Paper No. 12
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case No. IPR2020-00878
`U.S. Patent No. 10,330,897
`____________
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case No. IPR2020-00878
`U.S. Patent No. 10,330,897
`____________
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`Case No. IPR2020-00878
`U.S. Patent No. 10,330,897
`
`TABLE OF CONTENTS
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`INTRODUCTION .................................................................. 1
`I.
`SUMMARY OF ARGUMENT ................................................ 1
`II.
`III. OVERVIEW OF THE ’897 PATENT ...................................... 7
`IV. LEGAL STANDARDS ......................................................... 12
`V.
`LEVEL OF ORDINARY SKILL IN THE ART (POSITA) ..... 14
`VI. CLAIM CONSTRUCTION ................................................... 16
`VII. PRIOR ART REFERENCES ................................................ 17
`A. Ogino ............................................................................................. 17
`B.
`Bareau ........................................................................................... 21
`C.
`Kingslake ...................................................................................... 24
`D.
`Chen .............................................................................................. 25
`E.
`Iwasaki .......................................................................................... 28
`F.
`Beich ............................................................................................. 28
`VIII. ARGUMENT ....................................................................... 30
`A. Ground 2 – Claims 2, 5, 6, 18, and 21–23 Are Not Obvious over
`Ogino in view of Bareau ............................................................... 30
`B.
`in view of Bareau and Kingslake .................................................. 56
`C.
`of Iwasaki and Beich ..................................................................... 63
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`Ground 4 – Claims 16 and 30 Are Not Obvious over Chen in view
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`Ground 3 – Claims 3, 8, 19, and 24 Are Not Obvious over Ogino
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`IX. CONCLUSION .................................................................... 68
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`Cases
`
`TABLE OF AUTHORITIES
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) ............................................................... 13
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ............................................................... 14
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ............................................................... 13
`
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir.2016) ................................................................ 12
`
`Hulu, LLC v. Sound View Innovactions, LLC,
`Case No. IPR2018-00582, Paper 34 (Aug. 5, 2019) (informative) ......... 14
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................... 13
`
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ............................................................................ 13
`
`Wasica Finance GMBH v. Continental Auto. Systems,
`853 F.3d 1272 (Fed. Cir. 2017) ............................................................... 13
`
`Statutes
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`35 U.S.C. § 312 ............................................................................................ 12
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`Case No. IPR2020-00878
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`PATENT OWNER’S EXHIBIT LIST
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`Exhibit No
`2001
`2002
`2003
`2004
`2005
`
`2006
`
`2007
`
`2008
`2009
`
`Description
`Declaration of Tom D. Milster, Ph.D.
`Curriculum Vitae of Tom D. Milster, Ph.D.
`Deposition transcript of José Sasián, January 22, 2021
`José Sasián, Introduction to Lens Design (2019)
`Peter Clark, “Mobile platform optical design,” Proc. SPIE
`9293, International Optical Design Conference 2017,
`92931M (17 December 2014)
`Symmons and Schaub, Field Guide to Molded Optics
`(2016)
`G. Beall, “By Design: Part design 106 – Corner radiuses,”
`Plastics Today (199)
`Handbook of Optics, 2nd ed., vol. 2 (1995)
`Declaration of José Sasián in IPR2019-00030
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`I.
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`INTRODUCTION
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`Patent Owner Corephotonics, Ltd. submits this response to the Petition
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`(Paper 2) filed by Apple Inc., requesting inter partes review of U.S. Patent
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`No. 10,330,897 (Ex. 1001, ’897 patent). This response addresses Grounds 2–
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`4 of this IPR, alleging that claims 2, 3, 5, 6, 8, 16, 18, 19, 21–24, and 30 of
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`the ’897 patent are obvious, based on modifications to lens designs found in
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`Ogino (Ex. 1005) and in Chen (Ex. 1020). Corephotonics submits that the
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`arguments presented herein and the additional evidence submitted, such as the
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`testimony from Patent Owner’s expert witness Dr. Tom Milster (Ex. 2001),
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`along with the very references cited by Apple and textbook written by its ex-
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`pert, demonstrate that a POSITA would not have made the modifications to
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`these lenses proposed by Apple. Apple has failed to establish obviousness of
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`these challenged claims and that Apple’s grounds 2–4 should be rejected.
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`II. SUMMARY OF ARGUMENT
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`Apple’s obviousness arguments show that Dr. Sasián—a lens designer of
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`exceptional ability who has taught lens design for decades and written text-
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`books on the subject—was able to, years after the effective filing date of Core-
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`photonics’ patent claims and with those patent claims in front of him, make
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`enough modifications to prior art lens designs that the results satisfy the chal-
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`lenged claims. The resulting lenses are presented with impressive-looking
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`computer simulation results, purporting to show that at least on paper the
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`lenses would be functional.
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`It could hardly be otherwise. Any valid patent claim must be enabled. It
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`must be within the skill of even a journeyman designer to construct the
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`claimed invention after reading the patent. It may be that a claim to a new
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`chemical compound or protein sequence can be implemented using entirely
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`routine chemistry or biology techniques once you have seen the claim. That
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`does not make it obvious. As the Federal Circuit stated in Belden, establishing
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`obviousness requires more than simply showing that a designer could have
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`made specific changes to the prior art. It also requires showing that they would
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`have been motivated to make those specific changes. Apple’s obviousness
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`arguments fail to meet this fundamental requirement of obviousness.
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`Apple’s petition reflects a backwards approach to obviousness. Apple
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`found an example in the prior art, Ogino Example 5, that it believed met all
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`of the elements of the independent claims of the ’897 patent. But it had a
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`problem: Ogino Example 5 clearly does not satisfy the limitations of numer-
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`ous dependent claims. So, Apple asked: how would a designer who was mo-
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`tivated to satisfy the missing limitation have modified that design?
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`Motivation cannot be found in the challenged claims. It must be found in
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`the prior art and the knowledge of a POSITA at the time. Would a POSITA
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`have been motivated to change Ogino Example 5 in the ways proposed? The
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`evidence emphatically says they would not.
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`For both grounds 2 and 3, Apple proposes a motivation to modify Ogino
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`Example 5 to reduce its “f-number,” either to a value cited in other prior art
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`or to the value of another Ogino lens example. But this is not a well-reasoned
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`motivation. Ogino Example 5 has by far the largest f-number of any example
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`in Ogino. As Corephotonics’ expert Dr. Milster explains and as common sense
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`dictates, a POSITA who desired a lens with a small f-number would have
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`chosen to start with an Ogino lens that already had a small f-number, indeed
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`that already had the f-number values that Apple contends the POSITA would
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`have been motivated to achieve. Apple provides no reasoned explanation that
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`a POSITA would have chosen Ogino’s lens with the largest f-number as a
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`starting point to achieve a lens with a small f-number.
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`A POSITA might reasonably expect that there is a reason that Ogino Ex-
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`ample 5 has a large f-number and that difficulties would be encountered if
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`they tried to reduce it. Dr. Sasián’s analysis shows that such fears would have
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`been realized. As explained further below, reducing the f-number requires
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`making the first lens in Ogino larger. Dr. Sasián’s work shows that stretching
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`Ogino’s Example 5 to achieve the f-number Apple says a POSITA would have
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`been motivated to achieve results in an unmanufacturable “paper lens,” some-
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`thing that works as a computer simulation but cannot be built using practical
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`means and would not work right even if it could be built.
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`A POSITA would have recognized that this modification to Ogino was
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`unmanufacturable because it violates the rules of thumb and manufacturing
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`tolerances set forth in two of the very prior art references that Apple relies on,
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`Bareau and Beich, as well as in textbooks and references works by Dr. Sasián,
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`Dr. Milster, and others. Whatever a POSITA would have been motivated to
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`do to modify the Ogino lens, they would not have been motivated to use the
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`impractical and unmanufacturable design proposed by Dr. Sasián for
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`ground 2.
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`Apple proposed design for ground 3 suffers from some of the same prob-
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`lems. Once again, the purported motivation makes little rational sense. If the
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`goal was an f-number equal to the f-number in a different Ogino example,
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`why wouldn’t the POSITA simply use that other Ogino example? Apple pro-
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`vides no reasoned justification for starting with the largest f-number lens in
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`Ogino if the goal was the f-number of the smallest f-number lens.
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`But more fundamentally, Apple and its expert provide no rationale for
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`why Dr. Sasián modified the Ogino Example 5 lens in a particular way, or
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`even how he did that modification. For example, an entire claim limitation—
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`the “convex image-side surface” limitation of claims 8 and 24—required
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`changing the sign of one of the parameters of the Ogino design. Making this
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`change, from concave to convex, required disregarding one of the features that
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`Ogino describes and claims as a defining characteristic of its invention: the
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`meniscus shape of its first lens. Dr. Sasián cites to no prior art reference that
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`suggests making this change from concave to convex, does not explain in his
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`declaration the process that resulted in this change, and could not remember
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`during his deposition how that change happened. At most, Apple’s evidence
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`on ground 3 goes to what a POSITA could have done, not what they would
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`have been motivated to do.
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`Apple’s arguments for ground 4 suffer from many of the same basic flaws
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`as ground 2. The Chen patent does not disclose the ratio required by claims
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`16 and 30 or the lens diameter values that would allow one to calculate that
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`ratio. So, Apple shows that a POSITA could have chosen a value that satisfied
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`the claim limitation, in a “paper lens.” As with ground 2, Dr. Sasián’s ground
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`4 would not work in practice, based on the limits of manufacturability taught
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`in the very prior art references Apple relies on, in Dr. Sasián textbook, and in
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`other references discussed below. Further, as Dr. Milster shows, any practical
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`implementation of the Chen lens, taking into account the limits of manufac-
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`turability, would not have satisfied the challenged claims. A POSITA would
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`not have been motivated to implement Chen’s lens design in the impractical,
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`unmanufacturable way proposed by Apple. Indeed, the fact that the best argu-
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`ments Apple was able to find, with the benefit of hindsight, depend on such
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`unrealistic lens designs suggests that the inventions claimed in the ’897 patent
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`are, in fact, non-obvious.
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`For these reasons, and as explained further below, each of Apple’s pro-
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`posed modifications lacks the motivation that is legally required to establish
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`obviousness, and each of Apple’s obviousness grounds should be rejected.
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`III. OVERVIEW OF THE ’897 PATENT
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`The ’897 patent is concerned with designs for a “miniature telephoto lens
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`assembly” of a kind suitable for use in mobile phones and other portable elec-
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`tronic products. (Ex. 1001, ’897 patent at 1:26–30.) The example designs
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`shown in the ’897 patent utilize five plastic lens elements, each having a com-
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`plex aspheric shape:
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`(Ex. 2001, Milster Decl., ¶ 36.)
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`The use of these multiple lens elements with aspheric shapes makes pos-
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`sible a lens that produces a high-quality image, by minimizing chromatic ab-
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`errations and other optical aberrations that would blur or distort the image.
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`(Ex. 1001, ’897 patent at 2:22–34, 2:51–57; Ex. 2001, Milster Decl., ¶ 37.)
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`These multi-lens systems with aspheric lens surfaces have a vast range
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`of possible designs. For example, the design in figure 1A from the ’897 patent
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`requires several dozen numerical parameters to define the shapes, locations,
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`and properties of its lens elements:
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`(Ex. 1001, ’897 patent, col. 4; Ex. 2001, Milster Decl., ¶ 38.)
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`The ’897 patent provides examples of lens designs and their correspond-
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`ing numerical parameters, and it also teaches and claims sets of conditions
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`and relationships among the parameters that help to make a lens system with
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`high performance characteristics. The resulting lens designs are thin and com-
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`pact, appropriate for use in mobile devices, and they offer a large focal length
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`(and thus a large degree of image magnification) for their physical size. (Ex.
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`1001, ’897 patent at 2:6–21; Ex. 2001, Milster Decl., ¶ 39.)
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`The lens designs in the ’897 patent are also manufacturable, meaning that
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`they have shapes that can be successfully and repeatably manufactured using
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`the techniques of plastic injection molding that are commonly used for mobile
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`device camera lenses. The ’897 patent designs avoid features such as overly
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`narrow lens edges that make a lens difficult or impossible to manufacture.
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`(Ex. 1001, ’897 patent at 2:35–50; Ex. 2001, Milster Decl., ¶ 40.)
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`One of the parameters of a lens design that is discussed in the ’897 patent
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`and claimed in certain claims is the “f-number” or “F#.” As Dr. Milster ex-
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`plains, the f-number is a property of a lens that relates to how bright the image
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`formed by the lens is. (Id., ¶ 41.) A lens that forms brighter images is some-
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`times referred to as a “faster” lens, because for a given image sensor (or a
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`given type of film) and focal length, the minimum amount of time required to
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`capture an image varies inversely with the brightness of the image. (Id.) For a
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`single thin lens, the f number is equal to the focal length of the lens divided
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`by the diameter of the lens: 𝑓−𝑛𝑢𝑚𝑏𝑒𝑟=
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`𝑓
`𝑑𝑖𝑎𝑚𝑒𝑡𝑒𝑟
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`
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`(Ex. 1016, Walker at 59; Ex. 2001, Milster Decl., ¶ 41.)
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`The diameter of the lens determines how much total light is collected per
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`unit time by the lens from a given scene. (Ex. 2001, Milster Decl., ¶ 42.) Un-
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`der certain approximations, doubling the diameter increases the amount of
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`light collected by a factor of four. (Id.) The focal length determines the image
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`size on the sensor and thus determines the size of the distribution area of the
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`collected light. (Id.) Doubling the focal length increases the area illuminated
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`in the image by a factor of four and reduces the intensity of the light in any
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`given part of the image by a factor of four. (Id.) So, if both the diameter and
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`focal length are doubled, then the effects approximately cancel out, and the
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`brightness of the image at the sensor is left unchanged, although the image is
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`larger. (Id.) In other words, it is the ratio of the focal length and the diameter
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`that most strongly effects the image brightness. (Id.)
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`Because the diameter is in the denominator, a smaller f-number corre-
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`sponds to a brighter image for a fixed focal length. In more complicated lens
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`systems with multiple lens elements, such as those at issue in this IPR, the
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`amount of light collected no longer depends on the diameter of a single lens
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`(or of a single lens surface), and the effective focal length (EFL) is a function
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`of the lens elements and their spacings. (Id., ¶ 43.) One definition of f-number
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`for such systems instead uses the diameter of the “entrance pupil” (EPD),
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`meaning that the formula is changed to:
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`(Ex. 1003, Sasián Decl. at 58–39; Ex. 2001, Milster Decl., ¶ 43.)
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`The concept of the “entrance pupil” is illustrated in the following draw-
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`ing from Figure 4-2 of Walker:
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`(Ex. 1016, Walker, p. 61; Ex. 2001, Milster Decl., ¶ 44.)
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`As shown here, the entrance pupil reflects the size of the bundle of rays
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`parallel to the optical axis of the lens that can enter the lens, travel through the
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`aperture stop, and reach the image plane. Explained another way, the entrance
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`pupil “is the image of the aperture stop as seen when looking from the object
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`side of the lens.” (Ex. 1016, Walker, p. 60; Ex. 2001, Milster Decl., ¶ 45.)
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`IV. LEGAL STANDARDS
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`The petitioner has the burden to clearly set forth the basis for its chal-
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`lenges in the petition. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
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`(Fed. Cir.2016) (citing 35 U.S.C. § 312(a)(3) as “requiring IPR petitions to
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`identify ‘with particularity ... the evidence that supports the grounds for the
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`challenge to each claim’”). The burden of persuasion “never shifts to the pa-
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`tentee.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
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`1378 (Fed. Cir. 2015).
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`A petitioner may not rely on the Board to substitute its own reasoning to
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`remedy the deficiencies in a petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
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`1355 (2018) (“Congress chose to structure a process in which it’s the peti-
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`tioner, not the Director, who gets to define the contours of the proceeding.”);
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`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016)
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`(rejecting the Board’s reliance on obviousness arguments that “could have
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`been included” in the petition but were not, and holding that the Board may
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`not “raise, address, and decide unpatentability theories never presented by the
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`petitioner and not supported by the record evidence”); Ariosa Diagnostics v.
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`Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015) (holding that “a
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`challenge can fail even if different evidence and arguments might have led to
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`success”); Wasica Finance GMBH v. Continental Auto. Systems, 853 F.3d
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`1272, 1286 (Fed. Cir. 2017) (holding that new arguments in a reply brief are
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`“foreclosed by statute, our precedent, and Board guidelines”).
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`The petitioner cannot satisfy its burden of proving obviousness by em-
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`ploying “mere conclusory statements.” Magnum, 829 F.3d at 1380. As the
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`Federal Circuit has explained, “obviousness concerns whether a skilled artisan
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`not only could have made but would have been motivated to make the combi-
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`nations or modifications of prior art to arrive at the claimed invention.” Belden
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`Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015); Hulu, LLC v.
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`Sound View Innovactions, LLC, Case No. IPR2018-00582, Paper 34 at 21–22
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`(Aug. 5, 2019) (informative).
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`V. LEVEL OF ORDINARY SKILL IN THE ART (POSITA)
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`In his declaration, Dr. Sasián offers his opinion that a person having or-
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`dinary skill in the art (“POSITA”):
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`would include someone who had, at the priority date of the ’897
`Patent, (i) a Bachelor’s degree in Physics, Optical Sciences, or
`equivalent training, as well as (ii) approximately three years of
`experience in designing multi-lens optical systems. Such a per-
`son would have had experience in analyzing, tolerancing, ad-
`justing, and optimizing multi-lens systems for manufacturing,
`and would have been familiar with the specifications of lens
`systems and their fabrication. In addition, a POSITA would
`have known how to use lens design software such as Code V,
`Oslo, or Zemax, and would have taken a lens design course or
`had equivalent training.
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`(Ex. 1003, Sasián Decl., ¶¶ 19–20.) Corephotonics’ expert Dr. Milster has ap-
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`plied the same definition of ordinary skill in his analysis. (Ex. 2001, Milster
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`Decl., ¶ 19.)
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`The ’897 patent claims priority by a series of continuations to an appli-
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`cation that was filed on January 30, 2017 and issued as U.S. Patent No.
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`9,857,568. (Ex. 1001, ’897 patent at 1:5–10.) The ’897 patent also claims pri-
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`ority by a series of continuations and continuations-in-part to a provisional
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`patent application that was filed on July 4, 2013. (Ex. 1001, ’897 patent at
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`1:5–12.)
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`In his declaration, Dr. Sasián appears to assume that the relevant effective
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`filing date for assessing the level of skill in the art is July 4, 2013. (Ex. 1003,
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`Sasián Decl., ¶¶ 18–21.) The only claims that Dr. Sasián contends have a Jan-
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`uary 30, 2017 priority date are claims 16 and 30. (Ex. 1003, Sasián Decl.,
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`¶ 33.) Apple and Dr. Sasián do not appear to dispute that the challenged claims
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`other than claims 16 and 30 have an effective filing date of July 4, 2013. For
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`the purposes of evaluating the level of skill in the art, Dr. Milster has consid-
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`ered the level of skill in the art as of January 30, 2017 for claims 16 and 30,
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`and as of July 4, 2013 for the other challenged claims, and this response does
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`the same. (Ex. 2001, Milster Decl., ¶ 23.) However, none of the arguments set
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`forth herein would change if one assumed a July 4, 2013 date for claims 16
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`and 30 or a January 30, 2017 for any of the other claims. (See id.)
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`VI. CLAIM CONSTRUCTION
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`Apple’s petition applies two claim constructions for terms that the Board
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`has previously construed in IPRs concerning U.S. Patent No. 9,402,032 and
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`9,568,712, patents to which the ’897 patent claims priority:
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`Effective Focal Length (EFL): “the focal length of a lens as-
`sembly.”
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`Total Track Length (TTL): “the length of the optical axis spac-
`ing between the object-side surface of the first lens element and
`one of: an electronic sensor, a film sensor, and an image plane
`corresponding to either the electronic sensor or a film sensor.”
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`(Paper 2 at 7–8; IPR2018-01140, Paper 37 at 10–18.) The Board also adopted
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`these same constructions in IPR2019-00030 concerning the ’568 patent,
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`which contains the same specification as the ’897 patent. (IPR2019-00030,
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`Paper 32 at 8, 14–15.)
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`The Board’s Institution Decision applied these constructions, but invited
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`the parties to address the proper construction of “Total Track Length,” in light
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`of a different construction for this term proposed by Apple in IPR2020-00877.
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`(Paper 7 at 8–9.)
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`Corephotonics does not believe that any dispute between the parties in
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`this IPR depends on the construction of EFL, TTL, or of any other claim term.
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`Accordingly, Corephotonics submits that the Board should refrain from con-
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`struing any terms in the patent for the purposes of this proceeding.
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`VII. PRIOR ART REFERENCES
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`A. Ogino
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`Ogino issued on September 8, 2015 as U.S. Patent No. 9, 128,267. (Ex.
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`2015.) Apple contends that Ogino has an effective filing date of March 29,
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`2013, based upon the filing date of the corresponding Japanese patent appli-
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`cation. (Petition at 9.)
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`As described in Ogino’s abstract, its invention is a system of five lenses
`
`with a particular set of shapes:
`
`An imaging lens substantially consists of, in order from an ob-
`ject side, five lenses of a first lens that has a positive refractive
`power and has a meniscus shape which is convex toward the
`object side, a second lens that has a biconcave shape, a third
`lens that has a meniscus shape which is convex toward the ob-
`ject side, a fourth lens that has a meniscus shape which is con-
`vex toward the image side; and a fifth lens that has a negative
`refractive power and has at least one inflection point on an im-
`age side surface. Further, the following conditional expression
`(1) is satisfied.
`
`1.4<f/f1<4 (1)
`
`(Ex. 1005, Ogino, Abstract.)
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`This same set of shapes and conditions is described as the “imaging lens
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`of the present invention” in Ogino’s “Summary of the Invention” section. (Ex.
`
`1005, Ogino at 2:1–16; Ex. 2001, Milster Decl., ¶ 51.)
`
`Ogino describes six examples of this basic system, each of which has this
`
`same pattern of shapes:
`
`As in the first embodiment, the imaging lenses according to the
`second to sixth embodiments of the present invention substan-
`tially consist of, in order from the object side, five lenses of: the
`first lens L1 that has a positive refractive power and has a me-
`niscus shape which is convex 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 to-
`ward the image side; and the fifth lens L5 that has a negative re-
`fractive power and has at least one inflection point on an image
`side surface.
`
`(Ex. 1005, Ogino at 13:5–16.)
`
`Ogino explains the reasons for using each of these shapes, for example
`
`in lines 7:28–8:42. For example:
`
`As shown in the embodiments, by making the first lens L1,
`which is a lens closest to the object, have a positive refractive
`power and have a meniscus shape which is convex toward the
`object side in the vicinity of the optical axis, the position of the
`rear side principal point of the first lens L1 can be set to be
`close to the object, and thus it is possible to appropriately re-
`duce the total length.
`
`(Ex. 1005, Ogino at 7:31–37; Ex. 2001, Milster Decl., ¶ 53.)
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`18
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`Apple’s grounds utilizing Ogino are all based on Ogino’s “Example 5”
`
`or modifications to that example. (Ex. 1003, Sasián Decl., ¶¶ 46, 51, 61.) The
`
`lens elements of Example 5 are shown in Ogino, Figure 5:
`
`(Ex. 1005, Ogino, Figure 5; Ex. 2001, Milster Decl., ¶ 54.)
`
`Figure 12 of Ogino provides certain optical characteristics of Example 5,
`
`including its f-number of 3.94 and half-angle of view ω=25.9°:
`
`
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`19
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`(Ex. 1005, Ogino, Figure 12; Ex. 2001, Milster Decl., ¶ 55.)
`
`The lens prescription for Example 5 is given in Ogino Tables 9 and 10:
`
`
`
`
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`
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`(Ex. 1005, Ogino, column 21; Ex. 2001, Milster Decl., ¶ 56.)
`
`B.
`
`Bareau
`
`Bareau is an article by Jane Bareau and Peter P. Clark, titled “The Optics
`
`of Miniature Digital Camera Modules.” (Ex. 1012.) Dr. Sasián states that this
`
`was presented at an International Optical Design Conference in June 2006 and
`
`that it was published in SPIE Proceedings Vol. 6342 “a few months after the
`
`conference.” (Ex. 1003, Sasián Decl., ¶ 47.)
`
`Apple does not rely on any detailed lens design from Bareau or any teach-
`
`ings of how a lens designer would create a detailed lens design. (Ex. 2001,
`
`Milster Decl., ¶ 58.) Rather, Apple and Dr. Sasián rely on Bareau listing an f-
`
`21
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`number of 2.8 in its “typical lens specifications for a ¼″ sensor format.” (Ex.
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`1003, Sasián Decl., ¶¶ 51–53; Ex. 1012, Bareau at 3–4; Ex. 2001, Milster
`
`Decl., ¶ 58.)
`
`Other parts of Bareau illustrate an important point relevant to this IPR:
`
`the fact that you can simulate a lens design in lens design software such as
`
`Zemax does not mean that you can build that design. (Ex. 2001, Milster Decl.,
`
`¶ 59.) As Bareau explains:
`
`Layout drawings can be very misleading. Many times we find
`ourselves surprised when the mechanical layout of a lens barrel
`that looked reasonable on paper turns out to be very difficult or
`impossible to fabricate. Tabs on a barrel that appear substantial
`in a drawing, are found to be too flimsy to function on the ac-
`tual part, sharp edges on molded stops don’t fill completely be-
`cause the features are too small.
`
`(Ex. 1012, Bareau at 1; Ex. 2001, Milster Decl., ¶ 59.)
`
`Bareau explains aspects of the shape and size of lens elements, be they
`
`made out of plastic or glass, that are particularly problematic when producing
`
`miniature lenses like those at issue in this IPR:
`
`Scaling down such a lens will result in a system that is unmanu-
`facturable. If the design includes molded plastic optics, a scaled
`down system will result in element edge thicknesses shrinking
`to the point where the flow of plastic is affected. For glass ele-
`ments, the edge thicknesses will become too thin to be fabri-
`cated without chipping.
`
`(Ex. 1012, Bareau at 1; Ex. 2001, Milster Decl., ¶ 60.)
`
`22
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`Bareau explains that the issue of “geometric tolerances,” including both
`
`in the size and shape of individual lens elements and their alignment within
`
`the overall system, “proves to be the greatest challenge of producing these
`
`lenses.” (Ex. 1012, Bareau at 3; Ex. 2001, Milster Decl., ¶ 61.)
`
`Bareau further explains that there are limits to achievable shapes in min-
`
`iature lenses. For molded lenses, these limits arise from the properties of the
`
`lens material, both in liquid form and in solid form, and from the techniques
`
`used to make the mold inserts that the lens parts are formed in. According to
`
`Bareau:
`
`Plastic injection molded optics have minimum edge thick-
`nesses, minimum center thicknesses and range of acceptability
`for their center to edge thickness ratio that must be met in order
`that they can be molded. Additionally, the maximum slope that
`can be diamond-turned in mold inserts and measured in either
`the lens or the mold is around 45 degrees.
`
`(Ex. 1012, Bareau at 8; Ex. 2001, Milster Decl., ¶ 62.)
`
`As Bareau explains, similar limitations apply to glass lens elements:
`
`“Traditional glass lenses have similar types of requirements but with different
`
`values.” (Ex. 1012, Bareau at 8; Ex. 2001, Milster Decl., ¶ 63.) In molded
`
`glass lenses, “surfaces with inflections can only be used under very limited
`
`circumstances and flanges can only be formed in a restricted range of shapes,
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`no sharp corners or abrupt changes in slope are allowed.” (Ex. 1012, Bareau
`
`at 8; Ex. 2001, Milster Decl., ¶ 63.)
`
`C. Kingslake
`
`Kingslake is a text by Rudolf Kingslake titled “Optics in Photography.”
`
`(Ex. 1013.) The copyright page contains a copyright date of 1992. (Ex. 1013
`
`at 2.) Apple cites to only a single page from this textbook, page 104. (Ex. 1013
`
`at 3.)
`
`This page contains the beginning of Kingslake’s chapter 6, titled “The
`
`Brightness of Images.” (Ex. 1013.) The only portions of Kingslake that Apple
`
`or Dr. Sasián actually quotes are from the first paragraph of this chapter:
`
`The relation between the aperture of a lens and brightness of the
`image produced by it on the photographic emulsion is often
`misunderstood, yet it is of the greatest importance to the pho-
`tographer who wishes to make the best use of the equipment.
`The tremendous efforts of lens designers and manufacturers
`that have been devoted to the production of lenses of extremely
`high relative aperture are an indication of the need that exists
`for brighter images and “faster” lenses.
`
`(Ex. 1013, p. 104 (emphasis added).)
`
`This paragraph refers to “brighter” and “faster” lenses, which as ex-
`
`plained above correspond to lenses with smaller f-numbers. (Ex. 2001, Milster
`
`Decl., ¶ 67.) Brighter or faster lenses
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