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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner
`
`_____________________
`
`
`IPR2020-00878
`Patent No. 10,330,897
`
`_____________________
`
`
`PETITIONER’S REPLY
`
`
`
`

`

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`
`
`
`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
`
`
`
`
`
`I.
`II.
`
`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`Claims 1, 4, 9-15, 17, 20, and 25-29 are anticipated by Ogino’s
`Example 5 embodiment. .................................................................................. 1
`III. Claims 2, 5, 6, 18, and 21-23 are obvious over Ogino’s Example
`5 embodiment in view of Bareau. .................................................................... 1
`A. A POSITA would have been motivated to modify Ogino’s
`Example 5 lens as shown. ..................................................................... 1
`1.
`A POSITA would have found Ogino Example 5 to
`be a reasonable starting place. .................................................... 2
`Dr. Sasián used the same techniques that a POSITA
`would have used to generate the modified lenses of
`Ogino Ex. 5. ................................................................................ 6
`B. Manufacturing considerations are not required by the ’897
`claims nor can they be imported to avoid unpatentability. ................... 8
`1.
`Patent Owner seeks to import manufacturing
`requirements into the ’897 claims where there are
`none. ............................................................................................ 8
`Patent Owner’s arguments contradict statements
`made in a related case, and supported by a different
`expert,
`that
`lens design
`is separate
`from
`manufacturing. ..........................................................................11
`Patent Owner’s expert admits that a POSITA would
`have designed lenses for purposes other than mass
`production manufacturing. ........................................................13
`4. Manufacturing considerations are preferences, and
`do not show that lenses cannot be physically
`produced. ...................................................................................16
`5. Whether a prior art lens design is finished is not
`relevant to the claims of the ’897. .............................................17
`ii
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`
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`2.
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`2.
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`3.
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`

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`
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`
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`C.
`
`B.
`
`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
`A POSITA could have further modified the Example 5
`lens
`to meet Patent Owner’s
`“manufacturing”
`requirements. .......................................................................................19
`IV. 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 as discussed in the Petition. .......................................22
`Claims 16 and 30 are obvious in view of Chen’s Example 1
`embodiment, Iwasaki, and Beich. ..................................................................28
`A. A POSITA would have been motivated to modify Chen’s
`Example 1 lens as established in the Petition......................................28
`The lens designs of the ’897 patent do not meet the
`manufacturing tolerances posed by the Patent Owner. .......................29
`VI. Conclusion .....................................................................................................31
`VII. Certificate of Word Count .............................................................................32
`
`
`V.
`
`
`
`
`
`
`
`iii
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`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
` PETITIONER’S EXHIBIT LIST
`Updated: April 30, 2021
`
`
`
`
`
`APPL-1001 U.S. Patent No. 10,330,897
`
`APPL-1002 Prosecution History of U.S. Patent No. 10,330,897
`
`APPL-1003 Declaration of José Sasián, Ph.D., under 37 C.F.R. § 1.68
`APPL-1004 Curriculum Vitae of José Sasián, Ph.D.
`
`APPL-1005 U.S. Patent No. 9,128,267 to Ogino et al. (“Ogino”)
`
`APPL-1006 Warren J. Smith, MODERN LENS DESIGN (1992) (“Smith”)
`APPL-1007 William S. Beich et al., “Polymer Optics: A manufacturer’s
`perspective on the factors that contribute to successful programs,”
`SPIE Proceedings Volume 7788, Polymer Optics Design,
`Fabrication, and Materials (August 12, 2010),
`https://doi.org/10.1117/12.861364 (“Beich”)
`APPL-1008 U.S. Patent No. 7,777,972 to Chen et al. (“Chen”)
`APPL-1009 U.S. Patent No. 9,678,310 to Iwasaki et al. (“Iwasaki”)
`
`APPL-1010 Max Born et al., PRINCIPLES OF OPTICS, 6th Ed. (1980) (“Born”)
`
`APPL-1011 Prosecution history of U.S. Patent No. 9,128,267 to Ogino
`APPL-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”)
`APPL-1013 Rudolf Kingslake, OPTICS IN PHOTOGRAPHY (1992) (“Kingslake”)
`
`APPL-1014 U.S. Patent No. 7,859,588 to Parulski et al. (“Parulski”)
`APPL-1015 Japanese Patent Pub. No. JP2013106289 to Konno et al. and
`certified English translation
`
`
`
`iv
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`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
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`
`
`APPL-1016 Bruce J. Walker, OPTICAL ENGINEERING FUNDAMENTALS (1995)
`(“Walker”)
`APPL-1017 Robert E. Fischer, Optical System Design (2008) (“Fischer”)
`APPL-1018 Alan Symmons & Michael Schaub, FIELD GUIDE TO MOLDED
`OPTICS (2016) (“Schaub”)
`APPL-1019 Optical Society of America, HANDBOOK OF OPTICS, vol. II 2nd
`ed. (1995) (“Handbook of Optics”)
`APPL-1020 U.S. Patent No. 10,324,273 to Chen et al. (“Chen”)
`
`APPL-1021 U.S. Patent No. 9,857,568
`APPL-1022 U.S. Patent No. 9,568,712
`
`APPL-1023 Deposition Transcript of Duncan Moore, Ph.D. in IPR2018-01140
`
`APPL-1024 U.S. Patent No. 7,321,475 to Wang et al.
`APPL-1025 Greg Hollows et al., “Matching lenses and sensors”, Vision
`Systems design (March 2009)
`APPL-1026 Prosecution history of U.S. Patent No. 9,678,310 to Iwasaki et al.
`
`Deposition Transcript of Tom Milster, Ph.D.
`
`IPR 2019-00030, Paper 21
`
`IPR 2019-00030, Ex. 2002
`
`APPL-1027 Email from Patent Owner’s counsel authorizing electronic service
`APPL-1028
`(NEW)
`APPL-1029
`(NEW)
`APPL-1030
`(NEW)
`APPL-1031
`(NEW)
`APPL-1032
`(NEW)
`
`Michael P. Schaub, THE DESIGN OF PLASTIC OPTICAL SYSTEMS
`(2009)
`
`IPR 2018-01140, Paper 2
`
`
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`v
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`

`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
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`
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`
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`IPR 2018-01140, Paper 14
`
`IPR 2018-01140, Paper 37
`
`Japanese Patent Pub. No. JP2013106289 to Konno et al.
`
`U.S. Patent No. 10,338,344 to Mercado
`
`Declaration of José Sasián, Ph.D. in support of Petitioner’s Reply
`
`
`
`
`
`APPL-1033
`(NEW)
`APPL-1034
`(NEW)
`APPL-1035
`(NEW)
`APPL-1036
`(NEW)
`APPL-1037
`(NEW)
`
`
`
`
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`vi
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`
`
`Introduction
`
`I.
`
`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
`
`
`
`
`
`The Petition and evidence provide detailed reasons why a person of skill in
`
`the art (“POSITA”) would have understood the cited references to render obvious
`
`claims 1-6 and 8-30 of the ’897 patent. To argue for patentability, Patent Owner’s
`
`Response imports into the claims numerous manufacturing considerations not
`
`required by the claims or the specification. Because Patent Owner’s arguments and
`
`evidence fail to overcome the evidence of record or to adequately refute the
`
`Petition, the Board should find the challenged claims unpatentable.
`
`II. Claims 1, 4, 9-15, 17, 20, and 25-29 are anticipated by Ogino’s Example
`5 embodiment.
`
`Patent Owner does not dispute that Ogino’s Example 5 embodiment
`
`anticipates claims 1, 4, 9-15, 17, 20, and 25-29. Petitioner respectfully requests that
`
`these claims be found unpatentable and cancelled.
`
`III. 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.
`
`Patent Owner does not dispute that the modifications of Ogino’s Example 5
`
`lens meet all the requirements of the claims at issue. See Response, p.30. Patent
`
`Owner also does not dispute that a POSITA could have modified Ogino’s Example
`
`5 lens assembly to reduce the f-number in the way shown by Petitioner’s expert Dr.
`
`Sasián. Instead, Patent Owner argues that a POSITA would not actually follow this
`1
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`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
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`approach, alleging inaccurate design process assumptions and irrelevant
`
`
`
`
`
`
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`manufacturing requirements. See Response, pp.30, 33, 34. However, as established
`
`in the Petition and discussed below, a POSITA would have been motivated to
`
`make these modifications using techniques well within his or her skill level. See
`
`Petition, pp.41-45, 52-56; APPL-1003, ¶¶51-58, 61-67. Furthermore, Patent
`
`Owner’s arguments regarding rigorous and irrelevant manufacturing considerations
`
`allegedly required to “manufacture” the modifications of Ogino’s Example 5 lens
`
`are not described in either the claims nor the specification of the ’897 patent. Even
`
`if such manufacturing considerations were required in 2013, a POSITA would
`
`have easily modified the modified Example 5 lens to satisfy these alleged “extra”
`
`limitations while still meeting all the actual limitations recited in the claims.
`
`APPL-1037, ¶3.
`
`1.
`
`A POSITA would have found Ogino Example 5 to be a
`reasonable starting place.
`
`Patent Owner first argues that a POSITA would not have found Ogino’s
`
`Example 5 lens system to be a suitable starting place, citing an unsupported
`
`statement by Dr. Milster (Patent Owner’s expert) that there were “hundreds of
`
`other miniature lens designs available in the patent literature or in the market.”
`
`Response, p.31. This argument does not address the question of whether a POSITA
`
`would have started with Ogino’s Example 5 lens assembly, but instead attempts to
`
`
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`2
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`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
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`widen the field of options so that Ogino’s Example 5 would not have been a likely
`
`
`
`
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`
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`choice. When questioned about his support for this comment, Dr. Milster admitted
`
`that his “hundreds” figure was not limited to the filing date of the patent and was
`
`not limited to telephoto lenses similar to the ’897 patent:
`
`Q. Have you done a search of how many miniature lens
`designs were available in 2013?
`A. Given that the cell phone camera lenses have been
`around long enough, much longer than that, I would
`assume that there would be not quite as many as now but
`still on the order of maybe one or 200. I don't know. I
`have not done that search.
`Q. And when you are talking about miniature lens
`designs, are you limiting your analysis to just telephoto
`lenses or all miniature lenses?
`A. I believe the way that sentence is written, it's not
`limited to telephoto lenses.
`
`Ex. 1025, 78:12-17.
`
`In reality, the number of available miniature telephoto lenses in 2013 was
`
`limited. APPL-1037, ¶4. There is no evidence that lens designers looking at
`
`miniature or telephoto lens designs would have hundreds of designs to choose
`
`from, and Ogino was one available design that met both criteria. APPL-1003, ¶54;
`
`APPL-1037, ¶5; In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (stating
`
`that a POSITA “is presumed to know the relevant prior art”). A POSITA would
`3
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`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
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`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. Ogino also descibes that its lenses are for the same
`
`purpose as the ’897 patent. Compare APPL-1005, 1:5-16 (“an imaging apparatus,
`
`such as a digital still camera, a cellular phone with a camera ... on which the
`
`imaging lens is mounted to perform photography.”) with APPL-1001, 1:25-30 (“a
`
`miniature telephoto lens assembly included in such a system and used in a portable
`
`electronic product such as a cell-phone.”).
`
`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,
`
`which Patent Owner does not dispute. Response, p.1. 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
`
`id., 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. APPL-1037, ¶6.
`
`
`
`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
`
`
`
`4
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`

`

`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
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`Ogino. APPL-1037, ¶7. The fact that any of Ogino’s lens designs had
`
`
`
`
`
`
`
`characteristics “further from Bareau’s specifications” (see Response, p.34) is not a
`
`reason that a POSITA would have rejected the lens assembly without studying it.
`
`In fact, Patent Owner has not provided any evidence independent of its expert’s
`
`conclusory opinion that a POSITA would not diligently study each of the limited
`
`number of relevant lenses at hand and consider if improvements could be made.
`
`See Ex. 2001, ¶¶81-82; In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998) (the
`
`law “presumes that all prior art references in the field of invention are available to”
`
`a POSITA).
`
`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
`
`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, ¶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, ¶54; APPL-1006, p.37; APPL-1017, p.173
`
`(discussing 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.
`
`
`
`5
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`

`

`
`
`
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`2.
`
`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
`Dr. Sasián used the same techniques that a POSITA would
`have used to generate the modified lenses of Ogino Ex. 5.
`
`
`
`
`
`Upon selecting Ogino’s Example 5 lens assembly as a suitable starting
`
`place, a POSITA would have used well-known techniques to modify the design to
`
`achieve a specific design objective. APPL-1003, ¶¶51-58. In particular, reducing
`
`the f-number to 2.8 would have been an obvious design objective, as evidenced by
`
`Bareau. See APPL-1012, pp.3-4. Even Patent Owner acknowledges that “Bareau
`
`suggests that a lens with f-number of 2.8 was desirable for use in a miniature
`
`digital camera in 2013.” Response, p.30.
`
`However, Patent Owner 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 Response, p.33. Patent Owner takes issue with the minimal
`
`nature of the changes, complaining 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.” Response, p.32.
`
`This, though, is precisely the approach a POSITA would have taken. See
`
`APPL-1037, ¶11; APPL-1017 (stating that to improve a lens design, “each variable
`
`is changed a small amount, called an increment, and the effect to performance is
`
`then computed”) APPL-1017, p.168. Dr. Milster testified that he took a similar
`
`
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`6
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`

`

`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
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`gradual “step-wise process” in modifying lenses. APPL-1028, 21:6-18. Patent
`
`
`
`
`
`
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`Owner’s expert Dr. Moore described a similar process 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).
`
`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
`
`lens. APPL-1003, p.55. Dr. Sasián also listed further steps a POSITA would have
`
`taken, including optimizing the lens for image quality using conic constants and
`
`aspheric coefficients. Id., 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.
`
`
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`7
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`

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`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
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`
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`
`
`APPL-1003, p.104. As Patent Owner acknowledges, this modified lens is
`
`physically very similar to the original Ogino Example 5 lens. See Response, p.32.
`
`The modified 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 in Dr. Sasián’s modified Ogino Example 5 above.
`
`B. Manufacturing considerations are not required by the ’897 claims
`nor can they be imported to avoid unpatentability.
`
`1.
`
`Patent Owner seeks to import manufacturing requirements
`
`
`
`8
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`

`

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`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
`into the ’897 claims where there are none.
`
`
`
`
`
`The majority of Patent Owner’s arguments hinge on the alleged
`
`“manufacturability” of the modified Example 5 lens design. See Response, pp.34-
`
`55. Patent Owner 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., pp.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, Patent Owner
`
`discusses diverse manufacturing considerations including manufacturing
`
`tolerances, oversizing, degating, baffles, and rounded corners which it seeks to
`
`require of the modified lens designs presented by Petitioner. Id.
`
`However, claims 2, 5, 6, 18, and 21-23 do not include any manufacturing
`
`considerations. In fact, when questioned about where manufacturing 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:
`
`Q. Do you see anything in the claims of the '897 that relate
`to the manufacturing considerations we discussed today?
`A. (Witness reviewing document).
`I see two places. In column nine, claim 16 and column 10,
`claim 30.
`
`
`
`9
`
`

`

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`
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`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
`Q. Okay and claim 16 and 30 reference the center to edge
`thickness ratio, right?
`A. Yes.
`Q. Any other manufacturing considerations mentioned
`in the claims of the '897 patent?
`A. None other than what's implied by the specification.
`
`
`
`APPL-1028, 85:20-86:9.
`
`The Petition shows how these center-to-edge thickness ratios are disclosed
`
`in the prior art without relying on Ogino. APPL-1003, 76-99. Moreover, the
`
`inclusion of the center-to-edge thickness ratio in claims 16 and 30 and not in any
`
`other claims makes it clear that they are additional limitations not required of the
`
`other claims of the ’897 patent under the doctrine of claim differentiation. See SRI
`
`Int’l v. Matsushita Elec. Corp., 775 F. 2d 1107 (“It is settled law that when a patent
`
`claim does not contain a certain limitation and another claim does, that limitation
`
`cannot be read into the former claim in determining either validity or
`
`infringement.”).
`
`The principle that claim limitations cannot be imported from the
`
`specification when they are not present in the claims is well-established1 and
`
`
`1 See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
`
`2004) (“Though understanding the claim language may be aided by explanations
`
`
`
`10
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`

`

`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
`
`particularly applicable to the present case. Specifically, the center-to-edge
`
`
`
`
`
`
`
`thickness ratio at issue was not originally described in the specification of previous
`
`patents in the family of the ’897 patent but was later added in the continuation-in-
`
`part application that issued as U.S. Patent No. 9,857,568 (“the ’568 patent”) which
`
`was found unpatentable based on Ogino’s Example 6. See APPL-1021, 1:6-17;
`
`IPR2019-00030, paper 32.
`
`Patent Owner does not dispute that claims with this limitation (claims 16 and
`
`30) are not entitled to the original priority date of the other claims. See Response,
`
`p.15 (“Dr. Milster has considered the level of skill in the art as of January 30, 2017
`
`for claims 16 and 30, and as of July 4, 2013 for the other challenged claims”).
`
`Thus, even based on Dr. Milster’s opinion, it is clear that the other claims of the
`
`’897 patent do not include any manufacturing requirements. Id. Accordingly,
`
`Patent Owner’s arguments to import manufacturing considerations where they are
`
`conspicuously absent should be rejected.
`
`2.
`
`Patent Owner’s arguments contradict statements made in a
`related case, and supported by a different expert, that lens
`
`
`contained in the written description, it is important not to import into a claim
`
`limitations that are not part of the claim. For example, a particular embodiment
`
`appearing in the written description may not be read into a claim when the claim
`
`language is broader than the embodiment.”).
`
`
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`11
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`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
`design is separate from manufacturing.
`
`
`
`
`
`Patent Owner’s insistence that a POSITA would immediately reject lens
`
`designs based on manufacturing considerations directly contradicts its earlier
`
`arguments made in IPR 2019-00030 regarding the ’568 patent, the parent of the
`
`’897 patent:
`
`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 Ogino.
`
`APPL-1029, p.4 (emphasis original). Dr. Moore (Patent Owner’s expert in
`
`IPR2019-00030) also directly contradicted the opinion of Patent Owner’s expert in
`
`this proceeding that manufacturing considerations would be an integral part of the
`
`lens design process:
`
`As I discussed herein in Section IV, the work of lens
`designers was in 2013 and still is today, separate and
`distinct from the manufacturing of lenses themselves. The
`design and manufacture of lens systems each requires
`specialized knowledge, education, and experience in
`different fields. In fact, the persistent and pervasive
`disjoint between lens designers and lens manufacture in
`the industry is noted by Beich itself ... engineers on lens
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` IPR2020-00878 (Patent No. 10,330,897)
`design teams do not know, and do not care, about the
`special manufacturing concerns that crop up during the
`production of polymer lens designs.
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`APPL-1030, Ex. 2002, p.56 (emphasis original).
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`In other words, after arguing in a related case (to preserve patentability of a
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`related patent) that manufacturing and lens design are completely separate
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`considerations for a POSITA, Patent Owner now seeks to reject any prior art lens
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`designs based solely on what were previously irrelevant manufacturing
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`considerations. See Response, pp.34-55. Patent Owner cannot have it both ways. It
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`cannot argue that a POSITA would not consider manufacturing to preserve
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`patentability for a parent patent then argue the exact opposite to preserve
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`patentability in a child patent relying on the exact same disclosure. Consequently,
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`Patent Owner’s arguments here are both conclusory and inconsistent and therefore
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`should carry no weight.
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`3.
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`Patent Owner’s expert admits that a POSITA would have
`designed lenses for purposes other than mass production
`manufacturing.
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`Patent Owner’s arguments that lenses should be rejected if they do not meet
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`manufacturing requirements for mass production applications fail to consider that a
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`POSITA would have known of other applications for lens design that do not
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`involve mass production manufacturing. See Response, pp.35-53, 66-67. Petitioner
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`notes that the claims of the ’897 patent do not include any requirement for mass
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` IPR2020-00878 (Patent No. 10,330,897)
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`production manufacturing. Moreover, a POSITA would have been motivated to
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`design a lens for limited manufacturing or experimental purposes. APPL-1037,
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`¶16. These lens designs would not have been subject to the rigorous design
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`requirements of mass-produced injection molding as Patent Owner argues. Id.
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`As Dr. Milster agrees, there are other applications for useful lens designs
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`that are not based on any level of manufacturing: “[a]nd so your question was does
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`a POSITA ever design a lens other than manufacturing and my answer to that is
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`yes.” APPL-1028, 173:9-11. He also gave the specific example of an “international
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`lens design conference” as a non-manufacturing application that a POSITA would
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`consider. Id., 172:25. A POSITA therefore would have been motivated to design
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`for other applications that do not involve manufacturing on a large scale, including
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`research and academic applications. APPL-1037, ¶17. The modifications of
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`Ogino’s Example 5 presented in the Petition would have been useful for any of
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`these other applications. Id.
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`Moreover, a POSITA would have been aware of other “useful” lenses in the
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`art that have a similarly shaped first lens compared to the modified lens systems
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`presented in the Petition. For example, Japanese Patent Pub. No. JP2013106289 to
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`Konno (APPL-1035) and U.S. Patent No. 10,338,344 to Mercado (APPL-1036)
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`include examples of first lenses with narrow edges as shown below.
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`APPL-1035, Fig. 11
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`APPL-1036, Fig. 13
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`A POSITA would have understood these patented lens designs to have
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`usefulness and purpose, and to be physically producible, even if they do not meet
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`the strict large-scale manufacturing considerations argued by Patent Owner. APPL-
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`1037, ¶19.
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`4. Manufacturing considerations are preferences, and do not
`show that lenses cannot be physically produced.
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`Even if a POSITA found the various manufacturing considerations listed by
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`the Patent Owner to be relevant to the lens design at issue, these considerations
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`would have been understood to be preferences and not requirements. In fact, Beich
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`states that “[r]ules of thumb are quick generalizations. They are useful for initial
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`discussions, but the rules can quickly break down as the limits of size, shape,
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`thickness, materials, and tolerances are encountered.” APPL-1007, p.7. Thus, even
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`the strictest manufacturing requirements would have been balanced with other
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`considerations. APPL-1037, ¶21. In fact, the balance between performance and
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`cost is a common topic in lens design literature. See APPL-1012, p.11 (stating it
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`will be “interesting to see what cost/image quality balance cell phone
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`manufacturers finally select”); APPL-1007, p.1 (providing “a review of the cost
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`tradeoffs between design tolerances, production volumes, and mold cavitation”).
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`Even in the case where certain manufacturing considerations are important
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`for a particular design or purpose and are not met, it does not automatically mean
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`that the design is impossible to make. See APPL-1007, p.9 (discussing designs that
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`are “more challenging to manufacture” based on unmet manufacturing
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`considerations, but not impossible). In fact, Patent Owner has not provided
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`evidence that any lens design, including the designs in the Petition, would have
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`been impossible to produce.
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`5. Whether a prior art lens design is finished is not relevant to
`the claims of the ’897.
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`As discussed above, Patent Owner does not dispute that a POSITA could
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`have chosen the lens designs of Ogino as a suitable starting point, or even designed
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`a modified lens based on Ogino’s Example 5, as presented in the Petition.
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`Response, pp.31-32. Instead, Patent Owner alleges that the modified Example 5
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`lens is not a finished lens, suitable for manufacturing. See Response, p.53.
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`However, the designs in the ’897 patent also do not satisfy these rigorous standards
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`nor are these requirements recited in the claims or the specification. Further, Dr.
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`Milster admitted that he did not analyze the lenses of the ’897 patent to determine
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`if they met the same manufacturing standards that he alleges are required for Dr.
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`Sasián’s modified Example 5 design to satisfy the claims:
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`Q. Did you perform any Zemax analysis on the lenses
`described in the [’897] specification in your analysis of
`determining whether they were manufacturable?
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`A. No. I did not.
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`APPL-1028, 98:24-99:4.
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`Petitioner’s Reply
` IPR2020-00878 (Patent No. 10,330,897)
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`If Dr. Milster would have done this analysis, he would have found that the
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`Example 1 lens assembly of the ’897 is not suitable for manufacturing (under his
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`own theory) for at least the reasons that 1) it is not desensitized and 2) suffers from
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`serious ghost images that are focused on the image plane. APPL-1037, ¶22. Based
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`on this alone, Dr. Milster’s “finish” requirement is not implicitly required by the
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`claims in any fashion. EPOS Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338,
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`1347 (Fed. Cir. 2014) (“A claim construction that excludes a preferred
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`embodiment ... is rarely, if ever correct and would require highly persuasive
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`evidentiary support.”) (citation omitted).
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`Moreover, a POSITA would have understood that further steps would have
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`been required to prepare the lenses of the ’897 patent for manufacturing, such as
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`conducting a stray light analysis, specifying stray light apertures, adjusting for the
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`actual indices of refraction of chosen materials, etc. APPL-1037, ¶23. These steps
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`are also not recited in the claims or even contemplated by the ’897 patent. Patent
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`Owner cannot now import requirements not recited in the claims or specification,
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`nor even implicit in its own disclosed designs to maintain patentability over an
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`obvious modification of the prior art. See Atlantic Research Mktg. Sys., Inc. v.
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`Troy, No. 11-1002 (Fed. Cir. 2011) (rejecting claims that “exceed in scope the
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`subject matter that [applicant] chose to disclose to the public in the written
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`description”).
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`C. A POSITA could have further modified the Example 5 lens to
`meet Patent Owner’s “manufacturing” requirements.
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`As discussed above, the ’897 patent does not require its lenses to be mass-
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`producible as argued by Dr. Milster. However, if a POSITA were to design with
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`the specific further objective to have a lens suitable for such manufacturing, the
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`POSITA had the requisite skill to do so (which still would have met all the
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`limitations of the ’897 patent). For example, besides the modified Ogino Example
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`5 design presented in the Petition (“alternative 1”), Dr. Sasián has provided a
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`further modified design (“alternative 2) that meets Dr. Milster’s “manufacturing”
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`requirements, as shown below for