UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner
`____________
`
`Case IPR2018-00030
`U.S. Patent No. 9,857,568
`____________
`
`PATENT OWNER’S RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
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`Table of Contents
`
`Introduction ........................................................................................................ 1
`I.
`II. Summary of Argument ...................................................................................... 1
`III. Background ........................................................................................................ 1
`A. Overview of the ’568 Patent (Ex. 1001) ......................................................... 4
`B. Complexity of the Design of Multiple Lens Assemblies, Like the Patented
`Invention ................................................................................................................ 9
`IV. Legal Standard for Petition Review ................................................................. 12
`V. Level of a Person of Ordinary Skill in the Art (POSITA) ............................... 14
`VI. Claim Construction .......................................................................................... 17
`A. Legal Standard .............................................................................................. 17
`B. Total Track Length (TTL) ............................................................................ 18
`1. Apple’s Construction of “TTL” Contradicts the Patentees’ Definition of
`“TTL” and the Instrinsic Evidence .................................................................. 19
`2. The Reliance of Apple’s Construction on the Term “Image Plane”
`Introduces Undesirable Ambiguity .................................................................. 22
`VII. The Petition Fails to Establish that Ogino Renders Obvious Claims 1-5 ........ 29
`A. Ogino Does Not Disclose a Lens Assembly with TTL / EFL < 1 ................ 30
`B. A POSITA Would Not Modify Ogino Example 6 to Disclose a Lens
`Assembly with TTL / EFL < 1 ............................................................................ 35
`1. Removing the CG in Example 6 Does Not Change The TTL To Be Less
`Than EFL ......................................................................................................... 38
`2. A POSITA Would Not Have Been Motivated to Design a Lens Assembly
`and Camera Module Without a Cover Glass ................................................... 40
`3. Apple Fails to Explain What Additional Modifications a POSITA Would
`Need to Apply After Removing the CG Element ............................................ 45
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`C. Ogino Does Not Disclose a Lens Assembly with L11 / L1e < 4 ................. 48
`The Petition Fails to Establish that Ogino in Combination with Beich
`VIII.
`Renders Obvious Claims 1-5 .................................................................................. 51
`A. Apple Fails to Show That an Optics Designer Would Have Relied On
`“Rules-of-Thumb” Used in Optics Manufacturing ............................................. 52
`B. Apple Requires Beich’s Rules-of-Thumb To Be Selectively and
`Inconsistently Applied ......................................................................................... 54
`IX. Conclusion ....................................................................................................... 60
`
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`Table of Authorities
`CASES
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) ........................................................................... 13
`
`
`Cisco Systems, Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper 12 (PTAB, Aug. 29, 2014) ............................................ 14
`
`
`Edmund Optics, Inc. v. Semrock, Inc.,
`IPR2014-00583, Paper 50 (PTAB, Sep. 9, 2015) ............................................... 13
`
`
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed.Cir.2016) ............................................................................. 12
`
`
`Honeywell Int'l, Inc. v. Universal Avionics Sys. Corp.,
`493 F.3d 1358 (Fed. Cir. 2007) ........................................................................... 19
`
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ........................................................................... 13
`
`
`In re Smith Int'l, Inc.,
`871 F.3d 1375 (Fed. Cir. 2017) ........................................................................... 18
`
`
`Martek Biosciences Corp. v. Nutrinova, Inc.,
`579 F.3d 1363 (Fed. Cir. 2009) ........................................................................... 19
`
`
`V-Formation, Inc. v. Benetton Grp. SpA,
`401 F.3d 1307 (Fed. Cir. 2005) ........................................................................... 21
`
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ............................................................................. 19
`
`
`Wasica Finance GMBH v. Continental Auto. Systems,
`853 F.3d 1272 (Fed. Cir. 2017) ........................................................................... 13
`
`
`
`
`
`
`
`
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`iii
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`Table of Authorities
`
`STATUTES
`35 U.S.C. § 312(a)(3) ............................................................................................. 12
`RULES
`37 C.F.R. §42.6(a)(3) .............................................................................................. 13
`37 C.F.R. §42.65(a) ................................................................................................ 12
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`Patent Owner’s Exhibit List for IPR2018-00030
`
`Pursuant to 37 C.F.R. § 42.63(e), Patent Owner Corephotonics Ltd., hereby
`
`submits its exhibit list associated with the above-captioned inter partes review of
`
`U.S. Patent No. 9,857,568.
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`Exhibit No. Description
`2005
`Declaration of Duncan Moore, Ph.D
`
`Curriculum Vitae of Duncan Moore, Ph.D.
`
`U.S. Patent No. 8,395,851
`
`U.S. Patent Publication No. 2011/0249346
`
`U.S. Patent Publication No. 2011/0279910
`
`U.S. Patent Publication No. 2011/0261470
`
`Transcript of the February 15, 2019 Deposition of Dr. José
`Sasián in the IPR2018-01140 and IPR2018-01146
`
`Transcript of the July 2, 2019 Deposition of Dr. José Sasián in
`IPR2018-00030
`
`Declaration of José Sasián in IPR018-01140 and IPR2018-01146
`
`Excerpts from Robert E. Fischer, Biljana Tadic-Galeb, Paul R.
`Yoder, OPTICAL SYSTEM DESIGN, 2nd Ed. (2008)
`
`U.S. Patent 9,678,310
`
`U.S. Patent 8,248,715
`
`Reserved
`
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`
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`v
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`2018
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`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`
`
`
`
`
`
`U.S. Patent Publication 20110261471
`
`Humpston et al., “Optical performance of bare image sensor die
`and sensors packaged at the wafer level and protected by a cover
`glass,” Proceedings of SPIE (2008)
`
`Excerpts from Symmons & Schaub, FIELD GUIDE TO MOLDED
`OPTICS, SPIE (2016), Ex. 2020;
`
`William S. Beich, “Injection Molded Polymer Optics in the 21st-
`Century,” SPIE Proceedings Vol. 5865 (2005)
`
`Luxin Nie, “Patent Review of Miniature Camera Lenses and A
`Brief Comparison of Two Relative Design Patterns” (2017)
`
`Excerpts from José Sasián, INTRODUCTION TO ABERRATIONS IN
`OPTICAL IMAGING SYSTEMS (2013)
`
`Kingslake & Johnson, LENS DESIGN FUNDAMENTALS, 2d ed., Ch.
`4, (2010)
`
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`I.
`
`Introduction
`
`Patent Owner Corephotonics Ltd (“Corephotonics” or “Patent Owner”)
`
`submits this response to the Petition (Paper 2) filed by Apple Inc. (“Apple” or
`
`“Petitioner”) requesting inter partes review (“IPR”) of claims 1–5 of U.S. Patent No.
`
`9,857,568 (Ex. 1001, the “’568 Patent”). The Board granted institution on claims
`
`1–5 on the two asserted grounds of unpatentability constituting (1) a single reference
`
`obviousness ground based on U.S. Pat. No. 9,128,267 (“Ogino”) (Ex. 1005); and (2)
`
`an obviousness combination comprising Ogino and “Polymer Optics: A
`
`Manufacturer’s Perspective on the Factors that Contribute to Successful Programs”
`
`(“Beich”) (Ex. 1020). See Paper 9 (Institution Decision). Corephotonics
`
`respectfully submits that the arguments presented herein and the additional evidence
`
`submitted herewith, such as the testimony from Patent Owner’s expert witness
`
`Duncan Moore (see, e.g., Ex. 2005, Declaration of Duncan Moore Ph.D., “Ex.
`
`2005”), demonstrate that claims 1–5 are not obvious over either Ogino alone or
`
`Ogino in view of Beich.
`
`II.
`
`Summary of Argument
`
`Apple’s errors begin with an incorrect interpretation of the claim term “TTL.”
`
`Apple asks the Board to disregard the statement in the ’568 patent specification that
`
`expressly defines TTL as a length to the “electronic sensor” and to substitute the
`
`term “electronic sensor” in this definition with the ambiguous term “image plane.”
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`Then Apple interprets the term “image plane” in a manner untethered from how the
`
`’568 patent uses the term. Rather than the physical “image plane” described in the
`
`’568 patent (a surface of the image sensor), Apple points to a mathematical
`
`abstraction, based upon simplifying approximations, entirely divorced from the
`
`physical dimensions of the real system and from where actual images are formed in
`
`the system. Where the ’568 patent specification defines and calculates TTL based
`
`upon the physical location of the sensor and its surface, Apple fails to even mention
`
`the location of the sensor in the modified systems that form the basis of its
`
`obviousness theories.
`
`To satisfy its incorrect construction of TTL, Apple’s two asserted grounds of
`
`obviousness both rely on a suggestion in Ogino that the infrared filtering functions
`
`of a cover glass (“CG”) in certain of its embodiments could instead be performed by
`
`a coating on the fifth lens. Apple argues that based upon this suggestion a POSITA
`
`would have been motivated to modify Ogino’s Example 6 to remove the cover glass.
`
`This argument fails on multiple grounds. First, infrared filtering is only one of the
`
`functions performed by the cover glass in Ogino Example 6. The other critical
`
`function of the cover glass is to protect the surface of the image sensor from particle
`
`contamination during manufacture and use. As explained further below, such
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`particle contamination is responsible for “more than 90% of defects in camera
`
`modules.” Ex. 2019, at 3. Ogino offers no alternative for preventing particle
`
`
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`contamination without a cover glass. Nor does Apple’s petition. A person skilled
`
`in the art would not have been motivated to remove the cover glass, creating major
`
`problems of manufacturability, simply to yield a small purported reduction in TTL.
`
`Second, Apple fails to analyze the operation of its modification to Ogino
`
`(removing the cover glass) or show that it would provide satisfactory performance.
`
`Apple’s expert performed computer simulations of Ogino Example 6 and calculated
`
`its optical performance. But each of those simulations left the cover glass in place!
`
`Apple’s expert conceded that in the system he simulated, the TTL / EFL < 1
`
`limitation of the ’568 patent claims was not satisfied. Apple and its expert entirely
`
`failed to explain or analyze their modified system (with the cover glass removed) to
`
`show that it is feasible or that it offers acceptable performance. Where would the
`
`electronic sensor be located, and why? What other changes to the system would the
`
`lens designer make, and would the resulting system satisfy the other claim elements
`
`of the ’568 patent? What would the optical aberrations of the modified system be?
`
`Apple has offered no evidence or answers to these questions.
`
`To satisfy the center-to-edge thickness ratio limitations, Apple relies on
`
`evidence outside the four corners of Ogino and not part of the grounds instituted
`
`(“Handbook of Optics”) to satisfy a limitation that Apple concedes is not addressed
`
`within Ogino. However, nothing in Ogino says that the first lens is made of materials
`
`or using techniques such that the Handbook of Optics suggestions apply. And other
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`statements in the Handbook of Optics teach away from using the parameters that
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`Apple suggests using with Ogino.
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`Apple’s second ground for obviousness, which combines Ogino and Beich,
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`fails to satisfy the TTL limitation for the same reasons as Apple’s first ground, and
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`it fails to satisfy the center-to-edge thickness limitations for similar reasons. Nothing
`
`in Ogino requires the use of the materials or fabrication techniques that Beich is
`
`directed toward. Applying all of the “rules of thumb” in Beich (as opposed to the
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`one rule of thumb Apple cherry-picks in its attempt to satisfy a claim limitation)
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`yields a lens with dramatically reduced field of view whose performance fails to
`
`satisfy the stated objects of Ogino. And more fundamentally, a POSITA with the
`
`appropriate education and experience would not—as a lens designer and not a
`
`manufacturer—have had the motivation nor the requisite knowledge to combine the
`
`manufacturing and material science teachings of Beich with the lens system of
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`Ogino.
`
`III. Background
`
`A. Overview of the ’568 Patent (Ex. 1001)
`
`Patent Owner Corephotonics developed an innovative camera technology for
`
`optical zoom using a telephoto lens assembly that can fit in a mobile device and
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`provide superior performance to the prior art. Corephotonics’ dual-camera
`
`technology combines the fixed-focal length wide-angle camera that smartphones
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`typically use with a second miniature telephoto lens. The telephoto lens offers a
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`larger fixed focal length that provides higher resolution in a narrower field of view.
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`The dual-camera system thereby enables optical zoom. Petitioner Apple adopted this
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`technology in its iPhone models with dual rear cameras, starting with the iPhone 7
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`Plus in September 2016 and continuing with its newest iPhone Xs and Xs Max
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`models in September 2018. The technology is also now used by others, such as
`
`Samsung and Huawei.
`
`At the heart of Corephotonics’ patented innovations are solutions to the
`
`practical obstacles to making the dual-camera zoom approach work.
`
`U.S. Pat. No. 9,857,568 (“the ’568 patent”) (Ex. 1001) is directed to fixed-
`
`focal length telephoto lens assembly technology with a small thickness and good
`
`quality imaging characteristics. Ex. 1001 at 1:43-45. The ’568 patent provides a
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`compact lens assembly with a small total track length (TTL). Id. at 1:29-31. The
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`total track length (TTL) determines the physical width, or thickness of the camera.
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`See Ex. 2005, ¶¶ 38-39. A small TTL results in a thinner, more compact camera. Id.
`
`The ’568 patent also provides a small ratio of TTL to the effective focal length
`
`(EFL). Id. A ratio of TTL/EFL of less than 1 means that the lens is a telephoto lens.
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`Increasing the effective focal length (EFL) reduces the field of view (FOV), which
`
`allows the camera with a fixed sensor size to capture higher resolution images of
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`small or distant objects. Id. A lens with a greater EFL is able to capture images of
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`such objects with greater detail. Id. Thus, a dual-camera system with two sub-
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`camera stages that have different EFL can offer two different optical zoom levels.
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`A system that combines a telephoto lens (which has a TTL/EFL ratio of less than 1)
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`with a wide angle lens (which has a TTL/EFL ratio greater than 1) provides the
`
`optical zoom feature found on many modern smartphones.
`
`The ’568 patent’s claims are directed to an arrangement of lenses of particular
`
`types and materials, which provide a TTL less than the EFL, i.e., satisfying the ratio
`
`TTL/EFL less than 1. Ex. 1001, cl. 1. The ’568 patent explains that conventional
`
`designs for lens assemblies were not suitable for mobile devices, did not deliver good
`
`image quality, and did not have the property where the TTL is less than EFL. Ex.
`
`1001, 1:33-36. The ’568 patent further provides a telephoto lens assembly has a TTL
`
`that can fit in a cell phone, e.g., having a TTL < 6.5 mm. Ex. 1001, cl. 1.
`
`To achieve lens assemblies suitable for use in real-world applications in
`
`mobile devices with the characteristic of TTL<EFL, the ’568 patent advantageously
`
`provides lens assemblies that follow certain design rules for shape, thicknesses,
`
`individual lens focal length, and material properties. Ex. 2005, ¶ 41. The ’568
`
`patent’s claims are directed to ranges and relationships between the properties of the
`
`various lenses in an assembly. Importantly, claim 1 of the ‘568 patent requires that
`
`the ratio between the thickness along the optical axis of the first object-side (i.e.,
`
`where the side facing out of the camera) lens and the circumferential edge thickness
`
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`of that lens to be less than 4 (meaning, the axial thickness of the first lens element
`
`on the object side must be no greater than 4 times the edge thickness of the lens).
`
`
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`By way of example, Fig. 3A of the ‘568 patent, shown above, illustrates
`
`embodiment 300. See Ex. 1001, at 6:65-8:19 (describing embodiment 300). The
`
`rays through the diagram show the passage of light rays from different incident
`
`angles through the system to the front of the electronic sensor. The specification
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`discloses that embodiment 300 provides an EFL of 6.84 mm and TTL of 5.904 mm.
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`Ex. 1001, 7:63-66. In Fig. 3A, the “object-side” of the lens assembly is on the left,
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`and the “image-side” of the lens assembly (i.e., where the image of the object is
`
`projected onto the surface of a sensor) is on the right. See id. The thickness of the
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`first lens on the object-side, L11, is 1.5127mm, while the edge thickness of that lens,
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`L1e, is 0.298mm, thus yielding a center-to-edge thickness ratio of 3.08. Ex. 2005, ¶
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`43.
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`Fig. 3A also shows a rectangular element, labeled 312, after the fifth lens
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`(going left to right). Element 312 is a cover glass (also known as cover glass window
`
`or cover plate). Ex. 2005, ¶ 44. The cover glass window serves two functions in a
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`lens system: (i) it protects the sensitive surface of the electronic sensor from damage
`
`or contamination, and (ii) when coated with an infrared filter coating, it cuts off
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`infrared light before it reaches the electronic sensor. Id. The protection of the
`
`electronic sensor is particularly important, because, without the protection of the
`
`cover glass, the sensor would susceptible to contamination or damage as well. See
`
`id., see also, e.g., Ex. 1012, at 2-3; Humpston et al., “Optical performance of bare
`
`image sensor die and sensors packaged at the wafer level and protected by a cover
`
`glass,” Proceedings of SPIE (2008) (Ex. 2019), at 3-4. As a practical matter, cover
`
`glass windows are included, by design, as integral and permanently-attached
`
`components of the electronic image sensors at issue. Ex. 2005, ¶ 44.
`
`The Petition challenges independent claim 1 as well as dependent claims 2-5,
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`all of which depend on claim 1. All challenged claims therefore require the ratio
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`TTL to EFL of less than 1.0 as provided for in claim 1.
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`B. Complexity of the Design of Multiple Lens Assemblies, Like the
`Patented Invention
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`The embodiments of the ’568 patent describe an arrangement of at least five
`
`lenses. Multiple lens assemblies, like the ’568 patented invention, are defined by
`
`many different interdependent parameters. Ex. 2005, ¶ 45. As a result, the design
`
`of such multiple lens assemblies is highly complex. Design parameters include,
`
`among many others: 1) The properties of lens materials (index of refraction, as well
`
`as the Abbe number, which describes the color dispersion of refraction in the lens);
`
`2) The shape of the optical surfaces of the lenses; 3) The thickness of lenses; 4) The
`
`distances between lens elements; 5) The precise contours of the front (object-facing)
`
`and back (image-facing) surfaces of the lenses; and 6) The size and location of the
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`aperture stop. Id.
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`The optical surfaces of the lenses are determined by radii of curvature, the
`
`conic constant, and “aspheric coefficients.” Ex. 2005, ¶ 46. The ’568 patent seeks
`
`to achieve high quality optical properties in a small space. This requires employing
`
`complex geometries in the lens design, i.e., “aspheric” lenses. Id. For instance, the
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`exemplary embodiments in the ’568 patent include five aspheric lens elements
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`within the lens system. (Claim 1 also requires at least one aspheric lens element.)
`
`The shape of each surface of an aspheric lens is defined by a mathematical equation.
`
`Id. Plotting this equation in space provides the shape of the surface of the aspheric
`
`lens. The equation that the ’568 patent uses takes the following form:
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`See Ex. 1001, at col. 4. In the above equation, r is distance from (and perpendicular
`
`to) the optical axis, k is the conic coefficient, c = 1/R where R is the radius of
`
`curvature, and αn are aspheric coefficients. Ex. 2005, ¶ 47. These parameters, along
`
`with the thicknesses of lenses, gaps between lenses, and lens material properties all
`
`together are sometimes called a “lens prescription.” See, e.g., Ex. 2013, ¶ 42. The
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`pathway of light through the lenses is defined by the incidence of rays on the surface
`
`of each lens, and then how the material properties and shape of the lenses bend the
`
`rays that pass through them. Id. Therefore, the information in the “lens prescription”
`
`is necessary to allow a POSITA to reconstruct the lens design. Id.
`
`As a result, there are at least the following parameters that can be varied: the
`
`gaps between the five lenses, the sensor, the stop, and window covering the sensor,
`
`and thicknesses of these elements (13 parameters as shown in the tables describing
`
`embodiments of the ’568 patent); the aspheric coefficients and a conic coefficient,
`
`k, and radius of curvature, r, for each lens (8 parameters per lens surface or 80 total),
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`and Abbe numbers and refractive indices for each lens (or 10 total for 5 lenses).
`
`Therefore, there are 98 parameters that can be independently varied. This leads to a
`
`nearly infinite variety of possible lens designs. For example, considering just ten
`
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`possible values for each of these parameters would require evaluating 1098
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`combinations of parameter values. This is greater than the number of elementary
`
`particles in the observable universe,1 and vastly more designs than could ever be
`
`feasibly evaluated. As a result, there are a nearly infinite number of parameter
`
`combination choices to design an arrangement of five lenses like the ’568 patent.
`
`See Ex. 2005, ¶¶ 47-50.
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`The interrelationship between these parameters creates further complexity.
`
`The relationships between the variables can be nonlinear and unpredictable. Id. The
`
`result is a huge design space for a POSITA to explore. Computer simulation and
`
`optimization techniques can help in aspects of the process, but optimization in such
`
`a huge space is limited. Id. Computational optimization techniques may lead to an
`
`apparently improved design but then get trapped in suboptimal solutions. Id. An
`
`analogy would be to imagine the skilled artisan looking up while in a valley
`
`surrounded by mountains. The skilled artisan may not know whether there is a valley
`
`at a lower altitude on the side of one of the mountains. Ultimately a significant
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`degree of manual and hand-driven modification is required to arrive at an effective
`
`design. Id. A POSITA would have understood that, especially, systems with more
`
`than three lenses are too complex for purely computer-aided design. Id.
`
`
`1 https://en.wikipedia.org/wiki/Elementary_particle
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`As a consequence of the complexity of the multi-lens design space, it is
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`particularly challenging to develop a multiple-lens design to meet demanding
`
`requirements – such as fitting in a small package and providing excellent image
`
`quality for mobile device cameras. See id. Moreover, a POSITA must consider more
`
`than just optical properties in a real-world lens system. A POSITA also must
`
`consider include, for example, sensitivity of the lens design to small changes in
`
`shape due to manufacturing defects (tolerance sensitivity), the need to fit lens
`
`assemblies in a container (packaging), the viability and cost of materials used in
`
`lenses, as well as the resilience of the camera system against physical stresses
`
`encountered in typical, every-day use. Id. Considering these factors makes the
`
`multiple-lens design problem even more complex. As a result, a tremendous amount
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`of effort is expended in the development of novel lens designs, many of which are
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`patented.
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`IV. Legal Standard for Petition Review
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`The petitioner has the burden to clearly set forth the basis for its challenges in
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`the petition. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.Cir.2016)
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`(citing 35 U.S.C. § 312(a)(3) as “requiring IPR petitions to identify ‘with
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`particularity ... the evidence that supports the grounds for the challenge to each
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`claim’”). 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, 138 S. Ct. at 1355 (“Congress chose to
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`structure a process in which it’s the petitioner, not the Director, who gets to define
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`the contours of the proceeding.”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
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`1381 (Fed. Cir. 2016) (rejecting the Board’s reliance on obviousness arguments that
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`“could have been included” in the petition but were not, and holding that the Board
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`may 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 1272,
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`1286 (Fed. Cir. 2017) (holding that new arguments in a reply brief are “foreclosed
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`by statute, our precedent, and Board guidelines”).
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`To the extent that the petition relies on an expert declaration, it must be more
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`than conclusory and disclose the facts underlying the opinion. See 37 C.F.R.
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`§42.65(a) (“Expert testimony that does not disclose the underlying facts or data on
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`which the opinion is based is entitled to little or no weight.”); Edmund Optics, Inc.
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`v. Semrock, Inc., IPR2014-00583, Paper 50 at 8 (PTAB, Sep. 9, 2015) (affording
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`little or no weight to “experts’ testimony that does little more than repeat, without
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`citation to additional evidence, the conclusory arguments of their respective
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`counsel.”). Nor may the petition rely on the expert declaration to remedy any gaps
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`in the petition itself. 37 C.F.R. §42.6(a)(3) (“Arguments must not be incorporated
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`by reference from one document into another document”); see also Cisco Systems,
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`Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 9 (PTAB, Aug. 29, 2014)
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`(“This practice of citing the Declaration to support conclusory statements that are
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`not otherwise supported in the Petition also amounts to incorporation by
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`reference.”).
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`V. Level of a Person of Ordinary Skill in the Art (POSITA)
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`A person of ordinary skill in the art (“POSITA”) would have possessed an
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`undergraduate degree in optical engineering, electrical engineering, or physics, with
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`the equivalent of three years of experience in optical design at the time of the
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`effective filing date of the ’568 patent, July 4, 2013. Ex. 2005, ¶ 14. A POSITA
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`would not necessarily have had any experience in manufacturing lenses or optical
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`systems. See id. ¶¶ 15-20.
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`The Petition contends that a POSITA would have “approximately three years
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`of experience in and/or manufacturing multi-lens optical systems.” Pet., at 9.
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`(emphasis added). Apple’s expert Dr. José Sasián offers a different level of skill,
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`calling for “approximately three years of experience in designing and/or
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`manufacturing multi-lens optical systems.” (Ex. 1003, ¶ 19.) However, in
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`IPR2018-01140, in which Apple is currently challenging claims of U.S. Patent
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`9,402,032 (“the ‘032 patent”) based upon the same Ogino prior art patent, Apple
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`claimed that a POSITA would have “approximately three years of experience in
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`
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`designing multi-lens optical systems.” See Ex. 2013, ¶ 19. Apple did not argue that
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`a POSITA would have lens manufacturing experience even though the ’032 patent
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`and ’568 patent are related by continuation-in-part and share largely identical
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`specifications. Apple’s reference to “manufacturing” experience thus appears to be
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`driven primarily by its argument that Ogino, which is prior art directed to lens
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`design, should be combined with disclosures from Beich, which is an article
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`discussing unique manufacturing issues in polymer-injection manufacturing
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`methods for lenses.
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`Under either the POSITA definition in Apple’s petition or that in Dr. Sasián’s
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`declaration, a person with lens design experience, but no lens manufacturing
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`experience can meet the requirements to be a POSITA. Indeed, Dr. Sasián
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`confirmed at his deposition that a person with three years of design experience and
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`no manufacturing experience could meet his POSITA definition. Ex. 2012, 20:12-
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`22 (July 2, 2019 Deposition of Dr. Sasián).
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`To the extent that Apple contends that its POSITA definition requires
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`manufacturing experience, its definition does not accord with the experience of those
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`of ordinary skill in the field. As Dr. Moore explains, the work of a lens designer
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`does not typically overlap with that of a lens manufacturer, except in the way that
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`the design and production stages of any given product would typically overlap. See
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`Ex. 2005, ¶ 19. As Apple provided in its Petition for IPR2018-01140, a POSITA
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`for the subject matter disclosed would be a lens designer with “approximately three
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`years of experience in designing multilens optical systems” (Ex. 2013, ¶ 19
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`(emphasis added)). The Beich reference itself notes the disjoint between engineering
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`teams (that design lenses) and manufacturers:
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`From a manufacturer’s perspective many times we have encountered
`programs where we were given a small glimpse of what the engineering
`team was trying to achieve. This is often presented as a set of
`disembodied specifications for a particular optic. Frequently this comes
`in the form of a request to substitute the existing expensive glass
`substrate for a ‘cheaper’ plastic one. It’s not unusual to hear something
`like, “the specs are on the drawing, just substitute the word acrylic for
`the word BK-7.”
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`Ex. 1020, at 2; see Ex. 2005, ¶¶ 19, 120-21 . Beich describes the problems caused
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`by this disjoint between designers and manufacturers: although the “lens designer .
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`. . is probably concentrating on how the lens needs to perform in the system and
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`rightly so,” “the lens does not exist in isolation. The rest of the system, along with
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`the commercial aspects of fut