UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS LTD.,
`Patent Owner
`
`———————
`
`Declaration of José Sasián, PhD
`under 37 C.F.R. § 1.68
`
`Apple v. Corephotonics
`
`i
`
`APPL-1003
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2005
`Page 1
`
`

`

`Sasián Decl.
`
`Inter Partes Review of U.S. 10,324,277
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 4
`I.
`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE ...................... 6
`III. LEVEL OF ORDINARY SKILL IN THE ART ...........................................10
`IV. RELEVANT LEGAL STANDARDS ...........................................................12
`A. Anticipation ............................................................................................12
`B. Obviousness ...........................................................................................13
`V. OVERVIEW OF THE ’277 PATENT ..........................................................14
`A. Summary of the Patent ...........................................................................14
`B. Prosecution History of the ’277 Patent ..................................................18
`VI. CLAIM CONSTRUCTION ..........................................................................20
`VII.
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....21
`A. Claims 1-3 and 5-8 are obvious under AIA 35 U.S.C. § 103 over Ogino
`in view of Bareau ...................................................................................22
`1. Summary of Ogino – (Example 4) .................................................22
`2. Summary of Bareau ........................................................................26
`3. Reasons to combine Ogino and Bareau – (I) .................................28
`4. Detailed Analysis ...........................................................................34
`B. Claims 1-24 are obvious under AIA 35 U.S.C. § 103 over Ogino in
`view of Bareau .......................................................................................61
`1. Summary of Ogino – (Example 5) .................................................61
`2. Reasons to combine Ogino and Bareau – (II) ................................64
`3. Detailed Analysis ...........................................................................70
`VIII. CONCLUSION ............................................................................................111
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`Exhibit 2005
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`IX. APPENDIX ..................................................................................................112
`A. Fig. 1: Ogino Example 4 using Zemax (v. 02/14/2011) ......................112
`1. Fig. 1A – Ray Trace Diagram ......................................................112
`2. Fig. 1B – Relative Illumination ....................................................113
`3. Fig. 1C – Analysis ........................................................................114
`B. Ogino Example 4 modified for F#=2.8 using Zemax (v. 02/14/2011) 115
`1. Fig. 2A – Ray Trace Diagram ......................................................115
`2. Fig. 2B – Relative Illumination ....................................................116
`3. Fig. 2C – Analysis ........................................................................117
`4. Fig. 2D – Prescription Data ..........................................................118
`C. Ogino Example 5 lens assembly using Zemax (v. 02/14/2011) ..........119
`1. Fig. 3A – Ray Trace Diagram ......................................................119
`2. Fig. 3B – Relative Illumination ....................................................120
`3. Fig. 3C – Field Curvature.............................................................121
`D. Ogino Example 5 lens assembly first modification for F#=2.8 using
`Zemax (v. 02/14/2011) ........................................................................122
`1. Fig. 4A – Ray Trace Diagram ......................................................122
`2. Fig. 4B – Relative Illumination ....................................................123
`3. Fig. 4C – Analysis ........................................................................124
`4. Fig. 4D – Prescription Data ..........................................................125
`E. Ogino Example 5 lens assembly second modification for F#=2.8 using
`Zemax (v. 02/14/2011) ........................................................................126
`1. Fig. 5A – Ray Trace Diagram ......................................................126
`2. Fig. 5B – Relative Illumination ....................................................127
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`Inter Partes Review of U.S. 10,324,277
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`3. Fig. 5C – Analysis ........................................................................128
`4. Fig. 5D – Prescription Data ..........................................................129
`
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`Sasián Decl.
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`Inter Partes Review of U.S. 10,324,277
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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. 10,324,277 (“the ’277 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 claims 1-
`
`3, 6-8, 10-15, and 17-24 of the ’277 Patent are unpatentable because they would
`
`have been obvious to a person having 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 1-3, 6-8, 10-15, and 17-24 would
`
`have been obvious to a POSITA.
`
`4.
`
`In the preparation of this declaration, I have reviewed:
`
`• The ’277 Patent, APPL-1001;
`
`• The prosecution history of the ’277 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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`Inter Partes Review of U.S. 10,324,277
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`• 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;
`
`• Bruce J. Walker, OPTICAL ENGINEERING FUNDAMENTALS (1995)
`
`(“Walker”), APPL-1016
`
`• 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;
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`Inter Partes Review of U.S. 10,324,277
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`• U.S. Patent No. 7,321,475 to Wang et al. (“Wang”), APPL-1024;
`
`and
`
`• U.S. Patent No. 8,508,648 to Kubota et al. (“Kubota”), 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 designs, as described below; and
`
`c) The level of skill of a POSITA at the time of the alleged
`
`invention of the ’277 patent.
`
`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.
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`IPR2020-00896
`Exhibit 2005
`Page 7
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`Sasián Decl.
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`Inter Partes Review of U.S. 10,324,277
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`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
`
`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
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`Inter Partes Review of U.S. 10,324,277
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`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, 2019), 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.
`
`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.
`
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`Sasián Decl.
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`Inter Partes Review of U.S. 10,324,277
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`• 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.
`
`• 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.
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`Inter Partes Review of U.S. 10,324,277
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`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, and of the
`
`book “Introduction to lens design,” by Cambridge University Press. I am named as
`
`an inventor on approximately 13 U.S. patents.
`
`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
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`Sasián Decl.
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`Inter Partes Review of U.S. 10,324,277
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`the time the application resulting in the ’277 Patent was filed. I have been informed
`
`by Apple’s counsel that the earliest alleged priority date for the ’277 Patent is July
`
`4, 2013. Based on the technologies disclosed in the ’277 Patent, I believe that a
`
`person having ordinary skill in the art (“POSITA”) would include someone who
`
`had, at the priority date of the ’277 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. In addition, a POSITA would have known how to
`
`use lens design software such as Code V, 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 ’277 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 ’277 Patent.
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`Sasián Decl.
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`Inter Partes Review of U.S. 10,324,277
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`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 ’277 patent.
`
`IV. RELEVANT LEGAL STANDARDS
`
`22.
`
`I understand that prior art to the ’277 patent includes patents and
`
`printed publications in the relevant art that predate the priority date of the alleged
`
`invention recited in the ’277 patent. For purposes of this Declaration, I have been
`
`asked to apply July 4, 2013, the earliest alleged priority date, as the priority date.
`
`23.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ’277 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 post-
`
`AIA 35 U.S.C. § 102(a), or obvious under post-AIA 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
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`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
`
`post-AIA 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
`
`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
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`device (method, or product) ready for improvement to yield predictable results; (e)
`
`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 ’277 PATENT
`Summary of the Patent
`A.
`
`28. The ’277 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 ’277 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.
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`29. According to the Applicant, the lens system in the ’277 patent is
`
`allegedly the answer to the known need for good quality imaging and a small total
`
`track length. See APPL-1001, 1:36-48. The lens system in the ’277 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
`fourth lens element by a fourth air gap, the fifth lens element having a
`thickness d5 on the optical axis.
`
`APPL-1001, 1:54-65. An example of the lens system in the ’277 patent is provided
`
`below:
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`Inter Partes Review of U.S. 10,324,277
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`
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`APPL-1001, Fig. 1A.
`
`30.
`
`In the ’277 patent, all of the embodiments have a TTL to EFL ratio
`
`less than 1.0 and an F number (“F#”) of less than 2.9. APPL-1001, 2:7-12. Other
`
`claimed characteristics include the surfaces of at least some of the lens elements
`
`being aspheric a total track length (TTL) of 6.5 millimeters or less. Id., 2:13-19.
`
`31. As discussed below, none of these characteristics were new. Prior to
`
`July 4, 2013, five element lens assemblies for mobile phones were well known,
`
`including telephoto lenses. See APPL-1005, Fig. 6, 1:52-56; 8:8-25; APPL-1006,
`
`pp. 169-182. For example, Ogino (APPL-1005) teaches similar five lens systems
`
`with a TTL to EFL ratio of less than one. See APPL-1005, Figs. 4, 5, Tables 7, 9.
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`Sasián Decl.
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`Inter Partes Review of U.S. 10,324,277
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`Ogino’s lens system also includes a number of other features including aspheric
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`lens elements and having a TTL of less than 6.5 millimeters. Id.
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`32. A POSITA also would have understood that Ogino renders the ’277
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`Patent obvious because it discloses similar telephoto assemblies that satisfy the
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`relationships of f1<TTL/2, and 1.2×|f3|>|f2|>1.5×f1. While the ’277 Patent
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`emphasize the “features” of a “relatively large distance between” L3 and L4 and
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`the “combined design” of L4 and L5 having “different dispersions” and respective
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`positive and negative powers that “help in minimizing chromatic aberration” (see
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`APPL-1001, 2:51-57), these “features” were already known and used in existing
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`systems for obtaining sharp images.
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`33. Specifically, Ogino discloses these features in its examples, including
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`L4 and L5 combined (and similarly separated by small gap) having opposite
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`refractive powers, and specifically emphasizes the importance of a large gap
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`between L3 and L4. See APPL-1005, 3:16, 12:45-63. Based on these teaching from
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`Ogino, a POSITA would have understood that the ’277 Patent’s claims are not
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`novel, but would have been within the knowledge and skill of a POSITA
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`implementing and experimenting with Ogino’s disclosures. As for any difference
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`that Patent Owner might argue in the sign difference and Abbe number between L4
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`and L5 in Ogino, POSITAs have been long aware of these various ways of
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`implementing this aspect of telephoto lenses. See APPL-1006, pp.170-82.
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`Inter Partes Review of U.S. 10,324,277
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`34.
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`In my opinion, the disclosures provided in Ogino, Bareau, and other
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`prior art discussed below either anticipates or renders obvious each and every
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`element of the claims I have been asked to analyze in the ’277 patent, as discussed
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`below.
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`B.
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`35.
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`Prosecution History of the ’277 Patent
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`I understand that the ’277 patent issued on June 18, 2019 from U.S.
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`Patent Application No. 15/817,235 (“the ’235 application”) filed on November 19,
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`2017. See APPL-1001. The ’277 patent is a continuation of U.S. Patent
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`Application No. 15/418,925 (“the ’925 application”) filed on January 30, 2017 that
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`issued as U.S. Patent No. 9,857,568. See APPL-1001. The ’568 patent appears to
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`be a continuation-in-part of U.S. Patent Application No. 15/170,472 (“the ’472
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`application”) that issued as U.S. Patent No. 9,568,712. See APPL-1001. The ’472
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`application is a continuation of a string of applications that originate from
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`Application No. PCT/IB2014/062465 filed on June 20, 2014, which claims the
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`benefit of Provisional Application No. 61/842,987 filed on July 4, 2013. See
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`APPL-1001.
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`36.
`
`I understand the ’235 application was originally filed with 24 claims
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`with claim 1 being in independent form. APPL-1002, pp.11-14. A preliminary
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`amendment was filed in the ’235 application on June 27, 2018 amending
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`independent claims 1 and 11 to have a total track length of 6.5 millimeters or less
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`including “the lens assembly plus a window positioned between the fifth lens
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`element and an image plane.” Id., pp. 336-337.
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`37. On November 19, 2017, the Applicant filed an Information Disclosure
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`Statement (IDS) listing U.S. Patent Publication No. 2014/0293453 to Ogino et al.
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`(which later issued as U.S. Patent No. 9,128,267 (APPL-1005)). APPL-1002, p.
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`373. There is no indication, however, that the Examiner considered any of the
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`references listed in the IDS, including the Ogino reference, because the IDS was
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`not signed by the Examiner. Id., p.375. This is further evidenced by the Examiner
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`not applying Ogino against any of the claims during prosecution.
`
`38.
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`It appears that in a first Office Action issued on October 22, 2018, the
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`Examiner provisionally rejected claims 1-24 under nonstatutory double patenting
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`as being unpatentable over claims 1-12 of copending U.S. Application No.
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`15/976,422, claims 1-20 of U.S. Patent No. 9,402,032, claim 1 of U.S. Patent No.
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`9,568,712, and claims 1-24 of U.S. Patent No. 9,857,568. Id., pp.497-500. It
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`appears a response to the Office Action with a terminal disclaimer was filed on
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`Nov. 19, 2017. Id., pp.566-581. The Examiner appears to have issued a Notice of
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`Allowance on February 25, 2019 based on this terminal disclaimer. Id., pp.590-
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`597. According to the Examiner, none of the considered prior art disclosed all of
`
`the limitations in the claims. Id., p.595.
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`39. As observed by the prosecution history, the prior art presented that
`
`renders the challenged claims obvious does not appear to have been cited or relied
`
`on by the Examiner and thus was not used as a basis for allowing the claims. See
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`APPL-1002, p.595. Further, although the Ogino reference appears to have been
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`presented to the Examiner in an IDS, there is no evidence that these references
`
`were considered or applied against any of the claims during prosecution. See id.,
`
`p.595. Consequently, it appears that the Examiner did not review the references
`
`listed in the IDS because the Examiner’s signature is missing. See id., p.375.
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`40. As observed from the prosecution history, it appears that the prior art
`
`that I rely on in this declaration was not cited by the Examiner and thus was not
`
`used as a basis for allowing the claims.
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`VI. CLAIM CONSTRUCTION
`
`41.
`
`It is my understanding that in order to properly evaluate the ’277
`
`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
`
`and accustomed meaning as would be understood by one of ordinary skill in the
`
`art, unless the inventor has set forth a special meaning for a term.
`
`42.
`
`I have previously opined on the meaning of two terms, “Effective
`
`Focal Length (EFL)” and “Total Track Length (TTL),” in relation to other patents
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`that share a common specification with the ’277 Patent. See IPR2018-01140, Ex.
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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.”
`
`• 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.”
`
`See IPR2018-01140, Paper 37, pp.10-18. My analysis below relies on these
`
`interpretations which I find to be sufficient for showing how the claims are either
`
`anticipated or rendered obvious.
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`VII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`43.
`
`It is my opinion that claims 1-3 and 5-8, and 10-15, and 17-24 are
`
`obvious over U.S. Patent No. 9,128,267 to Ogino et al. (APPL-1005, “Ogino”), in
`
`view of “The optics of miniature digital camera modules” by Bareau et al. (APPL-
`
`1012, “Bareau”). In particular, claims 1-3 and 5-8 are obvious in view of Example
`
`
`
`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
`
`these patents are members of the same family as the ’277 Patent. Counsel has
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`informed me that these cases are presently appealed on other grounds.
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`Sasián Decl.
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`Inter Partes Review of U.S. 10,324,277
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`4 of Ogino in view of Bareau, and claims 10-15 and 17-24 are obvious in view of
`
`Example 5 of Ogino in view of Bareau.
`
`A. Claims 1-3 and 5-8 are obvious under AIA 35 U.S.C. § 103 over
`Ogino in view of Bareau
`
`Summary of Ogino – (Example 4)
`1.
`44. Similar to the lens system described in the ’277 patent, Ogino
`
`discloses a five-lens system for use in portable devices. See APPL-1005, Abstract,
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`1:6-16. In fact, Ogino’s lens systems is similarly designed for use in portable
`
`devices such as “a digital still camera, a cellular phone with a camera, a mobile
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`information terminal (PDA: Personal