Inter Partes Review of
`Patent No. 10,330,897
`
`Apple Inc. v. Corephotonics, LTD., Case No. IPR2020-00878
`
`Michael Parsons
`Jordan Maucotel
`Haynes and Boone, LLP
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`1
`
`
`Patent No. 10,330,897
`
`Apple Inc. v. Corephotonics, LTD., Case No. IPR2020-00878
`
`Michael Parsons
`Jordan Maucotel
`Haynes and Boone, LLP
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`1
`
`
`
`Grounds for challenging the claims of the ’897 patent.
`
`Ground Challenged Claims
`
`References
`
`1, 4, 9-15, 17, 20, and
`25-29
`2, 5, 6, 18, and 21-23 Ogino (Ex. 5) and Bareau
`
`Ogino (Ex. 5) (undisputed)
`
`Basis
`
`§ 102
`
`§ 103
`
`1
`
`2
`
`3
`
`4
`
`3, 8, 19, and 24
`
`Ogino (Ex. 5), Bareau, and Kingslake § 103
`
`16 and 30
`
`Chen (Ex. 1), Iwasaki, and Beich
`
`§ 103
`
`Petition at 9-10.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`2
`
`2
`
`
`
`Obviousness only requires a motivation to combine the prior art
`and a reasonable expectation of success in doing so.
`
`• Obviousness is a question of whether a POSITA would have been:
`•
`“motivated to combine the teachings of the prior art references to achieve the
`claimed invention, and
`that the skilled artisan would have had a reasonable expectation of success in
`doing so.”
`
`•
`
`InTouch Techs., Inc. v. VGO Comms., 751 F.3d 1327, 1347 (Fed. Cir. 2014).
`Note that in IPR, the standard is a “preponderance of the evidence.” 35 U.S.C. § 316(e).
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`3
`
`3
`
`
`
`“Motivation to combine” is whether there is an “apparent reason to
`combine” the prior art “in the fashion claimed” by the patent.
`
`• The Sur-Reply argues throughout that Apple failed to provide reasons:
`• why a POSITA would have selected Chen’s Ex. 1 in the first place (see p. 18) and
`• why a POSITA would have ended up at Dr. Sasián's examples in the Petition (see
`pp. 3-4, 9-10, 14-15, 19-22).
`• These arguments fail to apply the proper obviousness standard:
`
`InTouch Techs., Inc. v. VGO Comms., 751 F.3d 1327, 1347 (Fed. Cir. 2014).
`
`• The claims here are directed to five-lens miniature telephoto lens assemblies and
`Ogino and Chen teach five-lens miniature telephoto lens assemblies in Ex. 5 and Ex.
`1, respectively.
`
`• The only relevant question here is what was presented in the Petition — whether a
`POSITA would have been motivated to modify Ogino’s Ex. 5 and Chen’s Ex. 1 in “the
`fashion claimed by the patent at issue” — not whether a POSITA could have chosen
`other references or made other unrelated modifications. See Petitioner Reply at 24, 29.
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`4
`
`4
`
`
`
`“Reasonable expectation of success” only means “reasonable
`probability of success,” not absolute certainty.
`
`• The Sur-Reply argues that a POSITA modifying a lens could have made various
`modifications to achieve the desired goal (e.g., a reduced f-number) and that Petitioner
`must show why a POSITA would have chosen the specific embodiment that meets the
`claim limitation (see pp. 13-17).
`• These argument fail because they require showing a certainty of success (of
`reaching the claimed limitation).
`
`• A “reasonable expectation of success” is simply “a reasonable probability of success” in
`achieving the claims at issue, “not absolute” certainty of achievement.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`5
`
`5
`
`Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007).
`
`
`
`Discussion Summary
`
`Ground 2: Obvious to modify Ogino’s Ex. 5 to F=2.8 based on
`Bareau’s typical lens specifications.
`
`Ground 3: Obvious to further modify Ogino’s Ex. 5 lens to
`F=2.45 resulting in L1 with convex image-side surface.
`
`Grounds 2 & 3: Patent Owner has not shown that Dr.
`Sasián's examples cannot be made.
`
`Ground 4: Obvious to modify Chen’s Ex. 1 to reduce the
`thickness of the cover glass based on Iwasaki’s example.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`6
`
`6
`
`
`
`Ground 2: Obvious to modify Ogino’s Ex. 5 from F=3.94 to
`Bareau’s preference of F=2.8.
`• Of Ogino’s miniature designs, Example 5 has the best telephoto ratio (TTL/EFL<1)
`which would have motivated a POSITA to improve other features (like the f-number)
`while maintaining the telephoto ratio:
`
`Ogino
`
`Ex. 1
`
`Ex. 2
`
`Ex. 3
`
`Ex. 4
`
`Ex. 5
`
`Ex. 6
`
`TTL (mm)
`(+CG)
`TTL/EFL
`
`F-number
`
`4.239
`
`1.027
`
`2.47
`
`4.223
`
`1.025
`
`2.46
`
`4.219
`
`1.025
`
`2.45
`
`4.362
`
`0.958
`
`3.04
`
`5.273
`
`0.885
`
`3.94
`
`4.489
`
`1.005
`
`2.64
`
`See APPL-1005.
`
`• The ’897 patent discusses the desirability of a small TTL/EFL ratio:
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`APPL-1001, 1:45-50.
`
`7
`
`7
`
`
`
`Minimal changes are needed to modify Ogino Ex. 5
`from F=3.94 to F=2.8.
`• Only minimal changes to Example 5 are required:
`(1) Open the aperture (e.g., front opening) to provide F=2.8 and
`(2) Optimize the lens assembly (i.e., allow the software to optimize the design:
`
`APPL-1003 (Sasián Decl.) at 104 cited in Petition at 45.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`8
`
`8
`
`
`
`Minimal changes are needed to modify Ogino Ex. 5
`from F=3.94 to F=2.8.
`
`• Because f-number is a ratio of focal length over diameter of the entrance aperture
`(N=EFL/D), the only two ways to lower the f-number are to lower the focal length or
`increase the diameter of the entrance aperture.
`• The Petition showed that it would have been obvious to lower the f-number of
`Ogino’s Ex. 5 by increasing the diameter of the aperture (D) and then using lens
`design software find the best solution, as a POSITA would have done.
`• Attempting to lowering the f-number by lowering the focal length would have
`detract from the beneficial telephoto ratio (TTL/EFL).
`
`• Patent Owner admits that Dr. Sasián made minimal changes to the Example 5 lens:
`
`Patent Owner Response at 32 cited in Petitioner Reply at 8.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`9
`
`9
`
`
`
`A POSITA would have decreased the F-number of Ogino’s Ex. 5
`to F=2.8 based on Bareau’s lens specifications.
`
`• Bareau teaches typical lens specifications for use in cell phones including an F-
`number of 2.8 which indicates the amount of light preferred for a 1/4” sensor:
`
`APPL-1012 (Bareau) at 3 cited in Petition at 42.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`10
`
`10
`
`
`
`Lowering the F-number of a lens design is a
`well-known and desirable feature.
`
`• The need for lower f-numbers was well known since the 1990s:
`
`APPL-1013 (Kingslake) at 104 cited in Petition at 42.
`
`• Patent Owner agrees that the specific f-number of 2.8 was “desirable”:
`
`Patent Owner Response at 30 cited in Petitioner Reply at 6.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`11
`
`11
`
`
`
`The first lens of the modified Example 5 lens assembly
`is not limited to “manufacturing.”
`
`APPL-1003 at 104 (magnified) cited in Petition at 45.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`12
`
`12
`
`
`
`Other useful miniature telephoto lens designs include
`a similarly-shaped first lens to modified Ogino’s Ex. 5.
`
`• Patent Owner attempts to distinguish between the first lens edge of the modified Ex. 5 lens
`and the Mercado and Konno references, however these edges are very similar as shown
`below. All of these lenses would be manufactured without sharp corners:
`
`Ex. 1003, p.104 (in part) cited in
`Petition at 44-45.
`
`APPL-1036, Fig. 13 (in part) cited in
`Petitioner Reply at 15; Sur-Reply at 6.
`
`APPL-1035, Fig. 16 (in part) cited in
`Petitioner Reply at 15; Sur-Reply at 6.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`13
`
`13
`
`
`
`Patent Owner acknowledges that lenses once manufactured
`include a mounting flange and would not utilize a sharp corner.
`• Patent Owner acknowledges in the Sur-Reply that lenses when manufactured for
`mounting include flanges rather than sharp edges as depicted (e.g., Konno and
`Mercado, Dr. Sasián's examples here)
`
`Sur-Reply at 8-9.
`
`• The modified version of Example 5 would likewise include mounting flanges once
`manufactured and would not have a sharp corner.
`
`• Undisputed that the modified Example 5 lens (alternative 1) meets all of the challenged
`claims if Dr. Milster’s manufacturing considerations are required.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`14
`
`14
`
`
`
`If a manufacturing consideration was relevant for a particular design, like
`thickening edges, a POSITA would have easily modified Ogino to achieve it.
`
`• Dr. Sasián showed how a POSITA would have modified Example 5 to incorporate Dr.
`Milster’s unclaimed “requirements” for increased edge thickness.
`
`Petitioner Reply at 19.
`• Undisputed that both modified Example 5 lens designs meet all of the challenged claims and
`Alternative 2 meets all of the alleged manufacturing considerations
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`15
`
`15
`
`
`
`Discussion Summary
`
`Ground 2: Obvious to modify Ogino’s Ex. 5 to F=2.8 based on
`Bareau’s typical lens specifications.
`
`Ground 3: Obvious to further modify Ogino’s Ex. 5 lens to
`F=2.45 resulting in L1 with convex image-side surface.
`
`Grounds 2 & 3: Patent Owner has not shown that Dr.
`Sasián's examples cannot be made.
`
`Ground 4: Obvious to modify Chen’s Ex. 1 to reduce the
`thickness of the cover glass based on Iwasaki’s example.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`16
`
`16
`
`
`
`A POSITA would have been motivated to further lower the
`f-number of Ogino’s Example 5 lens from F=2.8 to F=2.45.
`• Based on the motivation in the art to achieve lower f-numbers, a POSITA would have
`been motivated to lower Ogino’s Example 5 to the lowest f-number taught in Ogino’s
`examples.
`
`APPL-1013 at 104 cited in Petition at 42.
`
`Ogino
`
`Ex. 1
`
`Ex. 2
`
`Ex. 3
`
`Ex. 4
`
`Ex. 5
`
`Ex. 6
`
`TTL (mm)
`(+CG)
`TTL/EFL
`
`F-number
`
`4.239
`
`1.027
`
`2.47
`
`4.223
`
`1.025
`
`2.46
`
`4.219
`
`1.025
`
`2.45
`
`4.362
`
`0.958
`
`3.04
`
`5.273
`
`0.885
`
`3.94
`
`4.489
`
`1.005
`
`2.64
`
`See APPL-1005.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`17
`
`17
`
`
`
`Dr. Sasián showed how a POSITA would have lowered Ogino’s Ex. 5 to
`F=2.45, resulting in a convex image-side surface.
`
`• Only minimal changes to the modified Ex. 5 (F=2.8) are required:
`(1) Re-optimize lens due to location to aperture,
`(2) Optimize lens for image quality.
`
`APPL-1003 at 108 cited in Petition at 55.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`18
`
`18
`
`
`
`The lens data for the modified Example 5 lens design is accurate.
`
`• The lens data originally provided in the Declaration clearly shows an f-number of 2.45,
`as well as the title of the section and the Zemax file itself.
`
`• Patent Owner has provided no independent analysis of the lens data showing that it is
`inaccurate.
`
`• The typo of “2.12” was corrected in
`the Petitioner Reply:
`
`Petitioner Reply at 26.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`APPL-1003 at 111 cited in Petition at 55, Petitioner Reply at 27.
`
`19
`
`19
`
`
`
`The Board has already determined that the shape of Ogino’s
`lenses can be modified to improve performance.
`
`• Patent Owner argues that it would not have been obvious to change the shape of Ogino’s
`Ex. 5 L1 lens from concave to convex as needed to achieve a lower f-number.
`
`• The Board has already decided that shape of Ogino’s lenses are not limited only to
`Ogino’s examples.
`
`IPR2018-01140 Final Written Decision (APPL-1034) at 35 cited in Petitioner Reply at 23.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`20
`
`20
`
`
`
`Changing lens shapes, such as concave to convex, is a well-
`known technique that a POSITA would use.
`
`• Patent Owner’s argument that a specific prior art reference showing a convex first lens is
`required to the show the motivation of a POSITA is without merit.
`
`• Ogino itself specifically states that the values
`of the radius of curvature can be changed:
`
`• Patent Owner’s expert testified that
`changing lens shapes is common:
`
`APPL-1005, 16:11-19 cited in Petitioner Reply at 23.
`
`• Lens curvatures are usually allowed to vary:
`
`APPL-1023, 86:16-23 cited in Petitioner Reply at 23.
`
`APPL-1005 at 24 cited in Petitioner Reply at 23.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`21
`
`21
`
`
`
`Discussion Summary
`
`Ground 2: Obvious to modify Ogino’s Ex. 5 to F=2.8 based on
`Bareau’s typical lens specifications.
`
`Ground 3: Obvious to further modify Ogino’s Ex. 5 lens to
`F=2.45 resulting in L1 with convex image-side surface.
`
`Grounds 2 & 3: Patent Owner has not shown that Dr.
`Sasián's examples cannot be made.
`
`Ground 4: Obvious to modify Chen’s Ex. 1 to reduce the
`thickness of the cover glass based on Iwasaki’s example.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`22
`
`22
`
`
`
`Patent Owner’s expert admits that his opinion on “manufacturing”
`only considered injection molding for large-scale production.
`
`APPL-1028, 183:1-7 cited in Petitioner’s Reply at 9.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`23
`
`23
`
`
`
`Grounds 2 & 3: An inability to mass manufacture lenses would not
`have discouraged a POSITA from using a modified lens design.
`
`•
`
`The Sur-Reply argues that a POSITA would have considered various possible mass manufacturing
`considerations in designing a lens, and that Dr. Sasián's designs are not manufacturable (see pp. 3-
`4, 18-21, 29). This fails for several reasons including:
`
`(1)
`
`It is undisputed that a lens assembly like Dr. Sasián's modified Ogino’s Ex. 5 and Chen’s Ex.
`1 can be useful for other purposes outside mass manufacturing (see slide 25);
`
`(2) Patent Owner’s expert admits that “manufacturability” is limited to plastic injection molding
`(see slide 26).
`
`(3) The ’897 patent does not recite any limitations directed to how the lens assembly is to be
`made, i.e., Beich’s Rules of Thumb or any other provided by Dr. Milster (see slide 27) – when
`Patent Owner sought to claim manufacturing limitations, it did so in its claims (see IPR2019-
`00030);
`
`(4) The specification does not limit the claims to any type of manufacturing (indeed, the
`embodiments are not manufacturable under the rules Patent Owner seeks to import) (see
`slide 28);
`
`(5) Patent Owner argued the exact opposite in IPR2019-00030 — that a POSITA would not know
`or care about manufacturing when designing a lens (see slide 29); and
`
`(6) Even if injection molding manufacturing preferences were required, tolerances are actually
`much smaller than in Beich’s rules, down to 0.5 µm (0.0005 mm) (see slide 30).
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`24
`
`24
`
`
`
`(1) Dr. Sasián’s modifications of Ogino’s Ex. 5 and Chen’s Ex. 1
`are suitable for purposes outside of large-scale manufacturing.
`
`• Patent Owner does not dispute that a POSITA could and would have modified Ogino’s
`examples for purposes other than mass-manufacturing, such as research, academic
`applications, prototyping, and small-scale manufacturing.
`
`• Dr. Milster even agrees that a POSITA would design lenses for applications that do
`not involve any large-scale manufacturing, such as an international lens conference:
`
`APPL-1028, 182:3-14 cited in Petitioner Reply at 14.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`25
`
`25
`
`
`
`(2) Patent Owner’s expert admits that his opinion on “manufacturing”
`only considered injection molding for large-scale production.
`
`APPL-1028, 183:2-7 cited in Petitioner Reply at 9.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`26
`
`26
`
`
`
`(3) Dr. Milster admits that the claims challenged under Grounds 2
`and 3 do not recite manufacturing limitations.
`• Dr. Mister admitted that manufacturing considerations are only recited in claims
`16 and 30, not challenged in Grounds 2 and 3, which rely on a later-filed CIP:
`
`APPL-1028, 92:2-17 cited in Petitioner Reply at 9-10;
`see also APPL-1001, 2:35-50, 4:30-33, 5:22-25, 6:60-62, 8:11-13 for
`disclosure with the later priority date of January 30, 2017 .
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`27
`
`27
`
`
`
`(4) Dr. Milster’s other supposed requirements for manufacturing
`are not even present in the embodiments in the ’897 patent.
`
`APPL-1037, ¶22 cited in Petitioner Reply at 18.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`28
`
`28
`
`
`
`(5) Patent Owner should not be allowed to take inconsistent
`positions on related patents having the exact same disclosure.
`
`• Patent Owner cannot argue that a POSITA would consider manufacturing to preserve
`patentability in this case (the ’897 patent) when it previously argued the exact
`opposite to preserve patentability of a parent patent (the ’568 patent) that relies on the
`exact same disclosure.
`
`APPL-1029 (PO Response in IPR2018-00030) at 4
`cited in Petitioner Reply at 12.
`
`APPL-1030 (Moore decl. in IPR2018-00030) ¶ 121
`cited in Petitioner Reply at 12-13.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`29
`
`29
`
`
`
`(6) Beich’s manufacturing considerations are “quick
`generalizations”, but actual tolerances are much more forgiving.
`
`• The Sur-Reply argues that Beich’s Rules of Thumb Tolerances are required
`for manufacturing Dr. Sasián's examples, but Beich’s rules are only “quick
`generalizations.”
`
`APPL-1007 (Beich) at 7 cited in Petitioner Reply at 16.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`30
`
`30
`
`
`
`Discussion Summary
`
`Ground 2: Obvious to modify Ogino’s Ex. 5 to F=2.8 based on
`Bareau’s typical lens specifications.
`
`Ground 3: Obvious to further modify Ogino’s Ex. 5 lens to
`F=2.45 resulting in L1 with convex image-side surface.
`
`Grounds 2 & 3: Patent Owner has not shown that Dr.
`Sasián's examples cannot be made.
`
`Ground 4: Obvious to modify Chen’s Ex. 1 to reduce the
`thickness of the cover glass based on Iwasaki’s example.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`31
`
`31
`
`
`
`A POSITA would have replaced Chen’s Example 1 cover glass
`with Iwasaki’s thinner version to reduce the track length.
`
`• The demand for thinner lens assemblies was known in 2013. One way to reduce this
`length is to reduce the thickness of the cover glass in a lens assembly.
`
`APPL-1009 (Iwasaki) 1:54-65 cited in Petition at 64.
`
`Chen:
`0.210 mm
`
`Iwasaki:
`0.145 mm
`
`• Patent Owner does not dispute that it would have been obvious to replace Chen’s cover
`glass with Iwasaki’s thinner cover glass.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`32
`
`32
`
`
`
`Patent Owner misapplies the manufacturing tolerances of Beich.
`
`• Patent Owner does not dispute that the modified Chen Example 1 lens meets all
`limitations of claim 16.
`
`•
`
`Instead, Patent Owner argues that Beich’s preference for a lens diameter tolerance of
`±0.020 mm is incompatible with Chen Example 1 because the aperture stop is 0.004
`mm from the edge of the L1 lens.
`
`Aperture stop
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`33
`
`33
`
`APPL-1020, Fig. 6 cited in Petition at 62.
`
`
`
`Patent Owner misapplies the manufacturing tolerances of Beich.
`
`• Patent Owner’s argument merely identifies that Chen as designed may not follow all of
`Beich’s “quick generalizations” of injection molding tolerances.
`
`APPL-1007 at 6 cited in Patent Owner Reply at 48.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`34
`
`34
`
`
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