Trials@uspto.gov
`571-272-7822
`
`Paper 29
`Date: November 2, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`COREPHOTONICS, LTD.,
`Patent Owner.
`
`IPR2020-00878
`Patent 10,330,897 B2
`
`
`
`
`
`
`
`
`
`Before BRYAN F. MOORE, MONICA S. ULLAGADDI, and
`JOHN R. KENNY, Administrative Patent Judges.
`MOORE, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`INTRODUCTION
`I.
`Apple, Inc. (“Petitioner”) requested an inter partes review (“IPR”) of
`claims 1–6 and 8–30 (the “challenged claims”) of U.S. Patent No.
`
`
`
`
`571-272-7822
`
`Paper 29
`Date: November 2, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`COREPHOTONICS, LTD.,
`Patent Owner.
`
`IPR2020-00878
`Patent 10,330,897 B2
`
`
`
`
`
`
`
`
`
`Before BRYAN F. MOORE, MONICA S. ULLAGADDI, and
`JOHN R. KENNY, Administrative Patent Judges.
`MOORE, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`INTRODUCTION
`I.
`Apple, Inc. (“Petitioner”) requested an inter partes review (“IPR”) of
`claims 1–6 and 8–30 (the “challenged claims”) of U.S. Patent No.
`
`
`
`
`
`IPR2020-00878
`Patent 10,330,897 B2
`10,330,897 B1 (Ex. 1001, “the ’897 patent”). Paper 1 (“Petition” or “Pet.”).
`Corephotonics, Ltd. (“Patent Owner”) did not file a Preliminary Response.
`On November 3, 2020, we instituted trial. Paper 7 (“Inst. Dec.” or
`“Decision to Institute”). Patent Owner filed a Response. Paper 12 (“PO
`Resp.”). Petitioner filed a Reply. Paper 14 (“Pet. Reply”). Patent Owner
`filed a Sur-Reply. Paper 19 (“Sur-Reply”). An oral argument was held on
`June 9, 2021, and a transcript was entered into the record. Paper 28 (“Tr.”).
`We have jurisdiction to conduct this inter partes review under
`35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed herein, we
`determine that Petitioner has shown, by a preponderance of the evidence,
`that claims 1, 2, 4–6, 9–15, 17, 18, 20–23, and 25–29 of the ’897 patent are
`unpatentable and that Petitioner has not shown, by a preponderance of the
`evidence, that claims 3, 8, 16, 19, 24, and 30 of the ’897 patent are
`unpatentable.
`
`II. BACKGROUND
`A. The Challenged Patent (Ex. 1001)
`The ’897 patent issued on June 25, 2019, based on an application filed
`May 10, 2018, which claimed priority back to a provisional application filed
`Nov. 19, 2017. Ex. 1001, codes (22), (45), (63). The ’897 patent concerns
`an optical lens assembly with five lens elements. Id. at code (57). Figure
`1A of the ’897 patent is reproduced below.
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`Patent 10,330,897 B2
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`Figure 1A of the ’897 patent illustrates an arrangement of lens
`elements in a first embodiment of an optical lens system.
`In order from an object side to an image side, optical lens assembly
`100 comprises: optional stop 101; first plastic lens element 102 with positive
`refractive power having a convex, object-side surface 102a; second plastic
`lens element 104 with negative refractive power having a meniscus, convex,
`object-side surface 104a, with an image side surface marked 104b; third
`plastic lens element 106 with negative refractive power having a concave,
`object-side surface 106a, with an inflection point and a concave image-side
`surface 106b; fourth plastic lens element 108 with positive refractive power
`having a positive meniscus with a concave, object-side surface 108a and an
`image-side surface marked 108b; fifth plastic lens element 110 with negative
`refractive power having a negative meniscus with a concave, object-side
`surface 110a and an image-side surface marked 110b. Id. at 3:24–41.
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`IPR2020-00878
`Patent 10,330,897 B2
`In Table 1, reproduced below, the ’897 patent discloses radii of
`curvature, R, for the lens elements, lens element thicknesses and/or distances
`between each of the lens elements, and a refractive index, Nd, for each lens
`element.
`
`
`Table 1 of the ’897 patent sets forth optical parameters for the optical lens
`assembly.
`Id. at 4:35–50. The ’897 patent discloses that, in Table 1, reproduced above
`[T]he distances between various elements (and/or surfaces) are
`marked “Lmn” (where m refers to the lens element number, n=1
`refers to the element thickness and n=2 refers to the air gap to the
`next element) and are measured on the optical axis z, wherein the
`stop is at z=0. Each number is measured from the previous
`surface. Thus, the first distance -0.466 mm is measured from the
`stop to surface 102a, the distance L11 from surface 102a to
`surface 102b (i.e. the thickness of first lens element 102) is
`0.894 mm, the gap L12 between surfaces 102b and 104a is 0.020
`mm, the distance L21 between surfaces 104a and 104b (i.e.
`thickness d2 of second lens element 104) is 0.246 mm, etc. Also,
`L21=d2 and L51=d5.
`Id. at 4:14–50.
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`IPR2020-00878
`Patent 10,330,897 B2
`Challenged claims 1 and 17 are independent. Challenged claims 2–6
`and 8–16 depend directly or indirectly from claim 1 and challenged claims
`18–30 depend directly or indirectly from claim 17. Independent claim 1 is
`reproduced below.
`1. A lens assembly, comprising:
`a plurality of lens elements arranged along an optical axis and spaced
`apart by respective spaces,
`wherein the lens assembly has an effective focal length (EFL), a total
`track length (TTL) of 6.5 millimeters or less and a ratio TTL/EFL<1.0,
`wherein the plurality of lens elements includes, in order from an object
`side to an image side, a first group comprising lens elements L1_1, L1_2
`and L1_3 with respective focal lengths f1_1, f1_2 and f1_3 and a second
`group comprising lens elements L2_1 and L2_2,
`wherein the first and second groups of lens elements are separated by a
`gap that is larger than twice any other gap between lens elements,
`wherein lens element L1_1 has positive refractive power and lens
`element L1_2 has negative refractive power and
`wherein lens elements L2_1 and L2_2 have opposite refractive powers.
`
`Id. at 8:21–36.
`
`Reference(s)/Basis
`
`B. Asserted Grounds of Unpatentability
`Petitioner advances the following challenges supported by the
`declaration of Dr. José Sasián (Ex. 1003).
`Claim(s)
`35 U.S.C. §1
`Challenged
`1, 4, 9–15, 17, 20,
`25–29
`
`102
`
`U.S. Patent No. 9,128,267 to Ogino
`et al. (“Ogino,” Ex. 1005)
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(September 16, 2011) (“AIA”), included revisions to 35 U.S.C. §§ 102 and
`103 that became effective on March 16, 2013. Because the ’897 patent
`issued from an application filed after March 16, 2013, we apply the AIA
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`IPR2020-00878
`Patent 10,330,897 B2
`Claim(s)
`Challenged
`2, 5, 6, 18, 21–23
`
`3, 8, 19, 24
`
`16, 30
`
`
`
`35 U.S.C. §1
`
`Reference(s)/Basis
`
`103
`
`103
`
`103
`
`Ogino and The Optics of Miniature
`Digital Cameras by Jane Bareau et
`al., SPIE Proceedings Volume 6342,
`International Optical Design
`Conference 2006; 63421F (2006)
`(“Bareau”, Ex. 1012).
`Ogino, Bareau, and U.S. Patent No.
`9,128,267 to Kingslake, Optics in
`Photography, 1992 (“Kingslake,”
`Ex. 1013)
`U.S. Patent No. 10,324,273 to Chen
`et al. (“Chen,” Ex. 1020), and U.S.
`Patent No. 9,678,310 to Iwasaki et
`al. (“Iwasaki,” Ex. 1009), and
`Polymer Optics: A Manufacturer’s
`Perspective on the Factors that
`Contribute to Successful Programs
`by Beich et al. (“Beich,” Ex. 1007)
`
`Pet. 8–10.
`Patent Owner submits the Declaration of Tom D. Milster, Ph.D.
`(Ex. 2001) in support of its arguments.
`
`C. Related Matters
`The ’897 patent is asserted in Corephotonics Ltd. v. Apple Inc., 5-19-
`cv-04809 (N.D. Cal.) filed August 14, 2019. Pet. 1; Paper 6, 1.
`U.S. Patent No. 9,897,712 (“the ’712 patent”), 9,402,032 (“the ’032
`patent”), 9,857,568 (“the ’568 patent”), and 10,324,277 (“the ’277 patent”)
`are part of a chain of continuity that includes PCT/IB2014/062465, from
`which the ’897 patent also claims priority. This proceeding is related to
`
`
`versions of the statutory bases for unpatentability. See Ex. 1001, codes (22),
`(60), (63).
`
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`IPR2020-00878
`Patent 10,330,897 B2
`IPR2018-01146 (“the ’1146IPR”), an inter partes review proceeding
`instituted based on Petitioner’s challenge to the ’712 patent. The ’1146IPR
`Final Written Decision was affirmed-in-part and remanded by the Federal
`Circuit. This proceeding is also related to IPR2018-01140 (“the ’1140IPR”),
`an inter partes review proceeding instituted based on Petitioner’s challenge
`to the ’032 patent. This proceeding is also related to IPR2019-00030 (“the
`’0030IPR”), an inter partes review proceeding instituted based on
`Petitioner’s challenge the ’568 patent. Each of those IPRs resulted in a Final
`Written Decision and were affirmed by the Federal Circuit on October 25,
`2021. Presently pending is IPR2020-00897, an inter partes review
`proceeding based on Petitioner’s challenge to the ’277 patent.
`
`D. Real Parties-in-Interest
`Petitioner identifies Apple Inc. as the real party-in-interest. Pet. 1.
`Patent Owner identifies Corephotonics, Ltd. as the real parties-in-interest.
`Paper 6, 1.
`
`III. ANALYSIS
`A. Principles of Law
`Petitioner bears the burden of proving unpatentability of the
`challenged claims, and the burden of persuasion never shifts to Patent
`Owner, except in limited circumstances not present here. Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015).
`A claim is anticipated if a single prior art reference either expressly or
`inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai
`Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). Although the elements must
`be arranged or combined in the same way as in the claim, “the reference
`
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`need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not
`required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citing In re
`Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990)).
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter as a whole would have been obvious before the effective filing date
`of the claimed invention to a person having ordinary skill in the art. KSR
`Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) when in evidence, objective evidence of non-obviousness,
`i.e., so-called secondary considerations such as commercial success, long
`felt but unsolved needs, and failure of others.2 Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966). The obviousness inquiry further requires an
`analysis of “whether there was an apparent reason to combine the known
`elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at
`418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring
`“articulated reasoning with some rational underpinning to support the legal
`conclusion of obviousness”)).
`Thus, to prevail in an inter partes review, Petitioner must explain
`sufficiently how the proposed combinations of prior art would have rendered
`the challenged claims unpatentable. We analyze the challenges presented in
`the Petition in accordance with the above-stated principles.
`
`2 Neither party has argued that secondary considerations or objective
`evidence of nonobviousness exists. Thus, we do not address secondary
`considerations or objective evidence of nonobviousness.
`
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`B. Claim Construction
`Because the Petition was filed after November 13, 2018, we construe
`the challenged claims using the same claim construction standard that would
`be used to construe the claims in a civil action under 35 U.S.C. § 282(b).
`37 C.F.R. § 42.100(b) (2020).3 This rule adopts the same claim construction
`standard used by Article III federal courts, which follow Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under
`this standard, the words of a claim are generally given their “ordinary and
`customary meaning,” which is the meaning the term would have to a person
`of ordinary skill at the time of the invention, in the context of the entire
`patent, including the specification. See Phillips, 415 F.3d at 1312–13.
`Independent claim 1 recites “wherein the lens assembly has an
`effective focal length (EFL).” Ex. 1001, 8:24–25. Petitioner contends that
`the term “effective focal length” should be construed as “the focal length of
`a lens assembly.” Pet. 7. This construction coincides with the construction
`of the same term in the ’1140IPR (Paper 10, 10), the ’1146IPR (Paper 8, 7–
`8), and ’0030IPR (Paper 32, 8). The ’897 specification supports this
`construction because it is the essentially the same as the specification on
`which the ’1140IPR based the construction of EFL.
`Independent claim 1 also recites “wherein the lens assembly has a
`total track length (TTL) of 6.5 millimeters or less.” Ex. 1001, 8:25–26.
`Petitioner contends that the ’897 patent discloses that TTL is the “the length
`of the optical axis spacing between the object-side surface of the first lens
`element and one of: an electronic sensor, a film sensor, and an image plane
`
`3 See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed.
`Reg. 51,340 (Oct. 11, 2018) (final rule).
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`Patent 10,330,897 B2
`corresponding to either the electronic sensor or [the] film sensor.” Pet. 8.
`This construction coincides with the construction of the same term in the
`’1140IPR (Paper 10, 10–11), the ’1146IPR (Paper 8, 8), and ’0030IPR
`(Paper 32, 14–15). The ’897 specification supports this construction
`because it is the essentially the same as the specification on which the
`’1140IPR based the construction of TTL.
`Patent Owner argues that no “dispute between the parties in
`this IPR depends on the construction of EFL, TTL, or of any other claim
`term [and] submits that the Board should refrain from construing any terms
`in the patent for the purposes of this proceeding.” PO Resp. 17. Petitioner
`does not respond to this argument. See generally Pet. Reply. We agree with
`Patent Owner. If we were to adopt either construction, it would not change
`the determination made in this Decision.
`Thus, we decline to construe any claim terms for purposes of this
`Final Written Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc.
`v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need
`only construe terms ‘that are in controversy, and only to the extent necessary
`to resolve the controversy.’”).
`
`C. Level of Ordinary Skill in the Art
`The level of skill in the art is a factual determination that provides a
`primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
`VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383
`U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir.
`1991)).
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`Petitioner argues that one of ordinary skill in the art at the time of the
`invention of the ’897 patent
`would include someone who had, at the priority date of the ’897
`Patent, (i) a Bachelor’s degree in Physics, Optical Sciences, or
`equivalent training, as well as (ii) approximately three years of
`experience in designing multi-lens optical systems. Such a
`person would have had experience in analyzing, tolerancing,
`adjusting, and optimizing multi-lens systems for manufacturing,
`and would have been familiar with the specifications of lens
`systems and their fabrication. In addition, a POSITA [person of
`ordinary skill in the art] would have known how to use lens
`design software such as Code V, Oslo, or Zemax, and would have
`taken a lens design course.
`
`Pet. 6–7 (citing Ex. 1003 ¶¶ 19–20). Patent Owner applied the same level of
`skill for the purposes of this IPR. PO Resp. 14–15 (citing Ex. 2001 ¶ 19).
`We regard Petitioner’s formulation of the level of skill as consistent
`with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).
`Therefore, for purposes of this Final Written Decision, we adopt Petitioner’s
`assessment of the level of skill in the art because it is consistent with the
`’897 patent and the asserted prior art, and we apply it in our analysis below.
`
`D. Overview of the Asserted Prior Art
`1. Ogino (Ex. 1005)
`Ogino concerns an imaging lens. Ex. 1005, code (54). Figure 5 of
`Ogino is reproduced below.
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`Figure 5 is a lens cross-sectional view illustrating a configuration
`example of an imaging lens of Ogino
`
`Id. at Fig. 5, 4:5–9. Figure 5, above, shows and embodiment of Ogino
`including, in order from an object side, five lenses: a first lens L1 that has a
`positive refractive power and a meniscus shape which is convex toward the
`object side; a second lens L2 that has a biconcave shape; a third lens L3 that
`has a meniscus shape which is convex toward the object side; a fourth lens
`L4 that has a meniscus shape which is convex toward an object side; and a
`fifth lens L5 that has a negative refractive power and at least one inflection
`point on an image side surface. Id. at 2:4–12.
`2. Bareau (Ex. 1012)
`Bareau concerns “the design and manufacturing of consumer and
`commercial imaging systems using lens elements” that have millimeter-scale
`
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`diameters. Ex. 1012, 1. Bareau lists an f-number of 2.8 in its “typical lens
`specifications for a ¼″ sensor format.” Id. at 3, 4.
`3. Kingslake (Ex. 1013)
`Kingslake is titled “Optics in Photography.” Ex. 1013, Cover. In
`Chapter 11, titled “The Brightness of Images,” Kingslake indicates that
`“[t]he relation between the aperture of a lens and the brightness of the image
`produced by it . . . is often misunderstood, yet it is of the greatest importance
`to the photographer who wishes to make the best use of the equipment.” Id.
`at 104. Kingslake then states that “[t]he tremendous efforts of lens designers
`and manufacturers that have been devoted to the production of lenses of
`extremely high relative aperture are an indication of the need that exists for
`brighter images and ‘faster’ lenses.” Id.
`4. Chen (Ex. 1020)
`Chen is directed to “an optical imaging lens set of five lens elements
`for use in mobile phones, in cameras, in tablet personal computers, or in
`personal digital assistants (PDA).” Ex. 1020, 1:16–19. Chen’s Example 1 is
`reproduced below:
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`Figure 6 illustrates an example [Example 1] of the optical imaging lens set
`
`Figure 6, above, shows an “optical imaging lens set 1 of the first
`example has five lens elements 10 to 50 with refractive power. The optical
`imaging lens set 1 also has a filter 70, an aperture stop 80, and an image
`plane 71.” Id. at 8:55–58. The prescription table describing Example 1
`providing the thickness and spacing of each element along the optical axis
`and the focal length of each lens is provided in Figure 24, reproduced below:
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`Figure 24 shows the optical data of the first example of Chen’s optical lens
`set
`Figure 24, above, is a table listing the Curvature radius, Aperture Stop
`Distance Lens Thickness Air Gap, Refractive Index, Abbe Number, and
`Focal length for the following objects: Aperture Stop, First through Fifth
`Lens, IR Filter, and Image Plane. According to Chen, Example 1 has a focal
`length (f) of 6.582 mm, a total track length (TTL) of 6.0187 mm, and an f-
`number of 2.6614. See id. at 10:9–11, Fig. 42 (col. 1). Chen also provides
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`the sag equation and aspheric coefficients for Example 1. Id., 9:49–67, Fig.
`41.
`
`5. Iwasaki (Ex. 1009)
`Iwasaki discloses “a fixed focus imaging lens for forming optical
`images of subjects” that is designed for use in portable devices such as “a
`digital still camera, a cellular telephone with a built in camera, a PDA
`(Personal Digital Assistant), a smart phone, a tablet type terminal, and a
`portable gaming device.” Ex. 1009, 1:18–26. Iwasaki’s lens system is
`designed to meet a “demand for miniaturization of the entirety of the
`photography devices as well as imaging lenses to be mounted thereon” and
`to meet a “demand for high resolution and high performance of imaging
`lenses.” Id. at 1:36–41.
`Examples 1 and 2 of Iwasaki maintain this ratio by using a thinner
`cover glass element of 0.145 mm rather than using 0.210 mm or 0.300 mm
`thick cover glass used in Examples 3 and 4. See id. at Tables 1, 3, 5, 7.
`6. Beich (Ex. 1007)
`Beich concerns “the process of creating state-of-the-art polymer optics
`and a review of the cost tradeoffs between design tolerances, production
`volumes, and mold cavitation.” Ex. 1007, 2. Beich discloses design
`considerations, or “[r]ules of thumb,” with respect to shape and tolerances of
`polymer-based optical devices that drive cost and manufacturability. Id. at
`7. These considerations include such knowledge as “thicker parts take
`longer to mold than thinner parts” and “[o]ptics with extremely thick centers
`and thin edges are very challenging to mold.” Id.
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`E. Asserted Anticipation of Claims 1, 4, 9–15, 17, 20, and 25–29 by Ogino
`Petitioner contends that claims 1, 4, 9–15, 17, 20, and 25–29 are
`unpatentable under 35 U.S.C. § 102 as anticipated by Ogino. Pet. 10–40.
`Patent Owner does not present arguments related to this ground. See
`generally PO Resp. For the reasons that follow, we are persuaded that the
`evidence supports Petitioner’s arguments and thus, Petitioner establishes by
`a preponderance of the evidence that claims 1, 4, 9–15, 17, 20, and 25–29
`are unpatentable under 35 U.S.C. § 102 as anticipated by Ogino.
`1. Independent Claim 1
`“A lens assembly, comprising: a plurality of lens elements
`arranged along an optical axis and spaced apart by respective
`spaces”
`Petitioner contends that Ogino discloses this limitation in Ogino’s
`Example 5, shown in Figure 5 reproduced above, which includes lenses L1
`to L5 arranged along optical axis Z1, in order from an object side. Pet. 14–
`15 (citing Ex. 1005, Fig. 5, 5:13–15). Based on the complete record,
`Petitioner has demonstrated sufficiently that Ogino teaches this limitation,
`which Patent Owner does not dispute.
`“wherein the lens assembly has an effective focal length
`(EFL)”
`Petitioner contends that Ogino teaches for each of its embodiments,
`that “f is a focal length of a whole system.” Pet. 15. (quoting Ex. 1005,
`3:16) (citing Ex. 1003, 29). In Table 9, Ogino discloses that the focal length
`f of the entire lens system of Example 5 is provided in Table 9 as f = 5.956
`mm. Id. (quoting Ex. 1005, Table 9) (citing Ex. 1005, 14:47–53). Table 9
`of Ogino is reproduced below.
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`Figure 24 shows the optical data of the first example of Ogino’s optical lens
`set
`
`Id. at 21:10–35. Table 9 of Ogino discloses optical parameters for the lens
`assembly of Example 5, which is depicted in Figure 5. Based on the
`complete record, Petitioner has demonstrated sufficiently that Ogino teaches
`this limitation, which Patent Owner does not dispute.
`“a total track length (TTL) of 6.5 millimeters or less and a ratio
`TTL/EFL of less than 1.0”
`Petitioner contends that a person of ordinary skill in the art “would
`have identified the total track length of Example 5 lens apparatus to be the
`distance between the object-side surface of the first lens L1 and the image
`plane 100 (R14).” Pet. 16–17 (citing Ex. 1005, Fig. 5; Ex. 1003, 30).
`As noted by Petitioner, Ogino explicitly discloses that “the TTL with
`the cover glass element can be calculated by summing the widths above
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`Patent 10,330,897 B2
`labeled D1 to D13” which results in a TTL of 5.273, using the values
`depicted in Table 9 of Ogino. Ex. 1005, Table 9; see Pet. 17–18 (citing in
`part Ex. 1003, 30–31). Ogino discloses an EFL of 5.956 as depicted in
`Table 9. Ex. 1005, Table 9; see Pet. 17–19 (citing in part Ex. 1003, 30–32).
`With Ogino disclosing a TTL of 5.273 and an EFL of 5.956, Ogino
`also discloses a ratio of TTL/EFL of 0.8853, which is less than 1.0. See Pet.
`18–19. Based on the complete record, Petitioner has demonstrated
`sufficiently that Ogino teaches this limitation, which Patent Owner does not
`dispute.
` “wherein the plurality of lens elements includes, in order from an object
`side to an image side, a first group comprising lens elements L1_1, L1_2 and
`L1_3 with respective focal lengths f1_1, f1_2 and f1_3 and a second group
`comprising lens elements L2_1 and L2_2,”
`
`According to Petitioner, Figure 13 of Ogino depicts “Example 5 lens
`assembly includes a first lens group with three lens elements L1-L3 in order
`(i.e., L1_1, L1_2, and L1_3) and a second lens group with two lens elements L4-
`L5 in order (i.e., L2_1 and L2_2).” Pet. 19–20 (citing Ex. 1003, 33; Ex. 1005,
`Figs. 5, 13). Petitioner calculates the focal lengths of L1_1, L1_2, and L1_3
`respectively as 2.068, -3.168, -6.926. Id. at 20–21 (citing Ex. 1005, 15:44–
`48). Based on the complete record, Petitioner has demonstrated sufficiently
`that Ogino teaches this limitation, which Patent Owner does not dispute.
`“wherein the first and second groups of lens elements are
`separated by a gap that is larger than twice any other gap
`between lens elements”
`Petitioner asserts Figure 5 shows the “gap between the other lens
`elements are identified as D2+D3 (between L1 and L2), D5 (between L2 and
`L3), and D9 (between L4 and L5) [and t]he widths of each gap D2+D3 (with
`
`19
`
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`IPR2020-00878
`Patent 10,330,897 B2
`the aperture stop in the middle, which is not a lens element), D5, D7, and D9
`are provided in Table 9.” Pet. 22–24 (Ex. 1005, Fig. 5, Table 11).
`Petitioner further presents, based on this data, calculations that show
`Ogino’s D7 is more than twice as large than the other gaps between lens
`elements, i.e. D7 (0.506) is more than two times the length of the gaps D2,
`D3 (0.099), D5 (0.243), and D9 (0.100). Id. Based on the complete record,
`Petitioner has demonstrated sufficiently that Ogino teaches this limitation,
`which Patent Owner does not dispute.
`“wherein lens element L1_1 has positive refractive power and lens element
`L1_2 has negative refractive power”
`
`Petitioner contends Ogino discloses this limitation because the optical
`data for the Example 5 lens assembly shows that the L1 lens element (i.e.,
`L1_1) has positive refractive power and the L2 lens element (i.e., L1_2) has
`negative refractive power. Pet. 24 (citing Ex. 1003, 37).
`Petitioner asserts
`[a person of ordinary skill at the time of the invention] would
`have recognized that the refractive power of a lens is equal to the
`inverse of the focal length of the lens: ‘[t]he practical unit of
`power is a dioptre; it is the reciprocal of the focal length, when
`the focal length is expressed in meters.’
`Pet. 24 (quoting Ex. 1010, 159) (alteration in original). Thus, as established
`above, the L1 lens has a positive focal length of 2.068 mm thereby
`indicating a positive refractive power and the L2 lens has a negative focal
`length of -3.168 mm thereby indicating a negative refractive power. Id.
`(citing Ex. 1003, 37). Based on the complete record, Petitioner has
`demonstrated sufficiently that Ogino teaches this limitation, which Patent
`Owner does not dispute.
`
`
`
`20
`
`
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`IPR2020-00878
`Patent 10,330,897 B2
`“and wherein lens elements L2_1 and L2_2 have opposite refractive powers”
`
`
`Petitioner asserts
`while not given in Ogino, the focal length f4 of the L4 lens can
`be calculated by inputting the optical data for the lens into the
`commonly known ‘lens maker’s equation’ for lenses separated
`by a gap, as stated in Born
`
`
`
`
`where f is the focal length of the lens, n is the index of refraction,
`r1 and r2 are the curvature of the lens’s two surfaces, and t is the
`axial thickness of the lens.
`Pet. 25.
`Petitioner further presents, based on the data in Table 9, calculations
`that show the L4 lens has a focal length f4 = 2.7359 mm and the L5 lens has
`a focal length f5 = -2.451 mm. Id. at 25–27 (citing Ex. 1005, Table 9, 13;
`Ex. 1003, 40). Thus, because L4 is positive and L5 is negative, they have
`opposite refractive powers. Id. Based on the complete record, Petitioner has
`demonstrated sufficiently that Ogino teaches this limitation, which Patent
`Owner does not dispute.
`
`Conclusion
`Based on the complete record, and for the reasons explained by
`Petitioner, we are persuaded that Petitioner has shown by a preponderance of
`the evidence that Ogino discloses the limitations of claim 1.
`2. Dependent Claims 4, 9–15, 17, 20, 25–29
`Patent Owner does not raise arguments for claims 4, 9–15, 17, 20, and
`25–29. We have reviewed Petitioner’s arguments and evidence concerning
`claims 1, 4, 9–15, 17, 20, 25–29, and we adopt them as our own. Pet. 28–
`40. Thus, based on the complete record, and for the reasons explained by
`
`21
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`IPR2020-00878
`Patent 10,330,897 B2
`Petitioner, we are persuaded that Petitioner has also shown by a
`preponderance of the evidence that these claims are anticipated by Ogino.
`See id.
`
`F. Asserted Obviousness of Claims 2, 5, 6, 18, and 21–23 over Ogino in
`view of Bareau
`Petitioner asserts that the combination of Ogino and Bareau teaches or
`suggest all the limitations of claims 2, 5, 6, 18, and 21–23, and provides
`reasoning as to why one of ordinary skill in the art would have been
`prompted to combine the teachings of these references. Pet. 40–51. For the
`reasons that follow, we determine that Petitioner has shown persuasively that
`the combination of Ogino and Bareau would have rendered claims 2, 5, 6,
`18, and 21–23 of the ’897 patent obvious.
`1. Analysis of Motivation to Combine Ogino and Bareau and the
`Limitation of “a f-number F#<2.9” and/or “a f-number F#=2.8”
`Petitioner’s analysis, as supported by the Sasián Declaration,
`demonstrates where Petitioner contends each element in claims 2, 5, 6, 18,
`and 21–23 is disclosed in Ogino and Bareau. Pet. 40–51. In particular,
`Petitioner relies on its anticipation contentions regarding Ogino, discussed
`above, and adds Bareau to teach the limitation of an f-number less than 2.9,
`recited in claim 2, and an f-number equal to 2.8, recited in claim 23. Id.
`at 41–49, 51. Our discussion above addresses Petitioner’s contentions as to
`Ogino. See supra Section III.E. Accordingly, our discussion here focuses
`on whether the combination of Ogino and Bareau accounts for the
`limitations of an f-number less than 2.9 and/or an f-number equal to 2.8.
`As to the motivation to combine Ogino and Bareau, Petitioner states
`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
`
`22
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`IPR2020-00878
`Patent 10,330,897 B2
`for ¼” and smaller image sensors. Such a combination would
`have been simpl[ly] . . . applying Bareau’s specification for a
`brighter lens system for smaller image sensors, according to
`known lens design and modification methods (as taught in
`[Fischer (Ex. 1017)]), 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 sensor format.
`
`Id. at 41–42 (citing Ex. 1003 ¶ 51; Ex. 1017, 172; Ex. 1024, 1:23–53; Ex.
`1012, 3–4). Petitioner relies on Bareau to show that: cell phones having
`cameras with f-number 2.8 for one quarter inch and smaller sensors were
`common in 2006; the desire to achieve lower f-numbers was well known
`because of the need for faster lenses; and “a POSITA therefore would have
`sought to modify existing lens designs to achieve faster f-numbers like 2.8
`while still maintaining a short total track length appropriate for thin cell
`phone designs.” Id. at 42 (citing Ex. 1003 ¶ 52; Ex. 1012, 3; Ex. 1013, 104).
`Petitioner asserts Ogino has examples with an f-number “down to 2.45” and
`thus “modifying Ogino’s Example 5 to have an f-number of 2.8, as taught in
`Bareau, would have been nothing more than applying Bareau’s specification
`of an F#=2.8 for a ¼” image sensor format according to known lens design
`methods (as taught in Fischer [Ex. 1017]) to allow
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