`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS LTD.,
`Patent Owner
`
`———————
`
`U.S. Patent No. 10,330,897
`
`Declaration of José Sasián, Ph.D.
`under 37 C.F.R. § 1.68
`
`
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`Apple v. Corephotonics
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`1
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`APPL-1003
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`Sasián Decl.
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`Inter Partes Review of U.S. 10,330,897
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 5
`I.
`QUALIFICATIONS AND PROFESSIONAL EXPERIENCE ...................... 8
`II.
`III. LEVEL OF ORDINARY SKILL IN THE ART ...........................................12
`IV. RELEVANT LEGAL STANDARDS ...........................................................13
`A. Anticipation ............................................................................................14
`B. Obviousness ...........................................................................................14
`V. OVERVIEW OF THE ’897 PATENT ..........................................................15
`A. Summary of the Patent ...........................................................................15
`B. Priority Date of the ’897 Patent .............................................................19
`C. Prosecution History of the ’897 Patent ..................................................20
`VI. CLAIM CONSTRUCTION ..........................................................................21
`VII.
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....22
`A. Claims 1, 4, 9-15, 17, 20, and 25-29 are anticipated by Ogino. ............23
`1. Summary of Ogino .........................................................................23
`2. Detailed Analysis ...........................................................................26
`B. Claims 2, 5, 6, 18, and 21-23 are obvious over the combination of
`Ogino and Bareau. .................................................................................54
`1. Summary of Bareau ........................................................................54
`2. Reasons to combine Ogino and Bareau .........................................56
`3. Detailed Analysis ...........................................................................61
`C. Claims 3, 8, 19, and 24 are obvious over the combination of Ogino,
`Bareau, and Kingslake. ..........................................................................67
`1. Summary of Kingslake ...................................................................67
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`2. Reasons to combine Ogino, Bareau, and Kingslake ......................67
`3. Detailed Analysis ...........................................................................72
`D. Claims 16 and 30 are obvious over the combination of Chen, Iwasaki,
`and Beich. ..............................................................................................76
`1. Summary of Chen ..........................................................................76
`2. Summary of Iwasaki ......................................................................77
`3. Reasons to combine Chen and Iwasaki ..........................................79
`4. Summary of Beich ..........................................................................80
`5. Reasons to combine Chen and Beich .............................................82
`6. Detailed Analysis ...........................................................................85
`VIII. CONCLUSION ............................................................................................100
`IX. APPENDIX ..................................................................................................101
`A. Ogino Example 5 using Zemax (v. 02/14/2011) .................................101
`1. Fig. 1A – Ray Trace Diagram ......................................................101
`2. Fig. 1B – Relative Illumination ....................................................102
`3. Fig. 1C – Analysis ........................................................................103
`B. Ogino Example 5 modified for F#=2.8 using Zemax (v. 02/14/2011) 104
`1. Fig. 2A – Ray Trace Diagram ......................................................104
`2. Fig. 2B – Relative Illumination ....................................................105
`3. Fig. 2C – Analysis ........................................................................106
`4. Fig. 2D – Prescription Data ..........................................................107
`C. Ogino Example 5 modified for F#=2.45 using Zemax (v. 02/14/2011)
` ..............................................................................................................108
`1. Fig. 3A – Ray Trace Diagram ......................................................108
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`Inter Partes Review of U.S. 10,330,897
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`2. Fig. 3B – Relative Illumination ....................................................109
`3. Fig. 3C – Analysis ........................................................................110
`4. Fig. 3D – Prescription Data ..........................................................111
`D. Chen Example 1 modified with 0.145 mm IR filter using Zemax (v.
`02/14/2011) ..........................................................................................112
`1. Fig. 4A – Ray Trace Diagram ......................................................112
`2. Fig. 4B – Relative Illumination ....................................................113
`3. Fig. 4C – Analysis ........................................................................114
`4. Fig. 4D – Prescription Data ..........................................................115
`5. Fig. 4E – Edge Data .....................................................................116
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`Sasián Decl.
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`Inter Partes Review of U.S. 10,330,897
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`I.
`
`INTRODUCTION
`
`1.
`
`I am making this declaration at the request of Apple Inc. in the matter
`
`of the inter partes review of U.S. Patent No. 10,330,897 (“the ’897 Patent”) to
`
`Dror, et al.
`
`2.
`
`I am being compensated for my work in this matter at the rate of
`
`$525/hour. I am also being reimbursed for reasonable and customary expenses
`
`associated with my work and testimony in this investigation. My compensation is
`
`not contingent on the outcome of this matter or the specifics of my testimony.
`
`3.
`
`I have been asked to provide my opinions regarding whether the
`
`claims of the ’897 Patent are unpatentable because they would have been either
`
`anticipated or obvious to a person of ordinary skill in the art (“POSITA”) at the
`
`time of the alleged invention, in light of the prior art. After a careful analysis it is
`
`my opinion that all of the limitations of claims 1-6 and 8-30 would have been
`
`either anticipated or obvious to a POSITA.
`
`4.
`
`In the preparation of this declaration, I have reviewed:
`
`• The ’897 Patent, APPL-1001;
`
`• The prosecution history of the ’897 Patent, APPL-1002;
`
`• U.S. Patent No. 9,128,267 to Ogino et al. (“Ogino”), APPL-1005;
`
`• Warren J. Smith, MODERN LENS DESIGN (1992) (“Smith”), APPL-
`
`1006;
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`• 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-1007;
`
`• U.S. Patent No. 7,777,972 to Chen et al., APPL-1008;
`
`• U.S. Patent No. 9,678,310 to Iwasaki et al. (“Iwasaki”), APPL-
`
`1009;
`
`• Max Born et al., Principles of Optics, 6th Ed. (1980) (“Born”),
`
`APPL-1010;
`
`• 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-1012;
`
`• Rudolf Kingslake, Optics in Photography (1992) (“Kingslake”),
`
`APPL-1013;
`
`• U.S. Patent No. 7,859,588 to Parulski et al. (“Parulski”), APPL-
`
`1014;
`
`• Bruce J. Walker, OPTICAL ENGINEERING FUNDAMENTALS
`
`(1995) (“Walker”), APPL-1016;
`
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`• Robert E. Fischer, Optical System Design (2008) (“Fischer”),
`
`APPL-1017;
`
`• Michael P. Schaub, THE DESIGN OF PLASTIC OPTICAL
`
`SYSTEMS (2009) (“Schaub”), APPL-1018;
`
`• Optical Society of America, HANDBOOK OF OPTICS, vol. II 2nd ed.
`
`(1995) (“Handbook of Optics”), APPL-1019;
`
`• U.S. Patent No. 10,324,273 to Chen et al. (“Chen”), APPL-1020;
`
`• U.S. Patent No. 9,857,568, APPL-1021;
`
`• U.S. Patent No. 9,568,712, APPL-1022;
`
`• U.S. Patent No. 7,321,475 to Wang et al., APPL-1024;
`
`• Greg Hollows et al., “Matching lenses and sensors,” Vision
`
`Systems design (March 2009), APPL-1025.
`
`5.
`
`In forming the opinions expressed below, I have considered:
`
`a)
`
`The documents listed above;
`
`b) My own knowledge and experience based upon my work in the
`
`fields of optics and lens design, as described below; and
`
`c) The level of skill of a POSITA at the time of the alleged
`
`invention of the ’897 Patent.
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`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`6. My complete qualifications and professional experience are described
`
`in my Curriculum Vitae, a copy of which can be found in APPL-1004. The
`
`following is a brief summary of my relevant qualifications and professional
`
`experience.
`
`7.
`
`As shown in my curriculum vitae (APPL-1004), I have extensive
`
`academic and industry experience with optical engineering. Specifically, I have
`
`over thirty years of academic and industry experience in the field of optical
`
`sciences and optical engineering in general, including optical instrumentation,
`
`optical design, opto-mechanics, and optical fabrication and testing.
`
`8.
`
`I am currently a full-time, tenured Professor of Optical Sciences at the
`
`College of Optical Sciences at the University of Arizona in Tucson, Arizona, a
`
`position I have held since 2002. As a professor, I teach and perform research in the
`
`field of optical design. For example, I teach my students how to design lenses and
`
`mirrors and how to think about light so that they can design useful optical systems.
`
`9.
`
`As part of my academic and research responsibilities I am frequently
`
`involved with the design, fabrication, and testing of optical devices. Prior to
`
`receiving tenure, I was an Associate Professor of Optical Sciences at the University
`
`of Arizona from 1995 to 2001. Prior to joining the University of Arizona faculty, I
`
`was a member of the technical staff of AT&T Bell Laboratories from 1990 to
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`1995. From 1984 to 1987, I was a Research Assistant, and from 1988 to 1990, I
`
`was a Research Associate, in the Optical Sciences Center at the University of
`
`Arizona. From 1976 to 1984, I was an optician at the Institute of Astronomy at the
`
`University of Mexico.
`
`10.
`
`I received a Bachelor of Science degree in Physics from the
`
`University of Mexico in 1982, a Master of Science degree in Optical Sciences from
`
`the University of Arizona in 1987, and a Ph.D. degree in Optical Sciences from the
`
`University of Arizona in 1988. My research areas include optical design,
`
`fabrication, and testing of optical instruments, astronomical optics, diffractive
`
`optics, opto-mechanical design, light in gemstones, lithography optics, and light
`
`propagation.
`
`11. At the University of Arizona, I have taught the courses Lens Design
`
`OPTI 517 (1997-present), Introduction to Aberrations OPTI 518 (2005-present),
`
`Advanced Lens Design OPTI 696A (2008, 2012, 2017), Illumination Optics
`
`Seminar (1997-2000), Introduction to Opto-mechanics OPTI 690 (1998, 2001,
`
`2003, 2004, 2005) and Optical Shop Practices OPTI 597A (1996-present). I teach
`
`students how to design lens systems, how to grind, polish, and test aspheric
`
`surfaces, how to mount lenses properly so that their physical integrity is preserved,
`
`and how to align lens systems.
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`12.
`
`I have directed several student reports, theses, and dissertations in the
`
`areas of lens and mirror design. I have lectured regarding my work, and have
`
`published, along with students and colleagues, over one hundred scientific papers
`
`in the area of optics. These include technical papers, student reports and theses
`
`done under my direction, related to miniature lenses. For example:
`
`• Yufeng Yan, Jose Sasian, "Miniature camera lens design with a freeform
`
`surface," Proc. SPIE 10590, International Optical Design Conference
`
`2017, 1059012 (27 November 2017); doi: 10.1117/12.2292653
`
`• Dmitry Reshidko, Jose Sasian, “Optical analysis of miniature lenses with
`
`curved imaging surfaces,” Appl. Opt. Oct. 54(28):E216-23, 2015.
`
`• Sukmock Lee, Byongoh Kim, Jiyeon Lee, and Jose Sasian, “Accurate
`
`determination of distortion for smart phone cameras,” Applied Optics,
`
`Vol. 53, Issue 29, pp. H1-H6 (2014).
`
`• Ying Ting Liu, “Review and Design of a Mobile Phone Camera Lens for
`
`21.4 Mega-Pixels Image Sensor,” M. Sc. Report, University of Arizona,
`
`2017.
`
`• Luxin Nie, “Patent Review of Miniature Camera Lenses,” M. Sc. Report,
`
`University of Arizona, 2017.
`
`• Cheng Kuei-Yeh, “Cell phone zoom lens design and patent research,” M.
`
`Sc. Report, University of Arizona, 2010.
`
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`• Rob Bates, “Design for Fabrication: Miniature Camera Lens Case
`
`Study,” M. Sc. Report, University of Arizona, 2008.
`
`13. Since 1995, I have been a consultant and have provided to industry
`
`solutions to a variety of projects that include lenses for cell-phones, lenses for
`
`microscopes, and lenses for fast speed photography. I also have consulted in the
`
`area of plastic optics. I hold patents and patent applications related to lens systems.
`
`14.
`
`I have been a topical editor and reviewer for the peer-reviewed
`
`journals Applied Optics and Optical Engineering. I am a fellow of the International
`
`Society for Optics and Photonics (SPIE), a fellow of the Optical Society of
`
`America (OSA), and a lifetime member of the Optical Society of India.
`
`15.
`
`I have served as a co-chair for the conferences “Novel Optical
`
`Systems: Design and Optimization” (1997-2006), “Optical systems alignment,
`
`tolerancing, and verification” (2007-2020), and “International Optical Design
`
`Conference,” (2002). I have taught in Japan (2014, 2016, and 2017) the course:
`
`Advanced Lens Design: Art and Science.
`
`16.
`
`I have been a co-editor of approximately 21 published conference
`
`proceedings from SPIE. I am the author of the book, "Introduction to Aberrations
`
`in Optical Imaging Systems," by Cambridge University Press, 2013. I am named as
`
`an inventor on approximately 13 U.S. patents.
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`17. My curriculum vitae (APPL-1004), includes a more detailed summary
`
`of my background, experience, and publications.
`
`III.
`
` LEVEL OF ORDINARY SKILL IN THE ART
`
`18.
`
`I understand there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention; (2) the
`
`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems.
`
`19.
`
`I am familiar with multi-lens optical systems (including those found in
`
`portable devices such as mobile phones). I am also aware of the state of the art at
`
`the time the application resulting in the ’897 Patent was filed. I have been informed
`
`by Apple’s counsel that the earliest alleged priority date for the ’897 Patent is July
`
`4, 2013. Based on the technologies disclosed in the ’897 Patent, I believe that a
`
`person having ordinary skill in the art (“POSITA”) 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
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`would have known how to use lens design software such as Codev, Oslo, or
`
`Zemax, and would have taken a lens design course or had equivalent training.
`
`20. Lack of work experience could have been remedied by additional
`
`education, and vice versa. Such academic and industry experience would be
`
`necessary to appreciate what was obvious and/or anticipated in the industry and
`
`what a POSITA would have thought and understood at the time. Based on these
`
`criteria, as of the relevant time frame for the ’897 Patent, I possessed at least
`
`such experience and knowledge of a POSITA. Some of my past students would
`
`have qualified as POSITAs, hence am qualified to opine on the ’897 Patent.
`
`21. For purposes of this Declaration, in general, and unless otherwise
`
`noted, my statements and opinions, such as those regarding my experience and the
`
`understanding of a POSITA generally (and specifically related to the references I
`
`consulted herein), reflect the knowledge that existed in the field as of July 4, 2013.
`
`Unless otherwise stated, my understanding and analysis below is consistent with
`
`the level of a POSITA prior to the priority date of the ’897 Patent.
`
`IV. RELEVANT LEGAL STANDARDS
`22.
`
`I understand that prior art to the ’897 Patent includes patents and
`
`printed publications in the relevant art that predate the priority date of the alleged
`
`invention recited in the ’897 Patent. For purposes of this Declaration, I have been
`
`asked to apply July 4, 2013, the earliest alleged priority date, as the priority date
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`Sasián Decl.
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`Inter Partes Review of U.S. 10,330,897
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`for claims 1-15 and 17-29 and to apply January 30, 2017 as the priority date for
`
`claims 16 and 30.
`
`23.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ’897 Patent, I am relying on certain basic
`
`legal principles that counsel have explained to me. These principles are reviewed
`
`below.
`
`24.
`
`I understand that a claim is unpatentable if it is anticipated under 35
`
`U.S.C. § 102(a), or obvious under 35 U.S.C. § 103.
`
`A. Anticipation
`25.
`
`I have been informed by counsel that a patent claim is unpatentable as
`
`anticipated if each element of that claim is present either explicitly or inherently in
`
`a single prior art reference. I have also been informed that, to be an inherent
`
`disclosure, the prior art reference must necessarily disclose the limitation, and the
`
`fact that the reference might possibly practice or contain a claimed limitation is
`
`insufficient to establish that the reference inherently teaches the limitation.
`
`B. Obviousness
`26.
`
`I have been informed that a claimed invention is unpatentable under
`
`35 U.S.C. § 103 if the differences between the invention and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which the subject
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`matter pertains. I have also been informed by counsel that the obviousness analysis
`
`takes into account factual inquiries including the level of ordinary skill in the art,
`
`the scope and content of the prior art, and the differences between the prior art and
`
`the claimed subject matter.
`
`27.
`
`I have been informed by counsel that the Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
`
`show obviousness of claimed subject matter. Some of these rationales include the
`
`following: (a) combining prior art elements according to known methods to yield
`
`predictable results; (b) simple substitution of one known element for another to
`
`obtain predictable results; (c) use of a known technique to improve a similar device
`
`(method, or product) in the same way; (d) applying a known technique to a known
`
`device (method, or product) ready for improvement to yield predictable results; (e)
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`choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; and (f) some teaching, suggestion, or motivation
`
`in the prior art that would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at the claimed
`
`invention.
`
`V. OVERVIEW OF THE ’897 PATENT
`Summary of the Patent
`A.
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`28. The ’897 Patent is directed to “[a]n optical lens assembly [that]
`
`includes five lens elements and provides a TTL/EFL<1.0.” APPL-1001, Abstract.
`
`A ratio of total track length (“TTL”) over effective focal length (“EFL”) being less
`
`than one is indicative of a telephoto lens system. See APPL-1006, p.169. As
`
`admitted by the Applicant in the ’897 Patent, it was and still is common to
`
`incorporate digital cameras into a variety of devices including cellular telephones,
`
`personal digital assistants, and other portable electronic devices. See APPL-1001,
`
`1:34-38. The driving need for cameras in such devices is a growing consumer
`
`demand for portable cameras with “good quality imaging and … a small total track
`
`length.” See id., 1:38-42.
`
`29. According to the Applicant, the lens system in the ’897 Patent is
`
`allegedly the answer to the known need for good quality imaging and a small total
`
`track length. See id., 1:43-50. The lens system in the ’897 Patent includes:
`
`a first lens element with positive refractive power having a convex
`object-side Surface, a second lens element with negative refractive
`power having a thickness d2 on an optical axis and separated from the
`first lens element by a first air gap, a third lens element with negative
`refractive power and separated from the second lens element by a
`second air gap, a fourth lens element having a positive refractive power
`and separated from the third lens element by a third air gap, and a fifth
`lens element having a negative refractive power, separated from the
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`fourth lens element by a fourth air gap, the fifth lens element having a
`thickness d5 on the optical axis.
`
`Id., 1:56-66. An example of the lens system in the ’897 Patent is provided below:
`
`Id., Fig. 1A. In the ’897 Patent, all of the embodiments are telephoto (i.e., have a
`
`TTL to EFL ratio less than 1.0) and have an F number (“F#”) of about 2.8. Id., 5:2,
`
`
`
`6:43, 7:61.
`
`30. For each embodiment, the ’897 Patent includes optical data for each
`
`lens element, such as radius of curvature (“R”) and data (i.e., coefficients) that
`
`describes the surface of each aspheric lens element. See id., Tables 1-6. The ’897
`
`Patent also includes the so-called surface “sag” equation, which is the standardized
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`equation use for mathematically representing the surface of aspheric lens element.
`
`Id., 3:43-4:9. The ’897 Patent’s explanation of the sag equation is as follows:
`
`Detailed optical data is given in Table 1, and the aspheric surface data
`is given in Table 2, wherein the units of the radius of curvature (R), lens
`element thickness and/or distances between elements along the optical
`axis and diameter are expressed in mm “Nd” is the refraction index.
`The equation of the aspheric surface profiles is expressed by:
`
`
`
`where r is distance from (and perpendicular to) the optical axis, k is the
`conic coefficient, c=l/R where R is the radius of curvature, and αi are
`coefficients given in Table 2.
`
`Id., 3:43-4:9.
`
`31. Because the sag equation is used to mathematically represent each
`
`aspheric surface of a lens element, it can be used to determine the lens element’s
`
`thickness for an r value (i.e., radial distance from the optical axis), including the
`
`circumferential edge thickness for a specified lens diameter. For the first lens
`
`element, this can be done by determining Z for the object-side and image-side
`
`surfaces at the lens’s overall radius, and then subtracting the Z values from the
`
`thickness of the lens at the optical axis. This is confirmed by the ’897 Patent,
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`Apple v. Corephotonics
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`18
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`APPL-1003
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`

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`Sasián Decl.
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`Inter Partes Review of U.S. 10,330,897
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`which notes that edge thickness can be determined using the optical data and
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`aspheric coefficients. See id., 5:21-23 (stating that edge thickness of the first lens
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`element, L1e, can be determined using the optical data and aspheric coefficients
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`for the first lens element).
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`32. As discussed below, none of these characteristics were new. Prior to
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`July 4, 2013, five element lens assemblies for mobile phones were well known,
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`including telephoto lenses. See APPL-1006, pp.169-182; APPL-1005, Fig. 5. For
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`example, Ogino (APPL-1005) teaches a similar five lens system with a TTL to
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`EFL ratio of less than one. In my opinion, the disclosures provided in Ogino and
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`other prior art discussed below either anticipate or render obvious each and every
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`element of the claims I have been asked to analyze in the ’897 Patent, as discussed
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`below.
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`B.
`33.
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`Priority Date of the ’897 Patent
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`I am informed that the ’897 Patent is a continuation of a string of
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`patent applications claiming the benefit of Provisional Application No. 61/842,987
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`filed on July 4, 2013. See APPL-1001. The subject matter of claims 16 and 30,
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`though, appears to be first added in U.S. Patent No. 9,857,568 filed on January 30,
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`2017 as a continuation-in-part of U.S. Patent No. 9,568,712. Compare APPL-1021
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`with APPL-1022. This would have been apparent to a POSITA since the
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`applications filed prior to the ’568 Patent make no mention of a center thickness
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`Apple v. Corephotonics
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`19
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`APPL-1003
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`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 10,330,897
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`L11, an edge thickness L1e, or the need to maintain a center-to-edge thickness
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`ratio (L11/L1e) of less than 3.0. It is my opinion that a POSITA would not have
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`concluded that the Applicant was in possession of any alleged “invention” in
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`having a center-to-edge thickness ratio of less than three prior to the specification
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`filed with the ’568 Patent. Counsel has informed me that because of this, the
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`priority date of claims 7 and 12 is January 30, 2017.
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`C.
`34.
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`Prosecution History of the ’897 Patent
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`I understand that the ’897 Patent issued on June 25, 2019 from U.S
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`Patent Application No. 15/976,391 (“the ’391 application”) filed on May 10, 2018.
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`See APPL-1001. The ’897 Patent is a continuation of a string of patent applications
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`claiming the benefit of Provisional Application No. 61/842,987 filed on July 4,
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`2013. See APPL-1001.
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`35. The ’391 application was filed with the 30 claims issued in the ’897
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`Patent with two amendments to claim 17 entered during prosecution. The first
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`amendment entered on August 3, 2018 added the limitation “wherein a lens system
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`that includes the lens assembly plus a window positioned between the fifth lens
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`element and an image plane ….” APPL-1002, p.254. The second amendment
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`entered on October 27, 2018 changed the above limitation from “the fifth lens
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`element” to “the plurality of lens elements.” Id., p.75.
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`Apple v. Corephotonics
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`20
`
`APPL-1003
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`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 10,330,897
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`36. The sole Office Action issued on October 18, 2018 where the
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`Examiner entered a non-statutory double patenting rejection. Id., p.84. This was
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`overcome by a terminal disclaimer filed on October 27, 2018. Id., pp.78-79. The
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`’391 application was allowed on March 4, 2019 with no statement from the
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`Examiner as to patentability or substantive analysis of any claim including
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`application of any prior art. See id., p.34-35.
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`37. As observed from the prosecution history, it appears that the prior art
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`that I rely on in this declaration was not applied by the Examiner and thus was not
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`used as a basis for allowing the claims.
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`VI. CLAIM CONSTRUCTION
`38.
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`It is my understanding that in order to properly evaluate the ’897
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`Patent, the terms of the claims must first be interpreted. It is my understanding that
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`for the purposes of this inter partes review, the claim terms are given their ordinary
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`and accustomed meaning as would be understood by one of ordinary skill in the
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`art, unless the inventor has set forth a special meaning for a term.
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`39.
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`I have previously opined on the meaning of two terms, “Effective
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`Focal Length (EFL)” and “Total Track Length (TTL),” in relation to other patents
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`that share a common specification with the ’897 Patent. See IPR2018-01140, Ex.
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`Apple v. Corephotonics
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`21
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`APPL-1003
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 10,330,897
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`1003; IPR2018-01146, Ex. 1003. I am informed that in IPR2018-011401, the
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`Board construed these terms as follows:
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`• Effective Focal Length (EFL): “the focal length of a lens assembly.”
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`• Total Track Length (TTL): “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 corresponding to
`either the electronic sensor or a film sensor.”
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`See IPR2018-01140, Paper 37, pp.10-18. My analysis below relies on these
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`interpretations which I find to be sufficient for showing how the claims are either
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`anticipated or rendered obvious.
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`VII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`40.
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`It is my opinion that claims 1, 4, 9-15, 17, 20, and 25-29 are
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`anticipated by U.S. Patent No. 9,128,267 to Ogino (APPL-1005); that claims 2, 5,
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`6, 18, and 21-23 are rendered obvious over the combination of Ogino and Bareau
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`(APPL-1012); that claims 3, 8, 19, and 24 are rendered obvious over the
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`
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`1 IPR2018-01140 is directed to U.S. Pat. No. 9,402,032. The Board entered the
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`same constructions in IPR2018-01146 directed to U.S. Pat. No. 9,568,712. Both of
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`these patents are members of the same family as the ’897 Patent. Counsel has
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`informed me that these cases are presently appealed on other grounds.
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`Apple v. Corephotonics
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`22
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`APPL-1003
`
`

`

`Sasián Decl.
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`Inter Partes Review of U.S. 10,330,897
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`combination of Ogino, Bareau, and Kingslake (APPL-1013); and that claims 16
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`and 30 are rendered obvious over the combination of Chen (APPL-1020), Iwasaki
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`(APPL-1009), and Beich (APPL-1007). I have been informed by counsel that
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`Ogino, Bareau, Kingslake, Iwasaki, and Beich are prior art to claims 1-15 and 17-
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`29. I have also been informed by counsel that Chen is prior art to claims 16 and 30
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`given that the subject matter of claims 16 and 30 are subject to a later priority date.
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`A. Claims 1, 4, 9-15, 17, 20, and 25-29 are anticipated by Ogino.
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`Summary of Ogino
`1.
`41. Ogino discloses a five-lens system for use in portable devices. See
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`APPL-1005, Abstract, 1:6-16. In fact, Ogino’s lens system is similarly designed for
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`use in portable devices such as “a digital still camera, a cellular phone with a
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`camera, a mobile information terminal (PDA: Personal Digital Assistance), a
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`smartphone, a tablet terminal, and a mobile game machine, on which the imaging
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`lens is mounted to perform photography.” Id., 1:11-16. Ogino’s lens system is also
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`similarly designed to meet a demand for five-lens systems in portable devices to
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`“to enhance the resolution and performance of the imaging lens.” Id., 1:30-31.
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`42. Ogino offers a number of embodiments that each includes five lenses,