`
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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 No. IPR2020-00878
`U.S. Patent No. 10,330,897
`____________
`
`
`DECLARATION OF TOM D. MILSTER, Ph.D.
`PURSUANT TO 37 C.F.R. § 1.68
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 1
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`
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`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
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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) ....... 9
`V. RELEVANT LEGAL STANDARDS FOR OBVIOUSNESS .. 13
`VI. OVERVIEW OF THE ’897 PATENT .................................... 16
`VII. CLAIM CONSTRUCTION ................................................... 22
`VIII. PRIOR ART REFERENCES ................................................ 23
`A. Ogino ............................................................................................. 23
`B.
`Bareau ........................................................................................... 28
`C.
`Kingslake ...................................................................................... 31
`D.
`Chen .............................................................................................. 32
`E.
`Iwasaki .......................................................................................... 35
`F.
`Beich ............................................................................................. 35
`IX. OBVIOUSNESS .................................................................. 36
`A. Ground 2 – Obviousness of Claims 2, 5, 6, 18, and 21–23 over
`Ogino in view of Bareau ............................................................... 36
`B.
`view of Bareau and Kingslake ...................................................... 61
`
`Ground 3 – Obviousness of Claims 3, 8, 19, and 24 over Ogino in
`
`i
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`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 2
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`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
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`Ground 4 – Obviousness of Claims 16 and 30 over Chen in view of
`
`C.
`Iwasaki and Beich ......................................................................... 68
`X. DECLARATION .................................................................. 72
`XI. APPENDIX ......................................................................... 73
`A. Ogino Example 5 modified for f-number 2.8 ............................... 73
`B. Modified Chen Example 1 ............................................................ 76
`
`
`
`ii
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`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 3
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`
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`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
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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 10,330,897 (“’897
`
`patent”) in Case No. IPR2020-00878 and the accompanying Declaration of
`
`Jose Sasián.
`
`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
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`also being reimbursed for reasonable and customary expenses associated with
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`my work and testimony in this investigation. My compensation is not contin-
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`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:
`
`• The ’897 patent (Ex. 1001)
`
`1
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`APPLE V. COREPHOTONICS
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`Exhibit 2009
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`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
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`• The file history of the ’897 patent (Ex. 1002)
`
`• Apple’s petition for inter partes review (Paper 2)
`
`• The Board’s institution decision (Paper 7)
`
`• The expert declaration of Jose Sasián (Ex. 1003)
`
`• Prof. Sasián’s curriculum vitae (Ex. 1004)
`
`• U.S. Patent No. 9,128,267 (“Ogino”) (Ex. 1005)
`
`• W. Smith, Modern Lens Design (1992) (Ex. 1006)
`
`• W. Beich and N. Turner, “Polymer Optics: A manufacturer’s perspective
`on the factors that contribute to successful programs” (Ex. 1007)
`
`• U.S. Patent No. 7,777,972 (“Chen ’972”) (Ex. 1008)
`
`• U.S. Patent No. 9,678,310 (“Iwasaki”) (Ex. 1009)
`
`• M. Born and E. Wolf, Principles of Optics (1980) (Ex. 1010)
`
`• The file history of the Ogino patent (Ex. 1011)
`
`• J. Bareau and P. Clark, “The Optics of Miniature Digital Camera Mod-
`ules” (Ex. 1012)
`
`• R. Kingslake, Optics in Photography (1992) (Ex. 1013)
`
`• U.S. Patent No. 7,859,588 (“Parulski”) (Ex. 1014)
`
`• English translation of Japanese patent application JP2013106289A
`(“Konno”) (Ex. 1015)
`
`• B. Walker, Optical Engineering Fundametals (1995) (Ex. 1016)
`
`2
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`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 5
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`
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`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
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`• R. Fischer, et al., Optical Ssytem Design (2008) (Ex. 1017)
`
`• A. Symmons and M. Schaub, Field Guide to Molded Optics (2016) (Exs.
`1018 and 2006)
`
`• Handbook of Optics, 2nd ed., vol. 2 (1995) (Exs.1019 and 2008)
`
`• U.S. Patent No. 10,324,273 (“Chen”) (Ex. 1020)
`
`• U.S. Patent No. 9,857,568 (Ex. 1021)
`
`• U.S. Patent No. 9,568,712 (Ex. 1022)
`
`• Deposition transcript of Prof. Duncan Moore (Ex. 1023)
`
`• U.S. Patent No. 7,321,475 (“Wang”) (Ex. 1024)
`
`• G. Hollows and S. Singer, “Matching Lenses and Sensors” (Ex. 1025)
`
`• The file history of U.S. Patent No. 9,678,310 (Ex. 1026)
`
`• Deposition transcript of Prof. Sasián, January 22, 2021 (Ex. 2003)
`
`• J. Sasián, Introduction to Lens Design (2019) (Ex. 2004)
`
`• P. Clark, “Mobile platform optical design” (Ex. 2005)
`
`• G. Beall, “By Design: Part design 106 – Corner radiuses,” Plastics Today
`(Ex. 2007)
`
`• Declaration of J. Sasián in IPR2019-00030 (Ex. 2009)
`
`5.
`
`In forming the opinions set forth herein, I have considered:
`
`a. The documents listed above;
`
`3
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`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 6
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`
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`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
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`b. My education, knowledge, skills, and experience in the design and devel-
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`opment of imaging systems; and
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`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 ’897 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 claims 2, 3,
`
`5, 6, 8, 16, 18, 19, 21–24, 30 of the ’897 patent were obvious, under any of
`
`the grounds that Apple has raised. I express no opinion concerning Apple’s
`
`contention that claims 1, 4, 9–15, 17, 20, and 25–29 are anticipated by the
`
`Ogino patent.
`
`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 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 Uni-
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`versity of Arizona’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
`
`4
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`IPR2020-00896
`Exhibit 2009
`Page 7
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`
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`Case Nos. IPR2020-00878
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`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
`
`devices 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
`
`optics.1 My 1997 paper entitled “Objective lens design for multiple-layer op-
`
`tical data storage” was selected as one of the 300 most influential papers in
`
`lens design.2 A recent paper entitled “Multiple-order diffractive engineered
`
`surface lenses” has been on the Applied Optics ‘Top Downloads’ list for the
`
`last three consecutive months.3
`
`10.
`
`I am a named inventor on fifteen US patents concerning various
`
`advanced 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,
`
`
`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.
`2 Milster, T. D., Upton, R. S., & Luo, H. (1999). Objective lens design for
`multiple-layer optical data storage. Optical Engineering, 38, 295-301.
`3 Milster, T. D., Kim, Y. S., Wang, Z., & Purvin, K. (2020). Multiple-order
`diffractive engineered surface lenses. Applied optics, 59(26), 7900-7906.
`
`5
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`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 8
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`
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`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
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`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, includ-
`
`ing one chapter entitled “Miniature and Micro Optics,” which has been pub-
`
`lished 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 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 re-
`
`ceived working for IBM and my first several years working as faculty at the
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`University of Arizona.
`
`12. One significant accomplishment I have achieved through my re-
`
`search is breaking the “diffraction barrier” by applying the techniques of near-
`
`field scanning optical microscopy (NSOM),4 developing specialized near-
`
`
`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; Froehlich, F. F., & Milster, T. D. (1995). Detection of
`
`6
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`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 9
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`Case Nos. IPR2020-00878
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`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-performance miniature optical systems.7 In these projects, my students
`
`and I applied a mixture of theory, optical design and fabrication techniques to
`
`produce real examples of the miniature and micro-optical lenses that we en-
`
`visioned. One of my recent conference presentations entitled “Practical meas-
`
`urement of cell-phone camera focal length,” specifically addresses the
`
`properties of modern cell-phone camera lenses.8
`
`
`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 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.
`
`7
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`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 10
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`
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`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
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`13. One of my current projects is directly related to molding optical
`
`elements. 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 com-
`
`plete process for molding glass structures with micrometer-size structures and
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`extremely high quality. Although not mentioned in the publication, we also
`
`worked on molding plastic lens structures. This experience relates directly to
`
`the fabrication 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
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`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 Med-
`
`ical Systems, Inc. and Laserscope v. Laser Peripherals, LLC, Civil Action No.
`
`
`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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`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 11
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`
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`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
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`08-CV-4798, United States District Court for the District of Minnesota; Amer-
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`ican Medical Systems, Inc. and Laserscope v. Biolitec, Inc., Biolitec AG, Bio-
`
`litec SIA, Ceramoptec Industries, Inc., Ceramoptec GmbH and Andaoptec,
`
`LTD, Civil Action No. 3:08-CV-30061-MAP, United States District Court for
`
`the District of Massachusetts, as well in an arbitration matter between Core-
`
`photonics Ltd. and Ningbo Sunny Opotech Co., Ltd., Case No.
`
`HKIAC/A19025.
`
`16. A copy of my CV further describing my experience is attached
`
`as exhibit 2002.
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART (POSITA)
`
`17.
`
`I understand that in evaluating the validity of the ’897 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 claims.
`
`18.
`
`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)
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`9
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`APPLE V. COREPHOTONICS
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`Case Nos. IPR2020-00878
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`rapidity with which innovations are made; (5) sophistication of the technol-
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`ogy; and (6) educational level of active workers in the field.
`
`19.
`
`In his declaration, Dr. Sasián offers his opinion that a person having
`
`ordinary skill in the art (“POSITA”):
`
`would include someone who had, at the priority date of the ’897
`Patent, (i) a Bachelor’s degree in Physics, Optical Sciences, or
`equivalent training, as well as (ii) approximately three years of
`experience in designing multi-lens optical systems. Such a per-
`son would have had experience in analyzing, tolerancing, ad-
`justing, and optimizing multi-lens systems for manufacturing,
`and would have been familiar with the specifications of lens
`systems and their fabrication. In addition, a POSITA 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.
`
`(Ex. 1003, Sasián Decl., ¶¶ 19–20.) I have applied the same definition of a
`
`POSITA in this declaration.
`
`20. As noted above, the level of ordinary skill is assessed as of the effective
`
`filing date. I understand that this effective filing data may be different for dif-
`
`ferent claims within a patent. I understand that the ’897 patent claims priority
`
`by a series of continuations to an application that was filed on January 30,
`
`2017 and issued as U.S. Patent No. 9,857,568. (Ex. 1001, ’897 patent at 1:5–
`
`10
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`Case Nos. IPR2020-00878
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`10.) I understand that this means that the material disclosed in the specifica-
`
`tion of the ’897 patent was also contained in the January 30, 2017 patent ap-
`
`plication that led to the ’568 patent.
`
`21.
`
`I understand that the ’897 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, ’897 patent at 1:5–12.) I understand that
`
`this means that portions of the ’897 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.
`
`22.
`
`I understand that a claim of the ’897 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.
`
`23.
`
`In his declaration, Dr. Sasián appears to assume that the relevant effec-
`
`tive filing date for assessing the level of skill in the art is July 4, 2013. (Ex.
`
`1003, Sasián Decl., ¶¶ 18–21.) The only claims that Dr. Sasián contends have
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`11
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`a January 30, 2017 priority date are claims 16 and 30. (Ex. 1003, Sasián Decl.,
`
`¶ 33.)10 For these reasons, I understand that Apple and Dr. Sasián do not dis-
`
`pute that the challenged claims other than claims 16 and 30 have an effective
`
`filing date of July 4, 2013. For the purposes of evaluating the level of skill in
`
`the art, I have considered the level of skill in the art as of January 30, 2017 for
`
`claims 16 and 30, and as of July 4, 2013 for the other challenged claims. Un-
`
`less I specifically note otherwise, I do not believe that any of my opinions
`
`would change if I had assumed a July 4, 2013 date for claims 16 and 30 or a
`
`January 30, 2017 for any of the other claims.
`
`24.
`
`I would have met the requirements of a POSITA on July 4, 2013 as well
`
`as on January 30, 2017. Some of my past students would also have qualified
`
`as POSITAs on these dates. Thus I am qualified to opine on the issues in this
`
`IPR.
`
`
`10 At the end of this paragraph, Dr. Sasián refers to “the priority date of
`claims 7 and 12” rather than 16 and 30, but I understand this to be a typo-
`graphical error. Claim 7 is not challenged in the IPR, and none of the dis-
`cussion of the paragraph applies to claim 7 or 12.
`
`12
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`Case Nos. IPR2020-00878
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`V. RELEVANT LEGAL STANDARDS FOR OBVIOUSNESS
`
`25.
`
`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.
`
`26.
`
`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.
`
`27.
`
`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.
`
`28.
`
`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
`
`comparison of the properly construed claim language to the prior art on a lim-
`
`itation-by-limitation basis.
`
`29.
`
`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
`
`13
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`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.
`
`30.
`
`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).
`
`31.
`
`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
`
`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.
`
`32.
`
`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
`
`14
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 17
`
`
`
`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
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`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.
`
`33.
`
`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.
`
`34.
`
`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.
`
`15
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 18
`
`
`
`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
`
`35.
`
`I understand that, in this proceeding, prior art to the ’897 patent includes
`
`patents and printed publications in the relevant art that predate the effective
`
`filing date of the ’897 patent’s challenged claims, which I understand to be
`
`January 30, 2017 for claims 16 and 30 and July 4, 2013 for the other chal-
`
`lenged claims, as discussed above.
`
`VI. OVERVIEW OF THE ’897 PATENT
`
`36. The ’897 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, ’897 patent at 1:26–30.) The example designs
`
`shown in the ’897 patent utilize five plastic lens elements, each having a com-
`
`plex aspheric shape:
`
`16
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 19
`
`
`
`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
`
`
`
`37. The use of these multiple lens elements with aspheric shapes makes
`
`possible a lens that produces a high-quality image, by minimizing chromatic
`
`aberrations and other optical aberrations that would blur or distort the image.
`
`(Ex. 1001, ’897 patent at 2:22–34, 2:51–57.)
`
`38. 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
`
`requires several dozen numerical parameters to define the shapes, locations,
`
`and properties of its lens elements:
`
`17
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 20
`
`
`
`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
`
`
`
`
`
`(Ex. 1001, ’897 patent, col. 4.)
`
`39. The ’897 patent provides examples of lens designs and their corre-
`
`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
`
`with high performance characteristics. The resulting lens designs are thin and
`
`18
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 21
`
`
`
`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
`
`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, ’897 patent at 2:6–21.)
`
`40. The lens designs in the ’897 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 ’897 patent designs avoid features such as
`
`overly narrow lens edges that make a lens difficult or impossible to manufac-
`
`ture. (Ex. 1001, ’897 patent at 2:35–50.)
`
`41. One of the parameters of a lens design that is discussed in the ’897 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:
`
`𝑓−𝑛𝑢𝑚𝑏𝑒𝑟=
`
`𝑓
`𝑑𝑖𝑎𝑚𝑒𝑡𝑒𝑟
`
`
`
`19
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 22
`
`
`
`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
`
`(Walker, Ex. 1016 at 59.)
`
`42. The diameter of the lens determines how much total light is collected
`
`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 sensor is left
`
`unchanged, although the image is larger. In other words, it is the ratio of the
`
`focal length and the diameter that most strongly effects the image brightness.
`
`43. Because the diameter is in the denominator, a smaller f-number corre-
`
`sponds to a brighter image for a fixed focal length. In more complicated lens
`
`systems with multiple lens elements, such as those at issue in this IPR, the
`
`amount of light collected no longer depends on the diameter of a single lens
`
`(or of a single lens surface), and the effective focal length (EFL) is a function
`
`of the lens elements and their spacings. One definition of f number for such
`
`20
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 23
`
`
`
`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
`
`systems instead uses the diameter of the “entrance pupil” (EPD), meaning that
`
`the formula is changed to:
`
`
`
`(Ex. 1003, Sasián Decl. at 58–39.)
`
`44. The concept of the “entrance pupil” is illustrated in the following draw-
`
`ing from Figure 4-2 of Walker:
`
`
`
`(Ex. 1016, Walker, p. 61.)
`
`45. As shown here, the entrance pupil reflects the size of the bundle of rays
`
`parallel to the optical axis of the lens that can enter the lens, travel through the
`
`aperture stop, and reach the image plane. Explained another way, the entrance
`
`21
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 24
`
`
`
`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
`
`pupil “is the image of the aperture stop as seen when looking from the object
`
`side of the lens.” (Ex. 1016, Walker, p. 60.)
`
`VII. CLAIM CONSTRUCTION
`
`46. Dr. Sasián’s declaration states (Ex. 1003, Sasián Decl., ¶¶ 38–39) that
`
`he applies two claim constructions for terms that the Board has previously
`
`construed in IPRs concerning U.S. Patent No. 9,402,032 and 9,568,712, pa-
`
`tents to which the ’897 patent claims priority:
`
`Effective Focal Length (EFL): “the focal length of a lens as-
`sembly.”
`
`Total Track Length (TTL): “the length of the optical axis spac-
`ing 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.”
`
`IPR2018-01140, Paper 37 at 10–18.
`
`47.
`
`I understand that the Board also adopted these same constructions in
`
`IPR2019-00030 concerning the ’568 patent, which as I discussed above con-
`
`tains the same specification as the ’897 patent. IPR2019-00030, Paper 32 at
`
`8, 14–15.
`
`48.
`
`I have applied these constructions for the terms “Effective Focal
`
`Length” (EFL) and “Total Track Length” (TTL) in the ’897 patent claims. For
`
`all other terms, I have interpreted them based upon their plain and ordinary
`
`22
`
`APPLE V. COREPHOTONICS
`IPR2020-00896
`Exhibit 2009
`Page 25
`
`
`
`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
`
`meaning, as they would have been understood by a POSITA, as of the effec-
`
`tive filing date, in the context of the ’897 patent.
`
`VIII. PRIOR ART REFERENCES
`
`A. Ogino
`
`49. Ogino issued on September 8, 2015 as U.S. Patent No. 9, 128,267. (Ex.
`
`2015.) Apple contends that Ogino has an effective filing date of March 29,
`
`2013, based upon the filing date of the corresponding Japanese patent appli-
`
`cation. (Petition at 9.)
`
`50. As described in Ogino’s abstract, its invention is a system of five lenses
`
`with a particular set of shapes:
`
`An imaging lens substantially consists of, in order from an ob-
`ject side, five lenses of a first lens that has a positive refractive
`power and has a meniscus shape which is convex toward the
`object side, a second lens that has a biconcave
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