UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS LTD.,
`Patent Owner
`
`———————
`
`Declaration of José Sasián, PhD
`under 37 C.F.R. § 1.68
`in Support of Petitioner Reply
`
`Apple v. Corephotonics
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 4
`I.
`CLAIMS 2, 5, 6, 18, AND 21-23 ARE OBVIOUS OVER OGINO’S
`II.
`EXAMPLE 5 EMBODIMENT IN VIEW OF BAREAU. ........................................ 5
`A. A POSITA would have been motivated to modify Ogino’s Example 5
`lens as shown. .......................................................................................... 5
`1. A POSITA would have found Ogino Example 5 to be a reasonable
`starting place. ..................................................................................................... 6
`2. A POSITA would have used well-known techniques to modify the
`Ogino Ex. 5 lens. ................................................................................................ 8
`B. Manufacturing considerations are not required by claims 2, 5, 6, 18, and
`21-23 of the ’897 patent. ........................................................................11
`1. Dr. Milster seeks to import manufacturing requirements into claims
`where there are none. .......................................................................................11
`2. Dr. Milster admits that a POSITA would have designed lenses for
`purposes other than mass production manufacturing. .....................................12
`3. Manufacturing considerations are preferences, and do not show that
`lenses cannot be physically produced. .............................................................15
`4. Whether a prior art lens design is “finished” is not called for in the
`claims of the ’897. ............................................................................................16
`C. A POSITA could have further modified the Example 5 lens to meet Dr.
`Milster’s “manufacturing” requirements. ..............................................17
`III. CLAIMS 3, 8, 19, AND 24 ARE OBVIOUS OVER OGINO’S EXAMPLE
`5 EMBODIMENT IN VIEW OF BAREAU AND KINGSLAKE. ........................22
`A. A POSITA would have been motivated to modify Ogino’s Example 5
`lens to reduce the f-number to 2.45. ......................................................22
`IV. CLAIMS 16 AND 30 ARE OBVIOUS IN VIEW OF CHEN’S EXAMPLE
`1 EMBODIMENT, IWASAKI, AND BEICH. .......................................................28
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`A. A POSITA would have been motivated to modify Chen’s Example 1
`lens with a thinner cover glass. ..............................................................28
`B. The lens designs of the ’897 patent do not meet the manufacturing
`tolerances posed by Dr. Milster. ............................................................29
`CONCLUSION ..............................................................................................32
`V.
`VI. APPENDIX ....................................................................................................33
`
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`I, José Sasián, Ph.D., declare as follows:
`Introduction
`I.
`
`1.
`
`I am the José Sasián who has previously submitted a declaration as
`
`APPL-1003 in this proceeding. The terms of my engagement, my background,
`
`qualifications and prior testimony, and the legal standards and claim constructions
`
`I am applying are set forth in my previous CV and declaration. See APPL-1003;
`
`APPL-1004. I offer this declaration in reply to Dr. Milster’s declaration filed in
`
`this proceeding as Exhibit 2001. In forming my opinion, I have considered the
`
`materials noted in my previous declaration, as well as the following additional
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`materials:
`
`• APPL-1028 – Deposition Transcript of Tom Milster, Ph.D.
`
`• APPL-1029 – IPR 2019-00030, Paper 21
`
`• APPL-1030 – IPR 2019-00030, Ex. 2002
`
`• APPL-1031 – Michael P. Schaub, THE DESIGN OF PLASTIC OPTICAL
`
`SYSTEMS (2009)
`
`• APPL-1032 – IPR 2018-01140, Paper 2
`
`• APPL-1033 – IPR 2018-01140, Paper 14
`
`• APPL-1034 – IPR 2018-01140, Paper 37
`
`• APPL-1035 – Japanese Patent Pub. No. JP2013106289 to Konno et al.
`
`• APPL-1036 – U.S. Patent No. 10,338,344 to Mercado
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`II. Claims 2, 5, 6, 18, and 21-23 are obvious over Ogino’s Example 5
`embodiment in view of Bareau.
`
`A. A POSITA would have been motivated to modify Ogino’s Example
`5 lens as shown.
`
`2.
`
`As discussed in my previous declaration, it is my opinion that a
`
`POSITA would have found it obvious to modify Ogino’s Example 5 lens assembly
`
`in view of Bareau’s specifications for cell phone camera lenses with an F#=2.8 or
`
`less for ¼” and smaller image sensors. APPL-1003 at 51. Such a combination
`
`would have been nothing more than applying Bareau’s specification for a brighter
`
`lens system for small pixel format sensors, according to known lens design and
`
`modification methods to yield a predictable result of Ogino’s Example 5 lens
`
`assembly likewise supporting an f-number of 2.8 or lower for a small pixel sensor
`
`format. Id.
`
`3.
`
`As established in my declaration, a POSITA would have been
`
`motivated to make these modifications using techniques within his or her skill
`
`level. See APPL-1003 at 51-58, 61-67. Furthermore, Dr. Milster’s (Patent Owner’s
`
`expert) arguments of the alleged requirements to “manufacture” the modifications
`
`of Ogino’s Example 5 lens are overly rigorous and not applicable to the claims at
`
`issue. First, none of these requirements are described in any of claims 2, 5, 6, 18,
`
`and 21-23 or the specification of the ’897 patent. See Ex. 2001 at 88-124. Second,
`
`even if such rigorous manufacturing considerations would have been required in
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`2013, a POSITA would have easily adjusted the modified Ogino’s Example 5 lens
`
`to satisfy these alleged “extra” limitations while still meeting all the actual
`
`limitations recited in the claims, as discussed below.
`
`1.
`
`A POSITA would have found Ogino Example 5 to be a
`reasonable starting place.
`
`4.
`
`Dr. Milster’s arguments regarding “hundreds of other miniature lens
`
`designs available in the patent literature or in the market” are not accurate. Ex.
`
`2001 at 81. Although Dr. Milster appears not to have done extensive research to
`
`determine the actual number of available lenses, or even if these lenses were
`
`applicable to the ’897 patent (see Ex.1025, 78:12-17), it is worth noting that the
`
`number of available miniature telephoto lenses in 2013 was limited.
`
`5.
`
`Lens designers looking at miniature or telephoto lens designs did not
`
`have hundreds of telephoto designs to choose from, and Ogino was one available
`
`design that met both miniature and telephoto lens criteria. APPL-1003 at 54. A
`
`POSITA would have been particularly interested in Ogino because it provides six
`
`examples of miniature lenses, including several telephoto examples, with a range
`
`of f-numbers. See APPL-1005, Figs. 1-13. As further discussed in my previous
`
`declaration, a POSITA would have also been interested in Ogino because its lenses
`
`serve a similar purpose as those of the ’897 patent for miniature lenses that could
`
`be used in portable systems such as cell phones. See APPL-1003 at 41, APPL-
`
`1001, 1:25-30; APPL-1005, 1:5-16.
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`6.
`
`The relevance of Ogino to the lenses of the ’897 patent is also
`
`evidenced by not only their similarities in track length and optical characteristics,
`
`but also the fact that Ogino’s Example 5 anticipates most of the claims of the ’897
`
`patent, to which Dr. Milster offers no opinion. Ex. 2001 at 6. Example 5 offers the
`
`best telephoto ratio of the Ogino’s examples (0.868) which, when considered
`
`alone, would have motivated a POSITA to consider it ripe for improvement given
`
`its less desirable features, like a higher f-number relative to Ogino’s other
`
`examples. See APPL-1005, 16:29-22:35 (Tables 1-11). The low telephoto ratio of
`
`Example 5 would also have given a POSITA more flexibility to experiment with
`
`the lens design while still maintaining its telephoto character.
`
`7.
`
`After selecting Ogino as a suitable reference for a starting place, a
`
`POSITA would have been motivated to analyze all six of the exemplary lens
`
`assemblies of Ogino. The fact that any of Ogino’s lens designs had characteristics
`
`“further from Bareau’s specifications” (see Ex. 2001 at 82) is not a reason that a
`
`POSITA would have rejected a lens assembly without studying it. In fact, Dr.
`
`Milster has not provided any support that a POSITA would not have diligently
`
`studied each of the limited number of relevant lenses at his or her disposal and
`
`considered if improvements could have been made. See Ex. 2001 at 81-82.
`
`8.
`
`Rather, a POSITA would have been particularly motivated, given that
`
`Example 5 has the best telephoto ratio of Ogino’s examples, to analyze this lens
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`design to determine why it has a larger f-number than Ogino’s other examples, and
`
`if this f-number could be reduced to a value similar to the other, much lower, f-
`
`number examples (see Figs. 8-10). APPL-1003 at 54. Therefore, a POSITA would
`
`have found Ogino’s Example 5 lens to be a suitable starting place for a better
`
`telephoto lens design since modifying an existing lens design takes far less time
`
`than starting from scratch. APPL-1003 at 54; APPL-1006, p. 37 (discussing
`
`improving existing lens designs); APPL-1017, p. 173 (discussing that even
`
`experienced lens designers “will likely be better off resorting to a patent or other
`
`source for a starting point” instead of “starting from scratch”); APPL-1031, p. 76
`
`(stating “[o]ften the design that is required is similar to one that already exists; it is
`
`difficult to come up with something completely new”).
`
`2.
`
`A POSITA would have used well-known techniques to modify
`the Ogino Ex. 5 lens.
`As discussed previously in my declaration, a POSITA would have
`
`9.
`
`used well-known techniques to modify Ogino’s Example 5 lens to achieve a
`
`specific design objective. APPL-1003 at 51-58. In particular, reducing the f-
`
`number to 2.8 would have been an obvious design objective, as evidenced by
`
`Bareau and acknowledged by Dr. Milster in his comment that “Bareau suggests
`
`that a lens with f-number of 2.8 was desirable for use in a miniature digital camera
`
`in 2013.” See APPL-1012, pp.3-4; Ex. 2001 at 80.
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`10. However, Dr. Milster argues that making small changes to Ogino’s
`
`Example 5 lens to reduce the f-number “is not the approach that a POSITA would
`
`actually follow.” See Ex. 2001 at 86. Dr. Milster appears to take issue with small
`
`changes in the modified design, arguing that “[i]n modifying Ogino Example 5, Dr.
`
`Sasián kept the number of lens elements, the powers of the lens elements, their
`
`thicknesses, and their spacings unchanged, except for a small change to the
`
`thickness of the first lens element.” Ex. 2001 at 84.
`
`11. This, though, is precisely the approach a POSITA would have taken.
`
`See APPL-1017, p.168 (stating that after entering the lens design to be improved
`
`into a design computer program, “each variable is changed a small amount, called
`
`an increment, and the effect to performance is then computed”). Dr. Milster
`
`testified that he took a similar gradual “step-wise process” in modifying lenses.
`
`APPL-1028, 21:6-18. This is also the same process that Patent Owner’s expert Dr.
`
`Moore described when he was deposed in earlier, related proceedings involving
`
`patents in the same family. APPL-1013, 99:6-18 (stating that variables in a lens
`
`design are changed “gradually” and a POSITA would check optical performance
`
`between steps).
`
`12. Starting with Ogino’s Example 5 lens, a POSITA would have been
`
`motivated to gradually increase the diameter of one or more lens element surfaces,
`
`particularly the first lens which serves as the entrance aperture for this particular
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`lens. APPL-1003, p.55. In my previous declaration, I listed further steps a POSITA
`
`would have taken, including optimizing the lens for image quality using conic
`
`constants and aspheric coefficients. APPL-1003, p.104. The resulting modified
`
`Ogino Example 5 lens is only one example of a lens that a POSITA could have
`
`designed to achieve an f-number of 2.8.
`
`APPL-1003, p.104.
`
`13. As Dr. Milster acknowledges, this modified lens is physically very
`
`similar to the original Ogino Example 5 lens. See Ex. 2001 at 84. The modified
`
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`lens represents a simple solution well within the level of skill of a POSITA. APPL-
`
`1003, p.59. Therefore, a POSITA would have modified Ogino’s Example 5 lens
`
`system as shown above.
`
`B. Manufacturing considerations are not required by claims 2, 5, 6,
`18, and 21-23 of the ’897 patent.
`
`1.
`
`Dr. Milster seeks to import manufacturing requirements into
`claims where there are none.
`
`14. The majority of Dr. Milster’s arguments rely on the alleged
`
`“manufacturability” of the modified Example 5 lens design. See Ex. 2001 at 88-
`
`124. Dr. Milster does not define what “manufacturing” means in terms of the
`
`claims but seems to rely on an implicit requirement of large-scale injection plastic
`
`molding. Id. at 36-37; APPL-1028, 173:18-23 (Dr. Milster stating “[i]f it’s to
`
`produce a lens that is going to be replicated a million times a month, then,
`
`absolutely the POSITA’s job is to make a manufacturable lens. And that’s the
`
`situation here with mobile cell phone lenses.”). To this end, Dr. Milster discusses
`
`diverse manufacturing considerations including manufacturing tolerances,
`
`oversizing, degating, baffles, and rounded corners and then seeks to require the
`
`modified lens designs presented in my declaration to meet these unclaimed
`
`requirements. See Ex. 2001 at 88-124.
`
`15. However, claims 2, 5, 6, 18, and 21-23 do not include any
`
`manufacturing considerations. In fact, when asked where manufacturing
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`considerations were required by any of the claims of ’897 patent, Dr. Milster’s
`
`only answer was the center to edge thickness ratio included in claims 16 and 30.
`
`See APPL-1028, 85:20-86:9. My previous declaration showed how these center-to-
`
`edge thickness ratios are disclosed in the prior art without relying on Ogino.
`
`APPL-1003, 76-99. Thus, it is clear that the other claims of the ’897 patent do not
`
`include any large-scale manufacturing requirements as Dr. Milster seems to imply.
`
`2.
`
`Dr. Milster admits that a POSITA would have designed lenses
`for purposes other than mass production manufacturing.
`In arguing that lenses should be rejected if they do not meet
`
`16.
`
`manufacturing requirements for mass production applications, Dr. Milster’s
`
`position in his declaration fails to consider that a POSITA would have known of
`
`other applications for lens design that do not involve mass production
`
`manufacturing. See Ex. 2001 at 88-124. As discussed above, the claims of the ’897
`
`patent do not include any requirement for mass production manufacturing.
`
`Moreover, a POSITA would have been motivated to design a lens for limited
`
`manufacturing or experimental purposes. These lens designs would not have been
`
`subject to the rigorous design requirements of mass-produced injection molding as
`
`Dr. Milster argues.
`
`17. During deposition, Dr. Milster also agreed that there are other
`
`applications for useful lens designs that are not based on any level of
`
`manufacturing: “[a]nd so your question was does a POSITA ever design a lens
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`other than manufacturing and my answer to that is yes.” APPL-1028, 173:9-11. He
`
`also gave the specific example of an “international lens design conference” as a
`
`non-manufacturing application that a POSITA would consider. Id., 172:25. I agree
`
`with Dr. Milster that a POSITA would have been motivated to design for other
`
`applications that do not involve manufacturing on a large scale, including research
`
`and academic applications. The modifications of Ogino’s Example 5 presented in
`
`my declaration would have been useful for any of these other applications.
`
`18. Moreover, a POSITA would have been aware of other “useful” lenses
`
`in the art that have a similar shape to that of the first lens in the modified lens
`
`systems presented in the Petition. For example, Japanese Patent Pub. No.
`
`JP2013106289 to Konno (APPL-1035) and U.S. Patent No. 10,338,344 to Mercado
`
`(APPL-1036) include examples of first lenses with narrow edges as shown below.
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`APPL-1035, Fig. 11
`
`
`
`
`
`
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`APPL-1036, Fig. 13
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`19. A POSITA would have understood these patented lens designs to have
`
`usefulness and purpose, and to be physically producible or able to be adjusted for
`
`manufacturing, even if they do not meet the strict large-scale manufacturing
`
`considerations argued by Dr. Milster.
`
`3. Manufacturing considerations are preferences, and do not
`show that lenses cannot be physically produced.
`
`20. Even if a POSITA found the various manufacturing considerations
`
`listed by the Dr. Milster to be relevant to the lens design at issue, these
`
`considerations would have been understood to be preferences and not
`
`requirements. In fact, Beich (which Dr. Milster relies on) states that “[r]ules of
`
`thumb are quick generalizations. They are useful for initial discussions, but the
`
`rules can quickly break down as the limits of size, shape, thickness, materials, and
`
`tolerances are encountered.” APPL-1007, p.7. Even the strictest manufacturing
`
`requirements would have therefore been balanced with other considerations. For
`
`example, the balance between performance and cost is a common topic in lens
`
`design literature. See APPL-1012, p. 11 (discussing a hybrid solution incorporating
`
`build tolerances, alignment, and depth of field, and that it will be “interesting to see
`
`what cost/image quality balance cell phone manufacturers finally select”); APPL-
`
`1007, p. 1 (providing “a review of the cost tradeoffs between design tolerances,
`
`production volumes, and mold cavitation”). Even in the case where certain
`
`manufacturing considerations are important for a particular design or purpose and
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`are not met, it does not automatically mean that the design is impossible to make.
`
`See APPL-1007, p.9 (discussing designs that are “more challenging to
`
`manufacture” based on unmet manufacturing considerations, but not impossible).
`
`And, Dr. Milster has not provided evidence that any lens design, including the lens
`
`designs presented in my declaration, would have been impossible to produce.
`
`4. Whether a prior art lens design is “finished” is not called for
`in the claims of the ’897.
`
`21. Dr. Milster further alleges that the modified Example 5 lens is not a
`
`finished lens, suitable for “manufacturing.” See Ex. 2001 at 88. However, the
`
`designs in the ’897 patent do not satisfy these rigorous manufacturing standards
`
`either, nor are these requirements recited in the claims or disclosed in the
`
`specification. And, Dr. Milster admitted that he did not analyze the lenses of the
`
`’897 patent to determine if they met the same manufacturing standards that he
`
`alleges are required for the modified Example 5 designs to satisfy the claims.
`
`APPL-1028, 98:24-99:4.
`
`22.
`
`If Dr. Milster would have done this analysis, he would have found that
`
`the Example 1 lens assembly of the ’897 is not suitable for manufacturing (under
`
`his owned finished lens theory) for at least the reasons that 1) it is not desensitized
`
`and 2) suffers from serious ghost images that are focused on the image plane.
`
`23.
`
` Dr. Milster’s requirements that a lens system is finished is therefore
`
`not implicitly required by the claims in any fashion. Moreover, a POSITA would
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`have understood that further steps would have been required to prepare the lenses
`
`of the ’897 patent for manufacturing, such as conducting a stray light analysis,
`
`specifying stray light apertures (glare stops), adjusting for the actual indices of
`
`refraction of chosen materials, etc. These steps are also not recited in the claims or
`
`even contemplated by the ’897 patent.
`
`C. A POSITA could have further modified the Example 5 lens to meet
`Dr. Milster’s “manufacturing” requirements.
`
`24. As discussed above, the ’897 patent does not require its lenses to be
`
`mass-producible as argued by Dr. Milster. However, if a POSITA were to design
`
`with the specific further objective to have a lens suitable for such manufacturing,
`
`the POSITA had the requisite skill to do so (which still would have met all the
`
`limitations of the ’897 patent). For example, besides the modified Ogino Example
`
`5 design presented in my previous declaration (“alternative 1”), I have provided a
`
`further modified design (“alternative 2) that meets Dr. Milster’s “manufacturing”
`
`requirements, as shown below for comparison:
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`
`
`Modified Ogino Example 5,
`Modified Ogino Example 5,
`(alternative 2), Appendix, Fig. 1A.
`(alternative 1) APPL-1003, p.104.
`25. As with the other modifications including alternative 2 offered above,
`
`I generated this alternative 2 lens by taking gradual steps within the level of skill of
`
`a POSITA. See Appendix, Fig. 1A. Specifically, I began with the modified Ogino
`
`Example 5 lens assembly and maintained all radii of curvature the same as in the
`
`Ogino Example 5 lens to keep the same lens structure. Id. I also maintained all lens
`
`thicknesses and spacings as in the original Ogino lens, except for the thickness of
`
`the first lens (that was increased to 0.8 mm) and the distance to the image plane for
`
`proper focusing. Id. Then, I optimized the lens for minimum spot size and
`
`distortion using the aspheric coefficients as variables. Id.
`
`26. As shown above, the modified lens design has a first lens with low
`
`center-to-edge thickness ratio, which addresses Dr. Milster’s manufacturing
`
`concerns regarding alternative 1, while still meeting the limitations of claims 2, 5,
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`6, 18, and 21-23 (as discussed below). As further shown in the Appendix, this
`
`alternate 2 modified lens design has good optical performance and relative
`
`illumination, thereby indicating its desirability to a POSITA. See Appendix, Figs.
`
`1C-1D.
`
`27. Accordingly, it is my opinion that a POSITA would have had the
`
`requisite skill to perform all of these steps if motivated to produce a lens (such as
`
`the alternative 2 modified lens) that satisfies Dr. Milster’s “manufacturability”
`
`requirement. Consequently, claims 2, 5, 6, 18, and 21-23 are obvious in view of
`
`Ogino’s Example 5 embodiment and Bareau. None of Patent Owner’s arguments
`
`or alleged implicit limitations change the fact that each and every recited limitation
`
`is satisfied as explained below:
`
`U.S. 10,330,897
`Claim 2
`[2.0] The lens
`assembly of claim 1,
`wherein the TTL is
`equal or smaller than
`6.0 mm and
`
`Ogino modified by Bareau to support an F# of 2.8
`
`Ogino discloses this limitation because, as shown in [1.2],
`the Example 5 lens assembly has a TTL with the cover
`glass element of 5.273 mm which is less than 6.0 mm. In
`the alternative 2 modification above where Example 5
`supports F#=2.8, the TTL is 4.438 mm. After scaling for a
`1/4" sensor (by multiplying by 2.25/1.75), the TTL is
`5.7054 compared to the original TTL of 5.273 mm. Thus,
`the alternative 2 modification of Ogino’s Example 5
`renders this limitation obvious.
`
`[2.1] wherein the lens
`assembly has a f-
`number F# < 2.9.
`
`Ogino’s Example 5 modified to support an F# of 2.8
`(alternative 2), as taught in Bareau and discussed in detail
`above, renders this limitation obvious.
`
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`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`As shown above, a POSITA would have found it obvious
`to modify Example 5 based on Bareau’s teachings to
`achieve a telephoto lens with an F# of 2.8 or less. As also
`shown above, a POSITA would have found this alternative
`2 modification to be both predictable and desirable due to
`Ogino’s other disclosed embodiments supporting a lower
`f-number (see APPL-1005, Figs. 8-13), Bareau’s teaching
`of cell phones supporting F#=2.8 or less, and a general
`desire among POSITAs to design faster lenses (see APPL-
`1013, p.104). Example 5 modified with an F# of 2.8
`(alternative 2) is provided below with corresponding data.
`See infra Appendix, Fig. 1A.
`
`See infra Appendix, Fig. 1A.
`Thus, the alternative 2 modification of Ogino’s Example 5
`based on Bareau’s teachings to support an F# of 2.8 renders
`obvious “wherein the lens assembly has a f-number F# <
`2.9” as recited in the claim.
`
`
`
`This limitation is the same as [2.1] and is disclosed for the
`same reasons discussed above.
`
`Claim 5
`[5.0] The lens
`assembly of claim 1,
`wherein the lens
`
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`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`assembly has a f-
`number F# < 2.9.
`Claim 6
`[6.0] The lens
`assembly of claim 5,
`wherein lens element
`L1_1 has a concave
`image-side surface.
`
`Claim 18
`[18.0] The lens
`assembly of claim 17,
`wherein the TTL is
`equal or smaller than
`6.0 mm
`
`Ogino discloses this limitation because the L1 lens (i.e.,
`L1_1) in the Example 5 lens assembly has a convex object-
`side surface and a concave image-side surface:
`As in the first embodiment, the imaging
`lenses according to the second to sixth
`embodiments of
`the present
`invention
`substantially consist of, 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.
`APPL-1005, 13:5-11.
`Example 5 modified to support F#=2.8 (alternative 2)
`continues to maintain positive value radius of curvature
`values for both the object- and image-side surfaces of L1.
`See Appendix, Fig. 1E. Thus, even Example 5 modified to
`support F#=2.8 (alternative 2) continues to yield a
`meniscus-shaped L1 lens.
`Thus, Ogino’s Example 5 lens assembly whether alone or
`modified in the alternative 2 design as shown above
`teaches “wherein the first lens element has a convex
`object-side surface and a convex or concave image-side
`surface” as recited by the claim.
`
`This limitation is the same as [2.0] and is disclosed for the
`same reasons discussed above.
`
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`

`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`[18.1] and wherein the
`lens assembly has a f-
`number F#<2.9.
`Claim 21
`[21.0] The lens
`assembly of claim 17,
`wherein the lens
`assembly has a f-
`number F# < 2.9.
`Claim 22
`[22.0] The lens
`assembly of claim 21,
`wherein lens element
`L1_1 has a concave
`image-side surface.
`Claim 23
`[23.0] The lens
`assembly of claim 17,
`wherein the lens
`assembly has a f-
`number F#=2.8.
`
`This limitation is the same as [2.1] and is disclosed for the
`same reasons discussed above.
`
`This limitation is the same as [2.1] and is disclosed for the
`same reasons discussed above.
`
`This limitation is the same as [6.0] and is disclosed for the
`same reasons discussed above.
`
`This limitation is rendered obvious as discussed above in
`[2.1]. While the limitation in [2.1] has the “F#<2.9,” the
`analysis above shows how the alternative 2 modification
`of Ogino’s Example 5 lens supports F#=2.8.
`
`
`
`
`
`III. Claims 3, 8, 19, and 24 are obvious over Ogino’s Example 5
`embodiment in view of Bareau and Kingslake.
`
`A. A POSITA would have been motivated to modify Ogino’s
`Example 5 lens to reduce the f-number to 2.45.
`
`28. Similar to the discussion above, Dr. Milster does not allege that the
`
`modified lens design presented in my previous declaration fail to meet all
`
`limitations of claims 3, 8, 19, and 24, or that a POSITA would not have been able
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`to “manufacture” such a design. Instead, Dr. Milster argues that a POSITA would
`
`not have changed the shape of the first lens from mensiscus to any other shape
`
`based on Ogino’s teaching that it has a meniscus first lens. Ex. 2001 at 128-138.
`
`29.
`
`I understand that Patent Owner made similar arguments in IPR2018-
`
`01140 for the related patent U.S. 9,402,032 (“the ’032 patent”), where I presented
`
`a modification of Ogino’s Example 6 lens assembly with the second lens changed
`
`from meniscus to biconcave. See APPL-1032, Paper 2 at 44.
`
`30. Similar to the arguments in that case, a POSITA would have
`
`understood Ogino’s teachings about a meniscus-shaped first lens as simply
`
`describing its lens designs, not establishing a requirement for or discouragement
`
`against modification. A POSITA would not have been constrained by any such
`
`teachings in modifying Ogino’s examples to satisfy the POSITA’s purpose. This is
`
`supported by the fact that changing the curvature of surfaces within a lens system
`
`is a well-known improvement technique that POSITAs regularly consider. See
`
`APPL-1005, 16:11-19; APPL-1006 at 25-37; APPL-1023, 86:16-23, 97:7-12. In
`
`fact, Ogino itself states that its examples “may be modified in various forms” and
`
`that “the values of the radius of curvature” can be varied. See APPL-1005, 16:11-
`
`19. In this case, a POSITA would have been motivated to change the shape of
`
`Ogino’s Example 5 first lens to increase the lens diameter to allow more light to
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`pass through the system while maintaining a focal length similar to the original
`
`Ogino Example 5 lens assembly. APPL-1003, p.70.
`
`31. Dr. Milster also argues that although the modified lens is possible,
`
`“Dr. Sasian’s declaration and testimony are very unclear on what process he used,
`
`let alone why he used that process.” Ex. 2001 at 132. Although these steps were
`
`included in my previous declaration (see APPL-1003, pp.67-71, 108-111), the
`
`steps used to produce the second modified Example 5 lens design are again
`
`provided, which are gradual and within the level of a skill of a POSITA.
`
`32. As discussed above, a POSITA would have determined Ogino’s
`
`Example 5 to be a suitable starting place. APPL-1003, p.68. From there, a POSITA
`
`would have been motivated to modify the