devices. See Ex.1005, Abstract, 1:6-
`
`16. In fact, Ogino’s lens system is similarly designed for use in portable devices
`
`such as “a digital still camera, a cellular phone with a camera, a mobile
`
`information terminal (PDA: Personal Digital Assistance), a smartphone, a tablet
`
`terminal, and a mobile game machine, on which the imaging lens is mounted to
`
`perform photography.” Ex.1005, 1:11-16. Ogino’s lens system is also similarly
`
`designed to meet a demand for five-lens systems in portable devices to “to enhance
`
`the resolution and performance of the imaging lens.” Ex.1005, 1:30-31.
`
`44. Ogino offers a number of embodiments that each includes five lenses,
`
`each lens having an aspheric surface. Ex.1005, 13:4-5. In each embodiment, the
`
`lens system includes:
`
`in order from the object side, five lenses of: the first lens L1 that has a
`positive refractive power and has a meniscus shape which is convex
`
`
`
`20
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 21 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 21 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`toward the object side; the second lens L2 that has a biconcave shape;
`the third lens L3 that has a meniscus shape which is convex toward
`the object side; the fourth lens L4 that has a meniscus shape which is
`convex toward the image side; and the fifth lens L5 that has a negative
`refractive power and has at least one inflection point on an image side
`surface.
`
`Ex.1005, 13:8-16.
`
`45. The lens system in Fig. 6 (i.e., Example 6) is particularly relevant to
`
`the claims in the ‘568 patent, and is reproduced below:
`
`
`
`21
`
`Ex.1003
`
`
`
`Apple v. Corephotonics
`
`Page 22 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 22 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`Ex.1005, Fig. 6. In Example 6, the five lens elements are identified as L1-L5 and
`
`are aspheric. Ex.1005, 13:4-5. Also included in Example 6 is “optical members CG
`
`[that] may be disposed between the fifth lens L5 and the imaging device 100 based
`
`on the configuration of a camera on which the imaging lens is mounted.” Ex.1005,
`
`5:55-57. The optical member CG is optional and may be excluded in order to
`
`“reduce the number of components, and to reduce the total length.” Ex.1005, 5:66-
`
`6:2.
`
`46. The lens system in Fig. 6 (i.e., Example 6) is described with reference
`
`to Table 11, reproduced below:
`
`
`
`22
`
`Ex.1003
`
`Apple v. Corephotonics
`
`Page 23 of 87
`
`Exhibit 2009
`IPR2020-00878
`Page 23 of 87
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 9,857,568
`
`
`
`Ex.1005, 22:10-35 (Table 11). Ogino describes Table 11 as follows:
`
`[T]he column of the on-axis surface spacing Di shows spaces (mm)
`on the optical axis between the i-th surface Si and the (l+1) th
`surface1 Si+1 on the optical axis from the object side. The column
`
`
`1 A POS