UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`COREPHOTONICS LTD.,
`
`Patent Owner
`
`———————
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 9,402,032
`
`APPL-1032 / Page 1 of 69
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`Petition for Inter Partes Review of U.S. Patent No. 9,402,032
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES ............................................................................. 1
`
`A.
`
`B.
`
`C.
`
`Real Party-in-Interest ........................................................................... 1
`
`Related Matters ..................................................................................... 2
`
`Lead and Back-up Counsel and Service Information .......................... 2
`
`III. GROUNDS FOR STANDING ........................................................................ 2
`
`IV. NOTE REGARDING PAGE CITATIONS AND EMPHASIS ...................... 3
`
`V. OVERVIEW OF THE ’032 PATENT ............................................................ 3
`
`A.
`
`B.
`
`Summary of the Patent ......................................................................... 3
`
`Prosecution History .............................................................................. 6
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 7
`
`VII. CLAIM CONSTRUCTION ............................................................................ 8
`
`A.
`
`B.
`
`“Total Track Length (TTL)” ................................................................ 8
`
`“Effective Focal Length (EFL)” ........................................................... 9
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF .................................................................................10
`
`IX.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....10
`
`A.
`
`B.
`
`C.
`
`Challenged Claims ............................................................................. 10
`
`Statutory Grounds for Challenge........................................................ 11
`
`Claims 1 and 13 are anticipated under post-AIA 35 U.S.C. §
`102(a)(2) by Ogino. ............................................................................ 11
`
`ii
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`Petition for Inter Partes Review of U.S. Patent No. 9,402,032
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`1.
`
`2.
`
`3.
`
`Summary of Ogino ................................................................... 11
`
`Claim 1 ..................................................................................... 16
`
`Claim 13 ................................................................................... 32
`
`D.
`
`Claims 14 and 15 are obvious under post-AIA 35 U.S.C. § 103
`over Ogino in view of Chen II ........................................................... 34
`
`1.
`
`2.
`
`3.
`
`4.
`
`Summary of Chen II ................................................................. 34
`
`Reasons to combine Ogino and Chen II .................................. 36
`
`Claim 14 ................................................................................... 46
`
`Claim 15 ................................................................................... 61
`
`X.
`
`CONCLUSION ..............................................................................................63
`
`CERTIFICATE OF WORD COUNT ......................................................................64
`
`CERTIFICATE OF SERVICE ................................................................................65
`
`
`
`
`
`iii
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`Petition for Inter Partes Review of U.S. Patent No. 9,402,032
`
`PETITIONER’S EXHIBIT LIST
`
`May 22, 2018
`
`Ex.1001 U.S. Patent No. 9,402,032
`
`Ex.1002
`
`Prosecution History of U.S. Patent No. 9,402,032
`
`Ex.1003 Declaration of José Sasián, Ph.D, under 37 C.F.R. § 1.68
`
`Ex.1004
`
`Curriculum Vitae of José Sasián
`
`Ex.1005 U.S. Patent No. 9,128,267 to Ogino et al. (“Ogino”)
`
`Ex.1006 Warren J. Smith, MODERN LENS DESIGN (1992) (“Smith”)
`
`Ex.1007 U.S. Patent No. 7,918,398 to Li et al. (“Li”)
`
`Ex.1008 U.S. Patent No. 7,777,972 to Chen et al. (“Chen”)
`
`Ex.1009 U.S. Patent No. 8,233,224 to Chen (“Chen II”)
`Ex.1010 Max Born et al., PRINCIPLES OF OPTICS, 6th Ed. (1980) (“Born”)
`
`Ex.1011
`
`Prosecution history of U.S. Patent No. 9,128,267 to Ogino
`
`Ex.1012
`
`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”)
`
`iv
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`Petition for Inter Partes Review of U.S. Patent No. 9,402,032
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 9,402,032 (“the ’032 patent,” Ex.1001) is generally directed
`
`to “[a]n optical lens assembly [that] includes five lens elements and provides a
`
`TTL/EFL<1.0.” Ex.1001, Abstract. The claims of the ’032 patent similarly recite
`
`“a plurality of refractive lens elements” with a number of limitations such as “a
`
`total track length (TTL) of 6.5 millimeters or less,” “a first lens element with
`
`positive refractive power,” “a second lens element with negative refractive power,”
`
`and “a focal length fl of the first lens element [that] is smaller than TTL/2.”
`
`Ex.1001, 7:43-53. As shown in this Petition, these concepts in a lens assembly with
`
`five lens elements were known in the art before the priority date of the ’032 patent.
`
`This Petition, along with the cited evidence, demonstrates that claims 1 and
`
`13 of the ’032 patent are anticipated under post-AIA 35 U.S.C. § 102(a)(2) and
`
`claims 14 and 15 of the ’032 patent are rendered obvious under post-AIA 35
`
`U.S.C. § 103. Apple Inc. (“Petitioner”) therefore respectfully requests that these
`
`claims be found unpatentable and cancelled.
`
`II. MANDATORY NOTICES
`
`A. Real Party-in-Interest
`
`The real party-in-interest is Apple Inc.
`
`1
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`Petition for Inter Partes Review of U.S. Patent No. 9,402,032
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`B. Related Matters
`
`As of the filing date of this Petition and to the best knowledge of the
`
`Petitioner, the ’032 patent has been asserted in Corephotonics, Ltd. v. Apple Inc.,
`
`Case No. 5-17-cv-06457 (N.D. Cal. filed Nov. 6, 2017).
`
`C. Lead and Back-up Counsel and Service Information
`
`Lead Counsel
`Michael S. Parsons
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Back-up Counsel
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Jordan Maucotel
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`
`
`Phone: (972) 739-8611
`Fax: (214) 200-0853
`michael.parsons.ipr@haynesboone.com
`USPTO Reg. No. 58,767
`
`
`Phone: (214) 651-5116
`Fax: (214) 200-0853
`andy.ehmke.ipr@haynesboone.com
`USPTO Reg. No. 50,271
`
`Phone: (972) 739-8621
`Fax: (214) 200-0853
`jordan.maucotel.ipr@haynesboone.com
`USPTO Reg. No. 69,438
`
`Please address all correspondence to lead and back-up counsel. Petitioner
`
`consents to electronic service via email.
`
`III. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’032 patent is eligible for inter partes review and
`
`that Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the grounds identified in this Petition. Petitioner
`
`2
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`Petition for Inter Partes Review of U.S. Patent No. 9,402,032
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`was served with a complaint asserting infringement of the ’032 patent on March 7,
`
`2018, which is not more than one year before the filing of this Petition. Petitioner
`
`has not filed a civil action challenging the validity of any claim of the ’032 Patent.
`
`IV. NOTE REGARDING PAGE CITATIONS AND EMPHASIS
`
`Petitioner’s citations to Ex.1002 and Ex.1011 use the page numbers added
`
`for compliance with 37 C.F.R. § 42.63(d)(2)(ii). Petitioner’s citations to the
`
`remaining exhibits use the page numbers in their original publication. All bold
`
`underline emphasis in any quoted material has been added.
`
`V. OVERVIEW OF THE ’032 PATENT
`
`A.
`
`Summary of the Patent
`
`The ’032 patent is directed to “[a]n optical lens assembly [that] includes five
`
`lens elements and provides a TTL/EFL<1.0.” Ex.1001, Abstract. The ratio of TTL
`
`(“total track length”) over EFL (“effective focal length”) being less than one
`
`indicates a telephoto lens system. See Ex.1006, p.169. According to the Applicant,
`
`the lens system in the ’032 patent is allegedly the answer to the need for good
`
`quality imaging and a small total track length. See Ex.1001, 1:33-38. The lens
`
`system in the ’032 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
`
`3
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`Petition for Inter Partes Review of U.S. Patent No. 9,402,032
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`first lens element by a first air gap, a third lens element with negative
`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, 1:44-54. An example of the lens system in the ’032 patent is provided
`
`below:
`
`Ex.1001, Fig. 1.
`
`The ’032 patent describes a number of embodiments, that adjust well-known
`
`parameters with respect to the lens assembly shown above. For example, one
`
`
`
`4
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`Petition for Inter Partes Review of U.S. Patent No. 9,402,032
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`embodiment describes an F number (“F#”) of less than 3.2. Ex.1001, 1:63-67.
`
`Other claimed characteristics applicable to only some lens system embodiments
`
`include the focal length of the first lens element (f1) being a certain size, lens
`
`elements having certain Abbe numbers (e.g., the level of light dispersed through
`
`the lens), the shape of the lens elements meeting certain conditions, and the
`
`distance between the lens elements. See, e.g., Ex.1001, 2:2-8.
`
`As set forth in this Petition, adjusting these parameters and characteristics or
`
`the values claimed for these parameters were not new or non-obvious as of the
`
`earliest effective filing date of the ’032 patent. Ex.1003, p.14. 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, 8:8-25. For example,
`
`Ogino (Ex.1005) teaches a similar five lens system with a TTL to EFL ratio of less
`
`than one. Ex.1003, p.14. Ogino’s lens system also includes a number of other
`
`features consistent with the ’032 patent including the shape of the lenses, the focal
`
`length of the lenses, and the Abbe numbers of the lens. Ex.1003, p.14. As a result,
`
`the disclosures provided in Ogino and the other prior art discussed below either
`
`anticipate or render obvious each and every element of the claims of the ’032
`
`patent. Ex.1003, p.14.
`
`5
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`Petition for Inter Partes Review of U.S. Patent No. 9,402,032
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`B.
`
`Prosecution History
`
`The ’032 patent issued on July 26, 2016 from U.S Patent Application No.
`
`14/932,319 (“the ’319 application”) filed on November 4, 2015. See Ex.1001. The
`
`’032 patent is a continuation of U.S. Patent Application No. 14/367,924 (“the ’924
`
`application”) filed as Application No. PCT/IB2014/062465 on June 20, 2014,
`
`which claims priority to Provisional Application No. 61/842,987 filed on July 4,
`
`2013. See Ex.1001. For the purposes of this proceeding, Petitioner does not dispute
`
`the priority claim to July 4, 2013, but does not waive the right to raise this issue in
`
`another proceeding.
`
`The ’319 application was originally filed with 22 claims, with claims 1 and
`
`22 being in independent form. Ex.1002, pp.254-56. In a first Office Action that
`
`issued on January 20, 2016, the Examiner rejected claims 1 and 13 under 35 U.S.C.
`
`§ 102(a)(1) as being anticipated by U.S. Patent Pub. No. 2009/0185289 to Do.
`
`Ex.1002, pp.55-56. In a response filed on January 24, 2016, the Applicant
`
`amended claim 1 to recite “wherein the plurality of lens elements comprises, in
`
`order from an object side to an image side, a first lens element with positive
`
`refractive power and a second lens element with negative refractive power,
`
`wherein a focal length f1 of the first lens element is smaller than TTL/2.” Ex.1002,
`
`p.44. These new limitations were previously recited in original claims 2 and 5.
`
`Ex.1002, p.44.
`
`6
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`Petition for Inter Partes Review of U.S. Patent No. 9,402,032
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`Based on this amendment, the Examiner issued a Notice of Allowance on
`
`May 6, 2015. Ex.1002, pp.21-29. In the Allowance, the Examiner recited claims 1
`
`and 31 (issued claim 20) 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.26-27.
`
`As observed from the prosecution history, the prior art presented in this
`
`petition to render the claims either anticipated or obvious was not cited by the
`
`Examiner and thus was not used as a basis for allowing the claims.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`The level of ordinary skill in the art may be reflected by the prior art of
`
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Here, a person of ordinary skill in
`
`the art (“POSITA”) would include someone who had, at the priority date of the
`
`’032 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. Ex.1003, pp.8. 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. Ex.1003, p.8. 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. Ex.1003, p.8.
`
`7
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`Petition for Inter Partes Review of U.S. Patent No. 9,402,032
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`Lack of work experience can be remedied by additional education, and vice versa.
`
`Ex.1003, p.8.
`
`VII. CLAIM CONSTRUCTION
`
`This Petition presents claim analysis in a manner that is consistent with a
`
`claim term’s plain and ordinary meaning in light of the specification. See 37 C.F.R.
`
`§ 42.100(b). Accordingly, claim terms are given their ordinary and accustomed
`
`meaning as would be understood by a person of ordinary skill in the art in the
`
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`
`(Fed. Cir. 2007) (citing Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
`
`banc)). For terms not addressed below, Petitioner submits that no specific
`
`construction is necessary for this proceeding.1
`
`A.
`
`“Total Track Length (TTL)”
`
`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, 7:47-48. In
`
`reference to this term, the specification of the ’032 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, 1:61-63. The electronic sensor or
`
`
`1 Petitioner does not concede that any term not construed herein meets the statutory
`
`requirements of 35 U.S.C. § 112.
`
`8
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`Petition for Inter Partes Review of U.S. Patent No. 9,402,032
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`image sensor “is disposed at the image plane 114 for the image formation.”
`
`Ex.1001, 3:13-15. 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, 3:24-26.
`
`In the specification of the ’032 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, Table1, Table3, Table5; Ex.1003, p.18.
`
`Accordingly, a POSITA would find, in light of the specification, the term
`
`“total track length (TTL)” to include “the length of the optical axis spacing
`
`between the object-side surface of the first lens element and the image plane.”
`
`Ex.1003, p.18.
`
`B.
`
`“Effective Focal Length (EFL)”
`
`This term is used in claim 1 which recites “wherein the lens assembly has an
`
`effective focal length (EFL).” Ex.1001, 7:46-47. While the specification of the
`
`’032 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
`
`9
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`Petition for Inter Partes Review of U.S. Patent No. 9,402,032
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`software such as Zemax computes the EFL and focal length of a lens system.
`
`Ex.1003, p.17.
`
`Accordingly, a POSITA would find, in light of the specification, that the
`
`term “effective focal length (EFL)” to include “the focal length of a lens
`
`assembly.” Ex.1003, p.17.
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioner asks that the Board review the accompanying prior art and
`
`analysis, institute a trial for inter partes review of claims 1 and 13-15 of the ’032
`
`patent, and cancel these claims as invalid.
`
`As explained below and in the declaration of Petitioner’s expert, Dr. José
`
`Sasián, the concepts described and claimed in the ’032 patent were not new. This
`
`Petition explains where each element of claims 1 and 13-15 is found in the prior art
`
`and why the claims would have been either anticipated or obvious to a person of
`
`ordinary skill in the art (“POSITA”) before the earliest claimed priority date of the
`
`’032 patent.
`
`IX.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`A. Challenged Claims
`
`Claims 1 and 13-15 of the ’032 patent are challenged in this petition.
`
`10
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`Petition for Inter Partes Review of U.S. Patent No. 9,402,032
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`B.
`
`Statutory Grounds for Challenge
`
`Claims 1 and 13 of the ’032 patent are anticipated under post-AIA 35 U.S.C
`
`§ 102(a)(2) by U.S. Patent No. 9,128,267 to Ogino (Ex.1005, “Ogino”). Ogino was
`
`filed on March 26, 2014, and issued on September 8, 2015. Ogino claims priority
`
`to Japanese Application No. 2013-072282 that was filed on March 29, 2013. As
`
`observed in Ogino’s file history (Ex.1011), the application was filed in English
`
`(see Ex.1011, pp.209-87) and a certified copy of the Japanese application was
`
`received by the Patent Office (see Ex.1011, pp.146-85). Accordingly, Ogino’s
`
`effective filing date under § 102(a)(2) is the filing date of the Japanese application
`
`filed on March 29, 2013. Thus, Ogino is prior art to the ’032 patent under 35
`
`U.S.C. § 102(a)(2).
`
`Claims 14 and 15 of the ’032 patent are obvious under post-AIA 35 U.S.C. §
`
`103 over Ogino in view of U.S. Patent No. 8,233,224 to Chen (Ex.1009, “Chen
`
`II”). Chen II was filed on January 8, 2010, and issued on July 31, 2012, which is
`
`before the ’032 patent’s earliest claimed effective filing date of July 4, 2013. Thus,
`
`Chen II is prior art under post-AIA 35 U.S.C. § 102(a)(1).
`
`C. Claims 1 and 13 are anticipated under post-AIA 35 U.S.C. §
`102(a)(2) by Ogino.
`
`1.
`
`Summary of Ogino
`
`Similar to the lens system described in the ’032 patent, Ogino discloses a
`
`five-lens system for use in portable devices. See Ex.1005, Abstract, 1:6-16. In fact,
`
`11
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`Petition for Inter Partes Review of U.S. Patent No. 9,402,032
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`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.
`
`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
`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.
`
`The lens system in Fig. 6 (i.e., Example 6) is particularly relevant to the
`
`claims in the ’032 patent, and is reproduced below:
`
`12
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`Petition for Inter Partes Review of U.S. Patent No. 9,402,032
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`
`
`Ex.1005, Fig. 6.
`
`In Example 6, the five lens elements are identified as L1-L5 and are
`
`aspheric. Ex.1005, 13:4-5. Example 6 also includes “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.
`
`13
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`Petition for Inter Partes Review of U.S. Patent No. 9,402,032
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`The lens system in Fig. 6 (i.e., Example 6) is described with reference to
`
`Table 11, reproduced below:
`
`
`
`Ex.1005, 22:10-35. 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 surface2
`
`
`2 A POSITA would understand that the patentee’s recitation of “the (l+1)th
`
`surface” is a typographical error, and actually refers to the (i+1)th surface, as
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`Si+1 on the optical axis from the object side. The column of Ndj
`shows values of the refractive index of the j-th optical element from
`the object side for the d-line (587.56 mm). The column of vdj shows
`values of the Abbe number of the j-th optical element from the object
`side for the d-line.
`
`Ex.1005, 14:40-47. In other words, the column Di corresponds to the on-axis
`
`spacing of and between each lens element and is identified in Fig. 6 as D1 to D13;
`
`the column ndj provides the refractive index or power of each lens element L1-L5
`
`and the optional member CG; and the column vdj provides the Abbe number of
`
`each lens element L1-L5 and the optional member CG. Ex.1003, p.22.
`
`Also included in Table 11 is “the focal length f of the whole system (mm),”
`
`designated as “f=4.428”; “the back focal length Bf (mm),” designated as
`
`“BF=1.424”; and “the total lens length TL (mm)” or total track length, designated
`
`as “TL=4.387.” Ex.1005, 14:47-50, 22:10-15. Since the optical member CG
`
`(designated as element 12 in Table 11) is optional, “the back focal length Bf
`
`indicates an air-converted value, and likewise, in the total lens length TL, the back
`
`focal length portion uses an air-converted value.” Ex.1005, 14:51-53. In other
`
`words, Ogino provides the back focal length Bf and the total lens length TL as if
`
`the optional optical member CG was removed and only air existed between the
`
`evidenced by the sentence’s reference to the i-th surface, and the surface Si+1.
`
`Ex.1003, p.22, n.1.
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`fifth lens element L5 and the image plane. Ex.1003, p.22. This means that the total
`
`lens length TL without the optical member CG is 4.387 mm, as given in Table 11,
`
`and can be calculated by summing the widths D2 to D10 and the back focal length
`
`Bf. Ex.1003, p.23.
`
`The following analysis describes how Ogino anticipates each and every
`
`element of at least claims 1 and 13 of the ’032 patent. A corresponding claim chart
`
`is contained in Dr. Sasián’s expert declaration. See Ex.1003, pp.23-39.
`
`2.
`
`Claim 1
`
` [1.0] A lens assembly, comprising:
`
`Ogino discloses this limitation because it teaches “a fixed-focus imaging
`
`lens that forms an optical image of a subject on an imaging device.” Ex.1005, 1:7-
`
`8. Ogino also teaches that its device “is an imaging lens substantially consisting of,
`
`in order from an object side, five lenses.” Ex.1005, 2:1-3. An imaging lens
`
`consisting of five lenses is a “lens assembly.” Ex.1003, p.23. One particularly
`
`relevant example of Ogino’s five-lens imaging apparatus is Example 6 shown in
`
`Fig. 6. Thus, Ogino’s imaging lens with five-lenses teaches a “lens assembly” as
`
`recited in the claim. Ex.1003, p.23.
`
`[1.1] a plurality of refractive lens elements arranged along an optical axis,
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`Ogino discloses this limitation because the lens assembly of Example 6
`
`includes a plurality of refractive lenses (labeled L1 to L5) arranged along an
`
`optical axis (labeled Z1) as shown in Fig. 6 below:
`
`Optical Axis Z1
`
`Plurality of Refractive Lens Elements L1 to L5
`
`
`
`Ex.1003, p.23; Ex.1005, Fig.6 (annotated).
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`As shown in Fig. 6, Ogino teaches that each lens L1 to L5 is a refractive
`
`lens: “the positive refractive power of the first lens L1” (Ex.1005, 9:11), “the
`
`refractive power of the second lens L2” (Ex.1005, 9:23-29), “third lens L3 has a
`
`negative refractive power” or “a positive refractive power” (Ex.1005, 7:51, 53),
`
`“fourth lens L4 have a positive refractive power” (Ex.1005, 7:67) and “fifth lens
`
`L5 has a negative refractive power” (Ex.1005, 8:8). See Ex.1003, pp.24.
`
`As also shown in Fig. 6, Ogino specifically states that its refractive lenses
`
`are arranged along the same optical axis designated as Z1. See Ex.1003, p.25;
`
`Ex.1005, 5:13-15 (“The reference sign Di represents an on-axis surface spacing
`
`between i-th surface and (i+1) th surface on an optical axis Z1.”).
`
`Thus, Ogino’s Example 6 lens assembly with five refractive lens elements
`
`arranged along a Z1 optical axis teaches “a plurality of refractive lens elements
`
`arranged along an optical axis” as recited in the claim. Ex.1003, p.25.
`
`[1.2] wherein at least one surface of at least one of the plurality of lens elements
`is aspheric,
`
`Ogino discloses this limitation because it states that “[i]n the imaging lenses
`
`according to Examples 1 to 6, both surfaces of each of the first to fifth lenses
`
`L1 to L5 are aspheric.” Ex.1005, 15:22-24. This is confirmed by the asterisk in
`
`Table 11 (which correlates to Fig. 6), which show that lens surfaces 2 to 11
`
`(corresponding to lenses L1 to L5) are aspheric:
`
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`
`
`Aspheric Surfaces of Lenses L1 to L5
`
`
`
`Ex.1003, p.26; Ex.1005, 22:10-36 (Table 11) (annotated).
`
`Thus, the aspheric surfaces of lenses L1 to L5 of Ogino’s Example 6 lens
`
`assembly teaches “wherein at least one surface of at least one of the plurality of
`
`lens elements is aspheric” as recited in the claim. Ex.1003, pp.17-18, 26.
`
`[1.3] wherein the lens assembly has an effective focal length (EFL),
`
`As discussed above, a POSITA would understand the term “effective focal
`
`length” (EFL) to describe the focal length of the entire lens system. Ex.1003, p.26.
`
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`In that regard, Ogino teaches that for each of its embodiments, “f is a focal length
`
`of a whole system.” Ex. 1005, 3:16; see also Ex.1003, p.26. Accordingly, the focal
`
`length f of the entire lens system of Example 6 is represented in Table 11 as f =
`
`4.428 mm (units are given in mm (see Ex.1005, 14:47-53)):
`
`Effective Focal Length (EFL)
`
`
`
`Ex.1003, p.27; Ex.1005, 22:10--36 (Table 11) (annotated).
`
`
`
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`Thus, Ogino’s Example 6 lens assembly with an effective focal length of
`
`4.428 mm teaches “wherein the lens assembly has an effective focal length (EFL)”
`
`as recited in the claim. Ex.1003, p.27.
`
`[1.4] and wherein the lens assembly has a total track length (TTL) of 6.5
`millimeters or less
`
`Ogino discloses this limitation because the lens assembly in Example 6 has a
`
`total track length (TTL) of 4.387 mm, which is less than 6.5 mm. Ex.1003, p.27.
`
`First, as discussed above, a POSITA would understand the term “total track length
`
`(TTL)” to describe the on-axis spacing between the object-side surface of the first
`
`lens element and the image plane. Ex.1003, p.27; see also Ex.1008, 3:24-26. Thus,
`
`as shown below in Fig. 6, a POSITA would identify the total track length of
`
`Ogino’s Example 6 lens apparatus to be the distance between the object-side
`
`surface of the first lens L1 and the image plane 100 (R14). Ex.1003, p.28.
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`
`
`Object-side
`surface of
`first lens
`element
`
`Total Track
`Length (TTL)
`
`Image
`plane
`
`
`
`Ex.1003, p.28; Ex.1005, Fig. 6 (annotated).
`
`Second, as discussed above, optical member CG is optional and can be
`
`removed “to reduce the number of components, and to reduce the total length.” See
`
`Ex.1005, 5:65-6:2. In cases where the optical member CG is removed and only air
`
`is present between lens element L5 and the image plane, the back focal length Bf
`
`from Table 11 can be used in place of the widths of elements D11 to D13.
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`Ex.1003, p.29. This embodiment is specifically provided in Ogino as it states that
`
`“the back focal length Bf indicates an air-converted value, and likewise, in the total
`
`lens length TL, the back focal length portion uses an air-converted value.”
`
`Ex.1005, 14:47-53. Based on this, the total track length of Example 6 without the
`
`optional optical member CG can be calculated by summing the widths of D2 to
`
`D10 and then adding the air-converted value of the back focal length Bf. Ex.1003,
`
`p.29. These values are provided in Table 11 below:
`
`Back Focal Length
`
`Total Track Length
`
`
`
`
`
`
`
`Widths of D2 to D10
`
`TTL = (sum of D2 to D10) + Bf
`
`
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`Ex.1003, p.30;