UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case No. IPR2020-00896
`U.S. Patent No. 10,317,647
`____________
`
`DECLARATION OF TOM D. MILSTER, Ph.D.
`PURSUANT TO 37 C.F.R. § 1.68
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2001
`Page 1
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case No. IPR2020-00896
`U.S. Patent No. 10,317,647
`____________
`
`DECLARATION OF TOM D. MILSTER, Ph.D.
`PURSUANT TO 37 C.F.R. § 1.68
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2001
`Page 1
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`
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`Case Nos. IPR2020-00896
`U.S. Patent No. 10,317,647
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`TABLE OF CONTENTS
`
`BACKGROUND .................................................................... 1
`I.
`SUMMARY OF OPINIONS ................................................... 1
`II.
`III. EDUCATIONAL AND EMPLOYMENT BACKGROUND ...... 4
`IV. LEVEL OF ORDINARY SKILL IN THE ART (POSITA) ..... 10
`V. RELEVANT LEGAL STANDARDS FOR ANTICIPATIONA
`ND OBVIOUSNESS ............................................................ 13
`VI. OVERVIEW OF THE ‘647 PATENT .................................... 17
`A. Overview of the ‘647 Patent ......................................................... 17
`B. Multiple Element Lens Design ...................................................... 23
`VII. CLAIM CONSTRUCTION ................................................... 27
`VIII. PRIOR ART REFERENCES ................................................. 28
`A. Ogino (Ex. 1005) ........................................................................... 28
`B.
`Chen II (Ex. 1008) ......................................................................... 33
`C.
`Bareau ........................................................................................... 37
`D. Kingslake (Ex. 1013) .................................................................... 40
`E.
`Hsieh (Ex. 1025) ........................................................................... 41
`F.
`Beich (Ex. 1007) ........................................................................... 43
`IX. OBVIOUSNESS OF CHALLENGED CLAIMS 4 AND 6-12 . 45
`
`i
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`Case Nos. IPR2020-00896
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`B.
`
`GROUND 3 - The Petition Fails to Demonstrate that Ogino in
`view of Chen II and Bareau renders claims 2, 3, 5 and 8-11
`
`A. GROUND 2 - The Petition Fails to Demonstrate that Ogino in
`view of Chen II renders claims 1 and 4 unpatentable. .................. 45
`1.
`Claim 1 and 4 ........................................................................... 45
`2.
`Dependent Claims 2-6 .............................................................. 67
`unpatentable. ................................................................................. 68
`1.
`and Bareau to render claims 2, 3 and 5 unpatentable. .............. 68
`2.
`and Bareau to render claims 8-11 unpatentable. ...................... 74
`C.
`unpatentable. ................................................................................. 78
`D. GROUND 5 - The Petition Fails to Demonstrate that Hsieh in view
`of Beich renders claim 7 unpatentable. ......................................... 85
`E.
`of Iwasaki and Beich renders claim 12 unpatentable. ................... 87
`X. DECLARATION .................................................................. 89
`
`A POSITA would not have modified Ogino in view of Chen II
`
`A POSITA would not have modified Ogino in view of Chen II
`
`GROUND 4 - The Petition Fails to Demonstrate that Ogino in
`view of Chen II, Bareau and Kingslake renders claim 6
`
`GROUND 6 - The Petition Fails to Demonstrate that Chen in view
`
`
`
`ii
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`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2001
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`
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`Case Nos. IPR2020-00896
`U.S. Patent No. 10,317,647
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`I.
`
`1.
`
`BACKGROUND
`
`I have been retained as a technical expert by Patent Owner Corepho-
`
`tonics Ltd. (“Patent Owner” or “Corephotonics”) in this proceeding. Corepho-
`
`tonics has asked me to provide my expert opinions concerning certain
`
`technical aspects of imaging system design as they relate to the Petitioner Ap-
`
`ple Inc.’s petition for inter partes review of U.S. Patent 10,317,647 (“’647
`
`patent”) in Case No. IPR2020-00896 (“-00896 IPR”) and the accompanying
`
`Declaration of Jose Sasián. In particular, I have been asked to respond to Dr.
`
`Sasián’s opinions set forth in his declaration, Ex. 1003.
`
`2.
`
`The statements in this declaration summarize my opinions on these
`
`matters based on my forty years of study and research of imaging systems, my
`
`education, knowledge, skills, and my review and analysis of the materials ref-
`
`erenced herein.
`
`3. My work in this matter is being billed at the rate of $625 per hour. I am
`
`also being reimbursed for reasonable and customary expenses associated with
`
`my work and testimony in this investigation. My compensation is not contin-
`
`gent on the outcome of this matter or the substance of my testimony.
`
`II. SUMMARY OF OPINIONS
`
`4.
`
`In the preparation of this declaration, I have reviewed:
`
`1
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`Case Nos. IPR2020-00896
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`• The ‘277 patent (Ex. 1001)
`
`• Prosecution history of the ’277 patent (Ex. 1002)
`
`• The declarations of Dr. Jose Sasián (Ex. 1003)
`
`• The curriculum vitae of Dr. Jose Sasián (Ex. 1004)
`
`• U.S. Patent No. 9,128,267 (“Ogino”) (Ex. 1005)
`
`• Warren J. Smith, Modern Lens Design (1992) (“Smith”) (Ex. 1006)
`
`• 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 (Au-
`gust 12, 2010), https://doi.org/10.1117/12.861364 (“Beich”) (Ex. 1007)
`
`• U.S. Patent No. 7,777,972 to Chen (“Chen”) (Ex. 1008)
`
`• Max Born et al., PRINCIPLES OF OPTICS, 6th Ed. (1980) (“Born”) (Ex. 1010)
`
`• Prosecution history of U.S. Patent No. 9,128,267 to Ogino (Ex. 1011)
`
`• Jane Bareau et al., “The optics of miniature digital camera modules,”
`SPIE Proceedings Volume 6342, International Optical Design Confer-
`ence 2006; 63421F (2006) https://doi.org/10.1117/12.692291 (“Bareau”)
`(Ex. 1012)
`
`• Rudolf Kingslake, OPTICS IN PHOTOGRAPHY (1992) (“Kingslake”) (Ex.
`1013)
`
`• U.S. Patent No. 7,859,588 to Parulski et al. (“Parulski”) (Ex. 1014)
`
`• Japanese Patent Pub. No. JP2013106289 to Konno et al. and certified
`English translation (“Konno”) (Ex. 1015)
`
`2
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`APPLE V. COREPHOTONICS
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`Exhibit 2001
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`
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`Case Nos. IPR2020-00896
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`• Bruce J. Walker, OPTICAL ENGINEERING FUNDAMENTALS (1995)
`(“Walker”) (Ex. 1016)
`
`• Robert E. Fischer, Optical System Design (2008) (“Fischer”) (Ex. 1017)
`
`• Michael P. Schaub, THE DESIGN OF PLASTIC OPTICAL SYSTEMS
`(2009) (“Schaub”) (Ex. 1018)
`
`• Optical Society of America, HANDBOOK OF OPTICS, vol. II 2nd ed.
`(1995) (“Handbook of Optics”) (Ex. 1019)
`
`• U.S. Patent No. 10,324,273 to Chen et al. (“Chen”) (Ex. 1020)
`
`• U.S. Patent No. 9,857,568 (Ex. 1021)
`
`• U.S. Patent No. 9,568,712 (Ex. 1022)
`
`• Deposition Transcript of Duncan Moore, Ph.D. in IPR2018-01140 (Ex.
`1023)
`
`• U.S. Patent No. 7,321,475 to Wang et al. (Ex. 1024)
`
`• U.S. Patent No. 8,508,648 to Kubota et al. (Ex. 1025)
`
`• Email from Patent Owner’s counsel authorizing electronic service (Ex.
`1027)
`
`• The deposition transcripts of Dr. Sasián’s deposition of February 19,
`2021. (Ex. 2003)
`
`• José Sasián, Introduction to Lens Design (2019). (Ex. 2004)
`
`• The declaration of Dr. Sasián in IPR2020-00897 (Ex. 2005)
`
`3
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`APPLE V. COREPHOTONICS
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`
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`Case Nos. IPR2020-00896
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`• McGuire Jr, J. P., & Kuper, T. G. (2012, October). Approaching direct
`optimization of as-built lens performance. In Novel Optical Systems De-
`sign and Optimization XV (Vol. 8487, p. 84870D). International Society
`for Optics and Photonics. (Ex. 2006)
`
`• Sturlesi, D., & O'Shea, D. C. (1991). Global view of optical design space.
`Optical engineering, 30(2), 207-218. (Ex. 2007)
`
`• Symmons and Schaub, Field Guide to Molded Optics (2016) (Ex. 2008)
`
`• Declaration of Dr. Milster in IPR2020-00897 (Ex. 2009)
`
`5.
`
`In forming the opinions set forth herein, I have considered:
`
`a. The documents listed above;
`
`b. My education, knowledge, skills, and experience in the design and devel-
`
`opment of imaging systems; and
`
`c. The level of skill of a person having ordinary skill in the art (POSITA) at
`
`the time of the effective filing dates of the ‘647 patent.
`
`6.
`
`As I explain in further detail below, it is my professional and expert
`
`opinion that Apple and Dr. Sasián have failed to demonstrate that any of the
`
`challenged claims of the ‘647 patent were obvious, under any of the grounds
`
`or combinations of references that Apple has raised in this IPR.
`
`III. EDUCATIONAL AND EMPLOYMENT BACKGROUND
`
`7.
`
`I received a Bachelor of Science degree in Electrical Engineering from
`
`the University of Missouri in 1981 and a Doctorate in Optical Sciences from
`
`4
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`the University of Arizona in 1987. I worked for IBM as a staff optical engineer
`
`from 1986 to 1989, and I worked during the summer of 1989 for Lawrence
`
`Livermore National Laboratories. I joined the faculty at the University of Ar-
`
`izona’s Wyant College of Optical Sciences in 1989.
`
`8.
`
`For forty years, I have been working, teaching, or researching in the
`
`field of optical devices. I worked for IBM for three years on the subject of
`
`optical storage developing miniature optical systems, and I have been teaching
`
`and researching at the University of Arizona for over thirty-one years.
`
`9.
`
`I have written over one hundred peer-reviewed papers in the field of
`
`optics. A number of these papers relate specifically to miniature optical de-
`
`vices and systems. My technical research has earned several recognitions and
`
`awards. For example, my 1995 paper entitled “Linear behavior of a near-field
`
`optical scanning system” was selected as a landmark paper in near-field op-
`
`tics.1 My 1997 paper entitled “Objective lens design for multiple-layer optical
`
`data storage” was selected as one of the 300 most influential papers in lens
`
`
`1 Kann, J.L., Milster, T.D., Froehlich, F.F. Ziolkowski, R.W., & Judkins,
`J.B. (1995). Linear behavior of a near-field optical scanning system. JOSA
`A, 12(8), 1677-1682.
`
`5
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`design.2 A recent paper entitled “Multiple-order diffractive engineered surface
`
`lenses” has been on the Applied Optics ‘Top Downloads’ list for the last four
`
`consecutive months.3
`
`10.
`
`I am a named inventor on fifteen US patents concerning various ad-
`
`vanced optical systems, like data detectors and systems for optical data stor-
`
`age that include miniature optics (US 4,823,220, US 6,111,839, US 6,577,584,
`
`US 6,577,584, US 7,796,487, US 7,974,170, US 8,003,187), miniature lens
`
`designs for fiber communications (US 6,498,875), vacuum ultraviolet systems
`
`(US 7,916,291, US 8,472,111, US 9,081,193), miniature-optic blood sensors
`
`(9,072,473), near-field sensors (US 8,737,178), and holography (US
`
`9,116,303, US 10,866,406).
`
`11.
`
`I have contributed chapters to eleven books about optics, including one
`
`chapter entitled “Miniature and Micro Optics,” which has been published in
`
`the last three editions of the Handbook of Optics. This chapter discusses the
`
`design and use of miniature optical elements, including molded elements, that
`
`
`2 Milster, T. D., Upton, R. S., & Luo, H. (1997, July). Objective lens design
`for multiple-layer optical data storage. In Optical Data Storage 1997 Topi-
`cal Meeting (Vol. 3109, pp. 142-149). International Society for Optics and
`Photonics.
`3 Milster, T.D., Kim, Y.S., Wang, Z., & Purvin, K. (2020). Multiple-order
`diffractive engineered surface lenses. Applied Optics, 59(26), 7900-7906.
`
`6
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`are similar to those found in cell phone cameras. Material for this chapter was
`
`derived from a popular short course I taught for a professional society over a
`
`period of about 10 years, and it drew on the experience I received working for
`
`IBM and my first several years working as faculty at the University of Ari-
`
`zona.
`
`12. One significant accomplishment I have achieved through my research
`
`is breaking the “diffraction barrier” by applying the techniques of near-field
`
`scanning optical microscopy (NSOM),4 developing specialized near -field
`
`probes,5 and applying the solid immersion lens (SIL) in various ways.6 This
`
`work led me to develop new, more efficient miniature optical probes and high-
`
`
`4 Kann, J.L., Milster, T.D., Froehlich, F.F., Ziolkowski, R.W., & Judkins,
`J.B. (1995). Linear behavior of a near-field optical scanning system. JOSA
`A, 12(8), 1677-1682; Foehlich, F.F., & Milster, T.D. (1995). Detection of
`probe dither motion in near-field scanning optical microscopy. Applied op-
`tics, 34(31), 7273-7279.
`5 Hirota, K., Milster, T. D., Zhang, Y., & Erwin, J. K. (2000). Design of a
`near-field probe for optical recording using a 3-dimensional finite differ-
`ence time domain method. Japanese Journal of Applied Physics, 39(2S),
`973.
`6 Shimura, K., Milster, T. D., Jo, J. S., & Hirota, K. (2000). Pupil plane fil-
`tering for optical pickup heads with effective numerical aperture of 1.1 and
`2.0. Japanese Journal of Applied Physics, 39(2S), 897; Zhang, J., Kim, Y.,
`Kim, Y., Valencia, R., Milster, T. D., & Dozer, D. (2009). High resolution
`semiconductor inspection by using solid immersion lenses. Japanese Jour-
`nal of Applied Physics, 48(3S1), 03A043.
`
`7
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`performance miniature optical systems.7 In these projects, my students and I
`
`applied a mixture of theory, optical design and fabrication techniques to pro-
`
`duce real examples of the miniature and micro-optical lenses that we envi-
`
`sioned. One of my recent conference presentations entitled “Practical
`
`measurement of cell-phone camera focal length,” specifically addresses the
`
`properties of modern cell-phone camera lenses.8
`
`13. One of my current projects is directly related to molding optical ele-
`
`ments. A recent paper entitled “Precision glass molding of diffractive op- tical
`
`elements with high surface quality” specifically addresses issues for molding
`
`small glass structures.9 My students, staff and I developed a complete process
`
`for molding glass structures with micrometer-size structures and extremely
`
`high quality. Although not mentioned in the publication, we also worked on
`
`
`7 Zhang, Y., Milster, T. D., Kim, J. S., & Park, S. K. (2004). Advanced lens
`design for bit-wise volumetric optical data storage. Japanese journal of ap-
`plied physics, 43(7S), 4929.
`8 Milster, T. D., & Kuhn, W. P. (2020, August). Practical measurement of
`cell-phone camera lens focal length. In Optical System Alignment, Toler-
`ancing, and Verification XIII (Vol. 11488, p. 1148807). International Soci-
`ety for Optics and Photonics.
`9 Zhang, Y., Liang, R., Spires, O. J., Yin, S., Yi, A., & Milster, T. D. (2020).
`Precision glass molding of diffractive optical elements with high surface
`quality. Optics Letters, 45(23), 6438-6441.
`
`8
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`molding plastic lens structures. This experience relates directly to the fabrica-
`
`tion of miniature optical components, like those under review for this case.
`
`14.
`
`I am a Fellow member of the Optical Society of America and the SPIE
`
`– International Society for Optics and Photonics. I am also a Senior Member
`
`of the National Association of Inventors.
`
`15.
`
`In addition to my research, I have served as a technical expert in both
`
`district courts and ITC patent litigation in the United States of America. In the
`
`last ten years, I have testified in the following matters: American Medical Sys-
`
`tems, Inc. and Laserscope v. Laser Peripherals, LLC, Civil Action No.
`
`16.
`
`08-CV-4798, United States District Court for the District of Minnesota;
`
`Amer- ican Medical Systems, Inc. and Laserscope v. Biolitec, Inc., Biolitec
`
`AG, Biolitec SIA, Ceramoptec Industries, Inc., Ceramoptec GmbH and An-
`
`daoptec, LTD, Civil Action No. 3:08-CV-30061-MAP, United States District
`
`Court for the District of Massachusetts, as well in an arbitration matter be-
`
`tween Core- photonics Ltd. and Ningbo Sunny Opotech Co., Ltd., Case No.
`
`HKIAC/A19025.
`
`17. A copy of my CV further describing my experience is attached as ex-
`
`hibit 2002.
`
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`IV. LEVEL OF ORDINARY SKILL IN THE ART (POSITA)
`
`18.
`
`I understand that in evaluating the validity of the ‘647 patent claims,
`
`the content of a patent or printed publication prior art should be interpreted
`
`the way a person of ordinary skill in the art would have interpreted the prior
`
`art as of the effective filing date of the challenged patent.
`
`19.
`
`I understand that factors that may be considered in determining the level
`
`of ordinary skill in the art at the time of the effective filing date of the chal-
`
`lenged patents include: (1) the educational level of the inventor; (2) type of
`
`problems encountered in the art; (3) prior art solutions to those problems; (4)
`
`rapidity with which innovations are made; (5) sophistication of the technol-
`
`ogy; and (6) educational level of active workers in the field.
`
`20. Dr. Sasián at ¶19 in his declaration believes that a “person having ordi-
`
`nary skill in the art (“POSITA”) would include someone who had, at the pri-
`
`ority date of the ’647 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 specifica-
`
`tions of lens systems and their fabrication.” Dr. Sasián further states that “a
`
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`POSITA 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.” I have applied the same definition of a POSITA in this declaration.
`
`21.
`
` I understand that the ’647 patent shares a specification with and claims
`
`priority to U.S. App. No. 15/817,235 filed Nov. 19, 2017, and issued as U.S.
`
`Patent No. 10,324,277, which is a continuation of U.S. App. No. 15/418,925
`
`filed on Jan. 30, 2017, and issued as U.S. Patent No. 9,857,568, which is a
`
`continuation-in-part of U.S. App. No. 15/170,472 filed on Jun. 1, 2016, and
`
`issued as U.S. Patent No. 9,568,712, which is a continuation of U.S. App. No.
`
`14/932,319 filed Nov. 4, 2015, and issued as U.S. Patent No. 9,402,032, which
`
`is a continuation of U.S. App. No. 14/367,924 filed on Jun. 22, 2014, now
`
`abandoned. (Ex. 1001, ‘647 patent at 1:6–17.) I also understand that U.S.
`
`App. No. 14/367,924 was a § 371 application from international patent appli-
`
`cation PCT/IB2014/062465 filed June 20, 2014 and is related to and claims
`
`priority from U.S. Provision Patent Application No. 61/842,987 filed July 4,
`
`2013. (Ex. 1001, ’647 patent at 1:15–21.)
`
`22.
`
`I understand that this means that the material disclosed in the specifica-
`
`tion of the ‘647 patent was also contained in the January 30, 2017 patent ap-
`
`plication that led to the ’568 patent.
`
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`23.
`
`I understand that the ‘647 patent also claims priority by a series of con-
`
`tinuations and continuations-in-part to a provisional patent application that
`
`was filed on July 4, 2013. (Ex. 1001, ‘647 patent at 1:5–12.) I understand that
`
`this means that portions of the ‘647 patent specification were disclosed in the
`
`July 4, 2013 provisional patent application, while other portions may have
`
`been added in the January 30, 2017 application leading to the ’568 patent.
`
`24.
`
`I understand that a claim of the ‘647 patent is entitled to July 4, 2013
`
`effective filing date if there is a written description in that provisional appli-
`
`cation that demonstrates that the inventors had possession of the invention
`
`recited in the claim at the time the July 4, 2013 application was filed. I under-
`
`stand that if there is not sufficient written description to demonstrate posses-
`
`sion of the invention recited in the claim, then that claim is entitled to the
`
`January 30, 2017 effective filing date.
`
`25. Dr. Sasián applies July 4, 2013, the earliest alleged priority date, as the
`
`priority date for claims 1-6 and 8-11 and applies January 30, 2017 as the pri-
`
`ority date for claims 7 and 12. Ex. 1003, Sasián Decl. at ¶ 22. My opinions in
`
`reply to Dr. Sasián also use these priority dates.
`
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`26.
`
`I would have met the requirements of a POSITA on June 13, 2013. I
`
`have used the perspective of a POSITA at that time to form my opinions in
`
`reply to Dr. Sasián’s opinions.
`
`V. RELEVANT LEGAL STANDARDS FOR
`ANTICIPATIONA ND OBVIOUSNESS
`
`27.
`
`I have been informed of the legal standards for establishing patent in-
`
`validity in inter partes review proceedings before the Patent Trial and Appeal
`
`Board.
`
`28.
`
`I understand that the petitioner must prove invalidity of a patent claim
`
`by a preponderance of the evidence, that is, the evidence must be sufficient to
`
`show that a fact or legal conclusion is more likely than not.
`
`29.
`
`I understand that a claim may be anticipated if (1) the claimed invention
`
`was patented, described in a printed publication, or in public use, on sale, or
`
`otherwise available to the public before the effective filing date of the claimed
`
`invention; or (2) the claimed invention was described in a patent or published
`
`application, in which the patent or application names another inventor and was
`
`effectively filed before the effective filing date of the claimed invention.
`
`30.
`
`I understand that, once the claims of a patent have been properly con-
`
`strued, the next step in determining anticipation of a patent claim requires a
`
`13
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2001
`Page 16
`
`
`
`Case Nos. IPR2020-00896
`U.S. Patent No. 10,317,647
`
`comparison of the properly construed claim language to the prior art on a lim-
`
`itation-by-limitation basis.
`
`31.
`
`I understand that even if a patent claim is not anticipated, it may still be
`
`invalid 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 at the
`
`time the invention was made to a person of ordinary skill in the pertinent art.
`
`32.
`
`I also understand that a patent may be rendered obvious based on an
`
`alleged prior art reference or a combination of such references plus what a
`
`person of ordinary skill in the art would understand based on his or her
`
`knowledge and the references. It is also my understanding that in assessing
`
`the obviousness of claimed subject matter one should evaluate obviousness
`
`over the prior art from the perspective of one of ordinary skill in the art at the
`
`time the invention was made (and not from the perspective of either a layman
`
`or a genius in that art).
`
`33.
`
`I understand that a patent claim composed of several elements is not
`
`proved obvious merely by demonstrating that each of its elements was known
`
`in the prior art. There must be a reason for combining the elements in the
`
`manner claimed. That is, there must be a showing that a person of ordinary
`
`14
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2001
`Page 17
`
`
`
`Case Nos. IPR2020-00896
`U.S. Patent No. 10,317,647
`
`skill in the art at the time of the invention would have thought of either com-
`
`bining two or more references or modifying a reference to achieve the claimed
`
`invention.
`
`34.
`
`I understand that an obviousness determination includes the considera-
`
`tion of the following factors: (1) the scope and content of the prior art, (2) the
`
`differences between the prior art and the claims at issue, (3) the level of ordi-
`
`nary skill in the art, and (4) objective evidence of nonobviousness.
`
`35.
`
`I understand that the burden is on the petitioner to explain how specific
`
`references could be combined, which combinations of elements in specific
`
`references would yield a predictable result, and how any specific combination
`
`would operate or read on the claims. I further understand that the petitioner
`
`cannot rely on conclusory statements but must instead provide a reasoned ex-
`
`planation supported by evidence. I also understand that obviousness does not
`
`exist where the prior art discourages or teaches away from the claimed inven-
`
`tion. I also understand that even if a reference does not teach away, its state-
`
`ments regarding preferences are relevant to a finding whether a person skilled
`
`in the art would be motivated to combine that reference with another refer-
`
`ence.
`
`15
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2001
`Page 18
`
`
`
`Case Nos. IPR2020-00896
`U.S. Patent No. 10,317,647
`
`36.
`
`I understand that the burden is on the petitioner to explain how specific
`
`references could be combined, which combinations of elements in specific
`
`references would yield a predictable result, and how any specific combination
`
`would operate or read on the claims. I further understand that the petitioner
`
`cannot rely on conclusory statements but must instead provide a reasoned ex-
`
`planation supported by evidence. I also understand that obviousness does not
`
`exist where the prior art discourages or teaches away from the claimed inven-
`
`tion. I also understand that even if a reference does not teach away, its state-
`
`ments regarding preferences are relevant to ta finding whether a person skilled
`
`in the art would be motivated to combine that reference with another refer-
`
`ence.
`
`37.
`
`I understand that it is impermissible to use hindsight to arrive at the
`
`claimed invention. My understanding is that the inventor’s own path never
`
`leads to a conclusion of obviousness. I also understand that, when assessing
`
`whether there was a motivation to combine references to teach a claim ele-
`
`ment, defining the problem in terms of its solution reveals improper hindsight.
`
`38.
`
`I understand that, in this proceeding, prior art to the ’277 patent includes
`
`patents and printed publications in the relevant art that predate the effective
`
`16
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2001
`Page 19
`
`
`
`Case Nos. IPR2020-00896
`U.S. Patent No. 10,317,647
`
`filing date of the ‘277 patent’s challenged claims 1-6 and 8-11, which I un-
`
`derstand to be June 13, 2013. (Ex. 1001, ’479 patent at 1:7–20.) For chal-
`
`lenged claims 7 and 12, I understand that date to be January 30, 2017.
`
`VI. OVERVIEW OF THE ‘647 PATENT
`
`A. Overview of the ‘647 Patent
`
`39. The ‘647 patent is concerned with designs for a “miniature telephoto
`
`lens assembly” of a kind suitable for use in mobile phones and other portable
`
`electronic products. (Ex. 1001, ‘647 patent at 1:26–30.) The example designs
`
`shown in the ‘647 patent utilize five plastic lens elements, each having a com-
`
`plex aspheric shape:
`
`17
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2001
`Page 20
`
`
`
`Case Nos. IPR2020-00896
`Case Nos. IPR2020-00878
`U.S. Patent No. 10,317,647
`U.S. Patent No. 10,330,897
`
`
`37. The use of these multiple lens elements with aspheric shapes makes
`40. The use of these multiple lens elements with aspheric shapes makes
`
`
`
`possible a lens that produces a high-quality image, by minimizing chromatic
`possible a lens that produces a high-quality image, by minimizing chromatic
`
`aberrations and other optical aberrations that would blur or distort the image.
`aberrations and other optical aberrations that would blur or distort the image.
`
`(Ex. 1001, ’897 patent at 2:22–34, 2:51–57.)
`(Ex. 1001, ‘647 patent at 2:22–34, 2:51–57.)
`
`38. These multi-lens systems with aspheric lens surfaces have a vast range
`41. These multi-lens systems with aspheric lens surfaces have a vast range
`
`of possible designs. For example, the design in figure 1A from the ’897 patent
`of possible designs. For example, the design in figure 1A from the ‘647 patent
`
`requires several dozen numerical parameters to define the shapes, locations,
`requires several dozen numerical parameters to define the shapes, locations,
`
`and properties of its lens elements:
`and properties of its lens elements:
`
`18
`17
`
`Exhibit 2001
`IPR2020-00878
`Page 20 of 82
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2001
`Page 21
`
`
`
`Case Nos. IPR2020-00896
`Case Nos. IPR2020-00878
`U.S. Patent No. 10,317,647
`U.S. Patent No. 10,330,897
`
`
`
`
`
`
`
`(Ex. 1001, ’897 patent, col. 4.)
`(Ex. 1001, ‘647 patent at col. 4.)
`39. The ’897 patent provides examples of lens designs and their corre-
`42. The ‘647 patent provides examples of lens designs and their corre-
`sponding numerical parameters, and it also teaches and claims sets of condi-
`sponding numerical parameters, and it also teaches and claims sets of condi-
`tions and relationships among the parameters that help to make a lens system
`tions and relationships among the parameters that help to make a lens system
`with high performance characteristics. The resulting lens designs are thin and
`with high performance characteristics. The resulting lens designs are thin and
`
`18
`
`19
`
`Exhibit 2001
`IPR2020-00878
`Page 21 of 82
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2001
`Page 22
`
`
`
`Case Nos. IPR2020-00896
`U.S. Patent No. 10,317,647
`
`compact, appropriate for use in mobile devices, and they offer a large focal
`
`length (and thus a large degree of image magnification) for their physical size.
`
`(Ex. 1001, ‘647 patent at 2:6–21.)
`
`43. The lens designs in the ‘647 patent are also manufacturable, meaning
`
`that they have shapes that can be successfully and repeatably manufactured
`
`using the techniques of plastic injection molding that are commonly used for
`
`mobile device camera lenses. The ‘647 patent designs avoid features such as
`
`overly narrow lens edges that make a lens difficult or impossible to manufac-
`
`ture. (Ex. 1001, ‘647 patent at 2:35–50.)
`
`44. One of the parameters of a lens design that is discussed in the ‘647 pa-
`
`tent and claimed in certain claims is the “f-number” or “F#.” The f-number is
`
`a property of a lens that relates to how bright the image formed by the lens is.
`
`A lens that forms brighter images is sometimes referred to as a “faster” lens,
`
`because for a given image sensor (or a given type of film) and focal length,
`
`the minimum amount of time required to capture an image varies inversely
`
`with the brightness of the image. For a single thin lens, the f number is equal
`
`to the focal length of the lens divided by the diameter of the lens:
`
`20
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2001
`Page 23
`
`
`
`the minimum amount of time required to capture an image varies inversely
`
`with the brightness of the image. For a single thin lens, the f number is equal
`Case Nos. IPR2020-00896
`U.S. Patent No. 10,317,647
`to the focal length of the lens divided by the diameter of the lens:
`
`!−#$%&'(=
`
`!
`+,-%'.'(
`
`
`
`
`
`(Walker, Ex. 1016 at 59.)
`
`19
`Exhibit 2001
`45. The diameter of the lens determines how much total light is collected
`IPR2020-00878
`Page 22 of 82
`per unit time by the lens from a given scene. Under certain approximations,
`
`doubling the diameter increases the amount of light collected by a factor of
`
`four. The focal length determines the image size on the sensor and thus deter-
`
`mines the size of the distribution area of the collected light. Doubling the focal
`
`length increases the area illuminated in the image by a factor of four and re-
`
`duces the intensity of the light in any given part of the image by a factor of
`
`four. So, if both the diameter and focal length are doubled, then the effects
`
`approximately cancel out, and the brightness of the image at the sen
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