`571-272-7822
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`Paper No. 7
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`Date: November 3, 2020
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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.
`____________
`
`Case 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.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2020-00878
`Patent 10,330,897 B2
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`
`I.
`INTRODUCTION
`Apple Inc. (“Petitioner”) requested an inter partes review of claims 1–
`6 and 8–30 (the “challenged claims”) of U.S. Patent No. 10,330,897 B2 (Ex.
`1001, “the ’897 patent”). Paper 2 (“Petition” or “Pet.”). Corephotonics Ltd.
`(“Patent Owner”) did not file a Preliminary Response.
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless it is determined that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least one of the claims challenged in the
`petition. Based on the information presented in the Petition and the
`supporting evidence, we are persuaded that there is a reasonable likelihood
`Petitioner would prevail with respect to at least one of the challenged claims.
`Accordingly, we institute an inter partes review of claims 1–6 and 8–30 on
`all of the grounds set forth in the petition.
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far. This is not a final
`decision as to patentability of the challenged claims.
`II.
`BACKGROUND
`Related Proceedings
`A.
`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
`IPR2018-01146 (“the ’1146IPR”), an inter partes review proceeding
`instituted based on Petitioner’s challenge to the ’712 patent. This
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`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. Presently pending is IPR2020-00897 (“the ’897IPR”), an
`inter partes review proceeding based on Petitioner’s challenge to the ’277
`Patent.
`The ’897 Patent (Ex. 1001)
`B.
`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, [45], [22], [63]. The ’897 patent concerns an
`optical lens assembly with five lens elements. Id. at [57]. Figure 1A of the
`’897 patent is reproduced below.
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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.
`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.
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`Table 1 of the ’897 patent sets forth optical parameters for the optical lens
`assembly.
`
`The ’897 patent discloses that,
`[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 4:16–28 (emphasis added).
`C.
`Challenged Claims
`Challenged claims 1 and 17 are independent. Challenged claims 2–6,
`and 8–16 depend directly or indirectly from claim 1 and challenged claims
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`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.
`
`Ex. 1001, 8:21–36
`
`Proposed Grounds of Unpatentability
`D.
`Petitioner advances the following challenges supported by the
`declaration of Dr. José Sasián (Ex. 1003).
`Claims Challenged 35 U.S.C. §1
`102
`1, 4, 9–15, 17, 20,
`25–29
`2, 5, 6, 18, 21–23
`
`103
`
`Reference(s)/Basis
`U.S. Patent No. 9,128,267 to Ogino
`et al. (“Ogino,” Ex. 1005)
`Ogino and The Optics of Miniature
`Digital Cameras by Jane Bareau et
`al., SPIE Proceedings Volume 6342,
`International Optical Design
`
`
`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. § 103 that
`became effective on March 16, 2013. Because the ’840 patent issued from
`an application filed after March 16, 2013, we apply the AIA version of the
`statutory basis for unpatentability. See Ex. 1001, codes (22), (86).
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`Claims Challenged 35 U.S.C. §1
`
`3, 8, 19, 24
`
`16, 30
`
`103
`
`103
`
`
`
`Reference(s)/Basis
`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)
` Ogino, and 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
`to Beich et al. (“Beich,” Ex. 1007)
`
`III. ANALYSIS
`Claim Construction
`A.
`We interpret a claim “using the same claim construction standard that
`would be used to construe the claim in a civil action under 35 U.S.C.
`282(b).” 37 C.F.R. § 42.100(b).2 Under that standard, we construe the
`claim “in accordance with the ordinary and customary meaning of such
`
`
`2 The Office has changed the claim construction standard in AIA
`proceedings, replacing the broadest reasonable interpretation standard with
`the same claim construction standard used in a civil action in federal district
`court. Changes to the Claim Construction Standard for Interpreting Claims
`in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340, 51,340 (Oct. 11, 2018). This change applies to petitions filed on or
`after November 13, 2018. Id. Because the present Petition was filed on
`May 1, 2020, we construe the claims in accordance with the standard used in
`federal district court, now codified at 37 C.F.R. § 42.100(b).
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`claim as understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent.” Id.
`We construe claim terms to the extent necessary for our analysis on
`whether to institute a trial. See, e.g., Nidec Motor Corp. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only
`construe terms ‘that are in controversy, and only to the extent necessary to
`resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`Consequently, we address below Petitioner’s proposed constructions
`for the terms “effective focal length” and “total track length.” We further
`direct the parties to address fully the meaning of these terms at trial.
`1.
`Effective Focal Length (EFL)
`Independent claim 1 recites “wherein the lens assembly has an
`effective focal length (EFL).” Petitioner contends the term “effective focal
`length” should be construed as “the focal length of a lens assembly.” Pet. 7.
`For purposes of this Decision, we construe the term “effective focal length”
`in this manner. 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.
`2.
`Total Track Length (TTL)
`Independent claim 1 recites “wherein the lens assembly has a
`total track length (TTL) of 6.5 millimeters or less.” 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:
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`an electronic sensor, a film sensor, and an image plane corresponding to
`either the electronic sensor or [the] film sensor.” Pet. 8. For purposes of
`this Decision, we construe the term “total track length” in this manner. 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. We note, however, that Petitioner
`proposes a different construction of the term in IPR2020-00877. The parties
`should address during trial whether and why the construction of this term
`should differ in these two IPRs.
`B.
`Principles of Law
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the subject matter sought to be patented 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 said
`subject matter pertains. 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) objective evidence of nonobviousness,
`i.e., secondary considerations. See Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
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`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). The burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp.
`Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the
`burden of proof in an inter partes review). Furthermore, Petitioner cannot
`satisfy its burden of proving obviousness by employing “mere conclusory
`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
`Cir. 2016).
`Thus, to prevail in an inter partes review, Petitioner must explain 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.
`C.
`Anticipation 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.
`For the reasons that follow, we are persuaded, at this stage of the
`proceeding, that the evidence supports Petitioner’s arguments and Dr.
`Sasián’s testimony and thus, establishes a reasonable likelihood of
`prevailing with respect to this ground.
`1.
`Overview of Ogino
`Ogino concerns an imaging lens substantially consisting of, 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
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`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. See Ex. 1005, 2:4–13. Figure 5 of Ogino is
`reproduced below.
`
`
`Figure 6 is a lens cross-sectional view illustrating a configuration example of
`an imaging lens according to an embodiment of the invention. See id. at
`4:5–9.
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`Independent Claim 1
`2.
`“A lens assembly, comprising: a plurality of lens elements
`arranged along an optical axis and spaced apart by respective
`spaces”
`Petitioner contends 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).
`“wherein the lens assembly has an effective focal length
`(EFL)”
`As discussed above in Section III.A.1, we construe EFL as “the focal
`length of a lens assembly.” Petitioner contends that “Ogino teaches for each
`of its embodiments, that ‘f is a focal length of a whole system.’” Id. at 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 11 of Ogino is reproduced below.
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`Table 9 of Ogino discloses optical parameters for the lens assembly of
`Example 5, which is depicted in Figure 5.
`“a total track length (TTL) of 6.5 millimeters or less and a ratio
`TTL/EFL of less than 1.0”
`As discussed above in Section III.A.2, we construe TTL as “the on-
`axis spacing between the object-side surface of the first lens element and the
`image plane.” 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
`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
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`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.
` “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) as shown in Fig. 5 above.” 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).
`“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
`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
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`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).
`“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). 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).
`“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
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`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. Pet. 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.
`3.
`Dependent Claims 4, 9–15, 17, 20, 25–29
`Patent Owner does not raise arguments for claims 1, 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 are persuaded, at this stage
`of the proceeding, that Petitioner has also shown a reasonable likelihood of
`prevailing in demonstrating that these claims are anticipated by Ogino. See
`Pet. 28–40.
`Additional Asserted Grounds
`D.
`As to the remaining claims and grounds asserted in the Petition, Patent
`Owner does not raise any arguments. Having decided that Petitioner is
`likely to prevail as to at least one claim challenged in the Petition, the review
`shall proceed on all challenged claims and on all grounds raised in the
`Petition.
`
`IV. SUMMARY
`For the reasons expressed above, we determine that Petitioner has
`
`demonstrated a reasonable likelihood of showing that at least claim 1 among
`the challenged claims is unpatentable. As set out in the Order below, we
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`institute a trial on all challenged claims and all asserted grounds of
`unpatentability.
`This is a decision to institute an inter partes review under 35 U.S.C. §
`314. Our factual findings and determinations at this stage of the proceeding
`are preliminary, and based on the evidentiary record developed thus far.
`This is not a final decision as to the patentability of claims for which inter
`partes review is instituted. Our final decision will be based on the record as
`fully developed during trial.
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–6 and 8–30 of the ’897 patent is instituted on all grounds
`in the Petition that these claims are unpatentable; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`partes review of the ʼ897 patent is instituted commencing on the entry date
`of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4,
`notice is given of the institution of a trial.
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`For PETITIONER:
`Michael S. Parsons
`Andrew S. Ehmke
`Jordan Maucotel
`HAYNES AND BOONE, LLP
`michael.parsons.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`jordan.maucotel.ipr@haynesboone.com
`
`For PATENT OWNER:
`Neil Rubin
`C. Jay Chung
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`jchung@raklaw.com
`
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