`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`
`
`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
`in Support of Petitioner Reply
`
`
`
`
`
` Apple v. Corephotonics
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 4
`I.
`CLAIMS 1-3 AND 5 ARE OBVIOUS OVER IWASAKI’S EX. 4
`II.
`EMBODIMENT. ........................................................................................................ 5
`III. CLAIMS 1 AND 4 ARE OBVIOUS OVER OGINO’S EX. 5
`EMBODIMENT IN VIEW OF BAREAU. ............................................................... 5
`A. A POSITA would have been motivated to modify the L2 lens of
`Ogino’s Ex. 5 based on the teachings of Chen II. ................................... 5
`B. A POSITA would have used the same well-known techniques to
`generate the modified Ogino Ex. 5 lens as discussed in my Declaration.
` .................................................................................................................. 9
`C. Manufacturing considerations are not required by claims 1 and 4 of the
`’647 patent nor can they be imported into the claims............................11
`1. Dr. Milster seeks to import manufacturing requirements into the
`’647 claims where there are none. ...................................................................11
`2. Dr. Milster’s arguments contradict earlier statements in a related
`case that lens design is separate from manufacturing. .....................................13
`3. The modified Example 5 lens would be suitable for applications
`outside of large-scale manufacturing. ..............................................................15
`4. Manufacturing considerations are preferences, and do not show that
`lenses cannot be physically produced. .............................................................16
`5. Whether a prior art lens design is “finished” is not relevant to the
`claims of the ’647 patent. .................................................................................17
`D. Dr. Mister’s arguments about differences in relative illumination plots
`of the Ex. 5 lens are irrelevant. ..............................................................19
`IV. CLAIMS 2, 3, 5, AND 8-11 ARE OBVIOUS OVER OGINO’S EXAMPLE
`5 EMBODIMENT IN VIEW OF CHEN II AND BAREAU. .................................22
`A. A POSITA would have been motivated to modify Ogino’s Ex. 5 lens as
`discussed in my Declaration. .................................................................22
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`B. A POSITA would have used the same techniques to generate the first
`and second modified Ex. 5 lens designs as discussed in my Declaration
` ................................................................................................................23
`C. The modified Ex. 5 lens assemblies do not include overlapping lenses.
` ................................................................................................................24
`D. Manufacturing considerations are not required by claims 2, 3, 5, and 8-
`11 of the ’647 patent nor can they be imported into the claims. ...........27
`CLAIM 6 IS OBVIOUS OVER OGINO’S EXAMPLE 5 EMBODIMENT
`V.
`IN VIEW OF CHEN II, BAREAU, AND KINGSLAKE. ......................................28
`A. A POSITA would have been motivated to modify Ogino’s Ex. 5 lens as
`discussed in my Declaration. .................................................................28
`B. The third modified Ex. 5 lens assembly does not include overlapping
`lenses. .....................................................................................................31
`C. Manufacturing considerations are not required by claim 6 of the ’647
`patent nor can they be imported into the claims. ...................................33
`D. The claims of the ’647 patent do not include relative illumination
`requirements. ..........................................................................................34
`E. Manufacturing considerations such as tolerances and desensitization are
`not required by claim 7 of the ’647 patent. ............................................35
`F. The combination of Hsieh and Beich does not require modifications to
`meet the limitations of claim 7 of the ’647 patent. ................................35
`VI. CLAIM 12 IS OBVIOUS OVER CHEN, IWASAKI, AND BEICH. ..........36
`A. The combination of Chen, Iwasaki, and Beich teaches all of the
`limitations of claim 12 as well as claim 8, from which claim 12
`depends. .................................................................................................36
`VII. CONCLUSION ..............................................................................................41
`VIII. APPENDIX ....................................................................................................42
`
`
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`
`I, José Sasián, Ph.D., declare as follows:
`Introduction
`I.
`
`1.
`
`I am the José Sasián who has previously submitted a declaration as
`
`APPL-1003 in this proceeding. The terms of my engagement, my background,
`
`qualifications and prior testimony, and the legal standards and claim constructions
`
`I am applying are set forth in my previous CV and declaration. See APPL-1003;
`
`APPL-1004. I offer this declaration in reply to Dr. Milster’s declaration filed in
`
`this proceeding as Exhibit 2001. In forming my opinion, I have considered the
`
`materials noted in my previous declaration, as well as the following additional
`
`materials:
`
`• APPL-1028 – Deposition Transcript of Tom Milster, Ph.D.
`
`• APPL-1029 – IPR 2019-00030, Paper 21
`
`• APPL-1030 – IPR 2019-00030, Ex. 2005
`
`• APPL-1038 – H. M. Leung et al., “Diamond turning and soft lithography
`
`processes for liquid tunable lenses” 20 J. Michomechanics Microengineering
`
`1 (Jan. 18, 2010)
`
`• APPL-1039 – Sebastian Scheiding et al., “Diamond milling or turning for
`
`the fabrication of micro lens arrays: comparing different diamond machining
`
`technologies” Proc. SPIE 7927, Advanced Fabrication Technologies for
`
`Micro/Nano Optics and Photonics IV, 79270N (14 February 2011)
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`• APPL-1040 – Sandy Suet To et al., Materials Characterisation and
`
`Mechanism of Micro-Cutting in Ultra-Precision Diamond Turning (2018)
`
`II. Claims 1-3 and 5 are obvious over Iwasaki’s Ex. 4 embodiment.
`
`2.
`
`Dr. Milster does not dispute that Iwasaki’s Example 4 embodiment
`
`renders obvious claims 1-3 and 5.
`
`III. Claims 1 and 4 are obvious over Ogino’s Ex. 5 embodiment in view of
`Bareau.
`
`A. A POSITA would have been motivated to modify the L2 lens of
`Ogino’s Ex. 5 based on the teachings of Chen II.
`
`3.
`
`As discussed in my previous Declaration, it is my opinion that a
`
`POSITA would have been motivated to modify Ogino’s Example 5 lens system to
`
`have a meniscus second lens (as taught by Chen II) to decrease vignetting due to
`
`total internal reflection and ray aberration. Petition, pp.26-37, APPL-1003, ¶¶55-
`
`68. As established in my Declaration, a POSITA would have been motivated to
`
`make these modifications using techniques within his or her skill level. See id. Dr.
`
`Milster challenges this argument by claiming that the meniscus shape of Chen II’s
`
`second lens “has nothing to do with vignetting” and instead is due to different
`
`aspheric shapes. Ex. 2001, ¶87.
`
`4.
`
`This issue has been extensively addressed by the parties in IPR 2018-
`
`01140. Petition, p.36. In that case, I testified that it would have been obvious for a
`
`POSITA to combine the teaching of Chen II using a meniscus L2 lens with
`
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`Ogino’s Example 6 embodiment. See IPR2018-01140, Paper 37, pp.32-38. Since
`
`all of Ogino’s embodiments use a biconcave second lens and, as shown above,
`
`modifying Example 5 to have a meniscus L2 lens would provide the same benefits
`
`as previously shown for Example 6, it was also obvious for a POSITA to combine
`
`Ogino and Chen II as established above. As discussed in the Petition, a POSITA
`
`would have recognized from the ray trace of Chen’s Fig. 1 that the L2 lens does
`
`not employ vignetting, as shown below. Petition, pp.31-32; APPL-1009, Fig. 1.
`
`Petition, p.32; APPL-1009, Fig. 1 (annotated). Thus, even without a written
`
`explanation of vignetting in Chen II’s specification, the difference in vignetting
`
`
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`between the second lenses of Ogino’s Example 5 and Chen II’s Example 1 would
`
`have been apparent to a POSITA.
`
`5.
`
`Additionally, a POSITA would have understood that changing the
`
`radius of the object-side surface of Ogino’s L2 lens from negative to positive (even
`
`without changing the aspherics) would reduce vignetting, as shown in the
`
`comparison below. Appendix, Figs. 1A, 1B. This comparison shows the original
`
`Example 5 lens with an object-side radius of -18.78836 mm and a modified
`
`Example 5 lens with an object-side radius of +18.78836 mm, with no changes to
`
`the aspheric coefficients. Appendix, Fig. 1A.
`
`R1/L2 = -18.78836 (Original)
`
`R1/L2 = +18.78836 (Modified)
`
`
`
`
`
`Appendix, Figs. 1A, 1B
`
`6.
`
`Notwithstanding the subtle change in shape between the two lenses,
`
`the modified lens has reduced vignetting (the original lens shows five rays that are
`
`vignetted by total internal refraction and the modified lens shows only four rays
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`vignetted). Appendix, Figs. 1A, 1B. The change of sign in the radius increases the
`
`curvature of the surface making rays to refract more, decreasing the angle of
`
`incidence on the second surface, and thereby decreasing vignetting by total internal
`
`refraction at the second surface of lens L2. Thus, a POSITA would have
`
`understood that vignetting could be reduced in Ogino’s Example 5 lens by
`
`changing the L2 lens to have a meniscus shape as taught by Chen II, which would
`
`provide improved relative illumination. APPL-1003, ¶68.
`
`7.
`
` Dr. Milster also argues that “a POSITA starting with Ogino Example
`
`5 would simply set more surfaces to vary in order to improve performance without
`
`significant vignetting” and presents his own modified Example 5 lens that does not
`
`meet the limitations of claim 1. Ex. 2001, ¶91. However, as discussed previously,
`
`the modified lenses presented in my previous Declaration are examples of
`
`“possible lens designs” that a POSITA would have designed to improve Ogino’s
`
`lenses, or that a POSITA would have arrived at in the process of adjusting Ogino’s
`
`lenses. APPL-1003, ¶¶79, 88. Dr. Milster’s arguments that a POSITA could have
`
`designed alternative modified lenses that do not meet all the limitations of claim 1
`
`does not impact the process for designing modified lenses that do meet all the
`
`limitations of claim 1, such as the modified Example 5 lens discussed with
`
`reference to claims 1 and 4. See APPL-1003, ¶¶55-68. Further, Dr. Milster does
`
`not provide any evidence that “a POSITA starting with Ogino Example 5 would
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`simply set more surfaces to vary in in order to improve performance without
`
`significant vignetting” instead of changing the radius of curvature of the second
`
`lens. Ex. 2001, ¶91. In fact, Dr. Milster’s arguments that a POSITA would have
`
`designed alternative lenses further strengthens Petitioner’s arguments that a
`
`POSITA would have been motivated to improve Ogino’s Example 5 lens, and
`
`would have had the requisite skills to do so.
`
`B. A POSITA would have used the same well-known techniques to
`generate the modified Ogino Ex. 5 lens as discussed in my
`Declaration.
`
`8.
`
`Dr. Milster appears to take issue with the minimal nature of changes
`
`made to Ogino’s Example 5 lens as compared to the original Example 5 lens. Ex.
`
`2001, ¶¶109-110. In particular, Dr. Milster points out that the spaces between lens
`
`elements in the modified Example 5 lens “are identical to those found in the
`
`unmodified Example 5 of Ogino.” Id., ¶110. Dr. Milster argues that instead of
`
`keeping these spaces constant, “a POSITA would have allowed the inputs of radii
`
`of the lenses, spacings between lens surfaces and the conic coefficients to vary”
`
`because “[t]his would permit better performance to be obtained during the design
`
`process.” Id., ¶109. However, Dr. Milster does not provide any example of how the
`
`modified Example 5 lens design could have been improved by varying spacing
`
`between lens surfaces, instead relying on the bare assertion that prohibiting the lens
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`spacings to vary “would have almost certainly prevented a POSITA from finding
`
`the best performance result.” Id., ¶110.
`
`9.
`
`Keeping certain variables constant, such as spacing between lenses,
`
`while varying other parameters, is precisely the approach a POSITA would have
`
`taken. See APPL-1017, p.168 (stating that after entering the lens design to be
`
`improved into a design computer program, “each variable is changed a small
`
`amount, called an increment, and the effect to performance is then computed”). Dr.
`
`Milster testified that he took a similar gradual “step-wise process” in modifying
`
`lenses. APPL-1028, 21:6-18. This is also the same process that Patent Owner’s
`
`expert Dr. Moore described when he was deposed in earlier, related proceedings
`
`involving patents in the same family. APPL-1023, 99:6-18 (stating that variables in
`
`a lens design are changed “gradually” and a POSITA would check optical
`
`performance between steps).
`
`10. To that end, a POSITA would have looked to modify Ogino’s
`
`Example 5 lens assembly with as few changes to the original design as possible to
`
`maintain Ogino’s lens structure. By following well-understood steps for improving
`
`a lens design such as changing the shape of the second lens to be meniscus
`
`according to the teachings of Chen II, a POSITA would have discovered that this
`
`design objective could be achieved with minimal changes to the structure of the
`
`lens, as shown by the modified Example 5 lens. See APPL-1003, p.143.
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`
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`APPL-1003, p.143.
`
`11. As discussed above, the modified Example 5 lens is only one example
`
`of a lens that a POSITA would have designed, or arrived at, in an effort to improve
`
`Ogino’s lenses. APPL-1003, ¶¶79, 88. The fact that other designs would have also
`
`been produced (including some with more changes) does not mean that a POSITA
`
`would not have also produced the modified Example 5 design.
`
`C. Manufacturing considerations are not required by claims 1 and 4
`of the ’647 patent nor can they be imported into the claims.
`
`1.
`
`Dr. Milster seeks to import manufacturing requirements into
`the ’647 claims where there are none.
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`12. Dr. Milster presents arguments about the alleged “manufacturability”
`
`of the modified Example 5 lens. See Ex. 2001, ¶¶92-98, 105-108. Dr. Milster does
`
`not define what “manufacturing” means in terms of the claims but seems to rely on
`
`an implicit requirement of large-scale injection plastic molding. Id.; APPL-1028,
`
`173:18-23 (Dr. Milster stating “[i]f it’s to produce a lens that is going to be
`
`replicated a million times a month, then, absolutely the POSITA’s job is to make a
`
`manufacturable lens. And that’s the situation here with mobile cell phone lenses.”).
`
`Dr. Milster then argues that these large-scale manufacturing considerations—
`
`tolerances, oversizing, and desensitization—should be required of the modified
`
`lens designs presented in the Declaration. See Ex. 2001, ¶¶92-98.
`
`13. However, claims 1 and 4 of the ’647 patent do not recite any
`
`manufacturing requirements. Even Dr. Milster agrees:
`
`Q. Let’s look at the claims of the '647. And thank you for
`your patience. I know I’m asking you to do a lot of reading.
`Those claims start on column 8 of that patent as well.
`
`A. (Witness reviewing document). There are two places
`that I found in claim 7 and claim 12 of column 10.
`
`Q. And both claims 7 and 12 correctly reference the
`center-to-edge thickness ratio that we’ve been talking
`about, right?
`
`A. Yes.
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`Q. Any references to other manufacturing criteria other
`than center-to-edge thickness ratio in the claims of the
`'647?
`
`A. No.
`
`APPL-1028, 91:5-22.
`14. The only manufacturing consideration that Dr. Milster identified in
`
`the specification of the ’647 patent was the center-to-edge thickness ratio. See id.
`
`However, as discussed above and admitted by Dr. Milster, the center-to-edge
`
`thickness ratio does not appear in claims 1 and 4. Id.
`
`15. Thus, even based on Dr. Milster’s opinion, it is clear that claims 1 and
`
`4 of the ’647 patent do not include any manufacturing requirements. Id. It is my
`
`understanding that it is improper to import limitations into a claim that are not
`
`already in the claim.
`
`2.
`
`Dr. Milster’s arguments contradict earlier statements in a
`related case that lens design is separate from manufacturing.
`16. Dr. Milster’s arguments that the modified Example 5 design would be
`
`rejected on the basis of manufacturing considerations contradicts previous
`
`arguments that lens design is separate from lens manufacturing. For example, I was
`
`informed that in IPR 2019-00030 regarding the ’568 patent (the parent of the ’647
`
`patent), Patent Owner argued:
`
`And more fundamentally, a POSITA with the appropriate
`education and experience would not—as a lens designer
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`and not a manufacturer—have had the motivation nor the
`requisite knowledge to combine the manufacturing and
`material science teachings of Beich with the lens system
`of Ogino.
`
`APPL-1029, p.4 (emphasis original).
`
`17. Dr. Moore (Patent Owner’s expert in IPR2019-00030) also directly
`
`contradicted the opinion of Dr. Milster in this proceeding that manufacturing
`
`considerations would be an integral part of the lens design process:
`
`As I discussed herein in Section IV, the work of lens
`designers was in 2013 and still is today, separate and
`distinct from the manufacturing of lenses themselves. The
`design and manufacture of lens systems each requires
`specialized knowledge, education, and experience in
`different fields. In fact, the persistent and pervasive
`disjoint between lens designers and lens manufacture in
`the industry is noted by Beich itself ... engineers on lens
`design teams do not know, and do not care, about the
`special manufacturing concerns that crop up during the
`production of polymer lens designs.
`
`APPL-1030, p.56 (emphasis added).
`
`18.
`
`I was therefore informed that although Patent Owner’s expert argued
`
`in a related case that lens manufacturing and lens design are two completely
`
`separate considerations for a POSITA, Dr. Milster now argues that any prior art
`
`lens designs would be rejected based solely on what were previously argued to be
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`irrelevant manufacturing considerations. See Ex. 2001, ¶¶92-98, 105-108. Thus, in
`
`my opinion, Patent Owner’s expert’s arguments appear conclusory and thus should
`
`carry no weight. A POSITA may be motivated to modify a lens design to meet a
`
`particular manufacturing requirement pertinent to a particular design, but a
`
`POSITA would not wholly reject a design because it did not meet some
`
`manufacturing considerations, which Dr. Milster has not even shown would be
`
`relevant for a particular design.
`
`3.
`
`The modified Example 5 lens would be suitable for
`applications outside of large-scale manufacturing.
`
`19. Dr. Milster’s arguments that the modified lenses in my Declaration be
`
`rejected for not meeting strict manufacturing requirements (such as those for mass-
`
`produced lenses) ignore that a POSITA can design lenses for other applications.
`
`See Ex. 2001, ¶¶92-98. As discussed above, claims 1 and 4 of the ’647 patent do
`
`not include any requirements for mass production manufacturing. See APPL-1028,
`
`91:5-22. Parameter changes that a POSITA could have used to modify Ogino
`
`would therefore not have been subject to the rigorous design requirements of mass-
`
`produced injection molding as Dr. Milster argues. Id. Rather, a POSITA could
`
`have been motivated to design a lens for other purposes like limited manufacturing
`
`or experimental research. Further, whether a lens design can be made depends
`
`strongly on application and manufacturing technology.
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`20. Dr. Milster agrees that applications for useful lens designs exist
`
`outside of large-scale manufacturing: “[a]nd so your question was does a POSITA
`
`ever design a lens other than manufacturing and my answer to that is yes.” APPL-
`
`1028, 173:9-11. An “international lens design conference” is one such non-
`
`manufacturing application that a POSITA would consider. Id., 172:25. Dr. Milster
`
`has not shown that the modified Example 5 presented in the Declaration would not
`
`have been useful for any of these other applications. Id.
`
`21. A POSITA therefore would have been motivated to design for other
`
`applications that do not involve manufacturing on a large scale, including research
`
`and academic applications. The modifications of Ogino’s Example 5 presented in
`
`my declaration could have been useful for any of these other applications.
`
`4. Manufacturing considerations are preferences, and do not
`show that lenses cannot be physically produced.
`
`22. Even if a POSITA found the various manufacturing considerations
`
`listed by Dr. Milster to be relevant to the lens design at issue, these considerations
`
`would have been understood to be preferences and not requirements. In fact, Beich
`
`states that “[r]ules of thumb are quick generalizations. They are useful for initial
`
`discussions, but the rules can quickly break down as the limits of size, shape,
`
`thickness, materials, and tolerances are encountered.” APPL-1007, p.7. Thus, even
`
`the strictest manufacturing requirements would have been balanced with other
`
`considerations.
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`23.
`
`In fact, the balance between performance and cost is a common topic
`
`in lens design literature. See APPL-1012, p.11 (stating it will be “interesting to see
`
`what cost/image quality balance cell phone manufacturers finally select”); APPL-
`
`1007, p.1 (providing “a review of the cost tradeoffs between design tolerances,
`
`production volumes, and mold cavitation”).
`
`24. Even in the case where certain manufacturing considerations are
`
`important for a particular design or purpose and are not met, it does not
`
`automatically mean that the design is impossible to make. See APPL-1007, p.9
`
`(discussing designs that are “more challenging to manufacture” based on unmet
`
`manufacturing considerations, but not impossible). In fact, Dr. Milster has not
`
`provided evidence that the designs in my Declaration would have been impossible
`
`to produce. These designs would have been manufacturable even with the
`
`tolerances suggested by Dr. Milster with manufacturing methods such as ultra-
`
`precision diamond turning. Commonly already used for several decades, this
`
`technology can shape sharp corners (APPL-1038, pp.7-8) and “edge slopes up to
`
`60°” (APPL-1039, p.11) as well as manufacturing tolerances “smaller than one part
`
`in 104 or perhaps one part in 105” (APPL-1040, p.3). Therefore, a POSITA would
`
`have understood that the modified designs set forth in my Declaration would be
`
`physically manufacturable.
`
`5. Whether a prior art lens design is “finished” is not relevant to
`the claims of the ’647 patent.
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`25. As discussed above, Dr. Milster does not dispute that a POSITA could
`
`have designed a modified lens based on Ogino’s Example 5, and even presents his
`
`own modified Example 5 lens that would allegedly “achieve even better
`
`performance.” Ex. 2001, ¶91. Instead, Dr. Milster alleges that that the modified
`
`lenses presented in my Declaration are “at best intermediate structures that would
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`not have been implemented, but rather would have needed further modification.”
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`Ex. 2001, ¶92. However, the designs in the ’647 patent do not satisfy the rigorous
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`manufacturing considerations argued by Dr. Milster. In fact, Dr. Milster did not
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`provide any analysis of the lenses of the ’647 patent showing that they met the
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`same manufacturing criteria that he alleges are required for the modified designs
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`presented in my Declaration, and actually admitted that he did not perform such an
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`analysis for the lenses of the ’897 patent (which are the same as the ’647 patent):
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`Q. Did you perform any Zemax analysis on the lenses
`described in the specification in your analysis of
`determining whether they were manufacturable?
`
`A. No. I did not.
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`APPL-1028, 98:24-99:4.
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`26.
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`If Dr. Milster would have done this analysis, he would have found that
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`the Example 1 lens assembly of the ’647 patent is not suitable for manufacturing
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`(under his own theory) for at least the reasons that 1) it is not desensitized and 2)
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`suffers from serious ghost images that are focused on the image plane. See
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`Appendix, pp.43-50. For example, as shown in Fig. 5B in the Appendix, the
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`wavefront error change is significant between the nominal lens 2 of the Example 1
`
`lens assembly of the ’647 patent and the case where the lens is decentered by 0.005
`
`mm. In contrast, Fig. 5D shows minimal wavefront error change for the Example 1
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`lens assembly where lens 2 is decentered by 0.005 mm. Fig. 5E shows ghost
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`images focusing in the image plane of the nominal Example 1 lens assembly.
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`Based on this alone, manufacturing considerations are not implicitly required by
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`the claims in any fashion because Patent Owner’s own embodiments do not meet
`
`them.
`
`27. Moreover, a POSITA would have understood that further steps would
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`have been required to prepare the lenses of the ’647 patent for manufacturing, such
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`as conducting a stray light analysis, specifying stray light apertures (glare stops),
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`adjusting for the actual indices of refraction of chosen materials, etc. These steps
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`are also not recited in the claims or even contemplated by the ’647 patent. It is my
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`understanding that one cannot import into the claims requirements not recited
`
`already in the claims or specification.
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`D. Dr. Mister’s arguments about differences in relative illumination
`plots of the Ex. 5 lens are irrelevant.
`
`28. Dr. Milster points out a slight difference in the relative illumination
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`graphs for the unmodified Ogino Example 5 lens as provided in my Declaration for
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`this proceeding and for IPR 2020-00897 (for the related ’277 patent) as shown
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`below:
`
`Ex. 2005, IPR2020-00897, p.120
`
`
`
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`APPL-1003, p.144.
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`
`
`29. With respect to these differences, Dr. Milster alleges that the relative
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`illumination is “about 10% lower at 12.95°, 15.54°, and 18.13°” and that this
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`difference “requires a POSITA to begin at different starting points.” Ex. 2001,
`
`¶113.
`
`30. However, the minor difference in relative illumination graphs for the
`
`unmodified Example 5 lens is due to the choice of vignetting and would have been
`
`irrelevant to a POSITA in trying to improve the lens. To that end, a POSITA would
`
`have sought to improve the relative illumination of Ogino’s Example 5 lens given
`
`either graph, and the modified Example 5 lens shows improvements to relative
`
`illumination. See APPL-1003, ¶66. Further, Dr. Milster has provided no evidence
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`that the minimal difference of 10% for only a portion of the relative illumination
`
`graph would have impacted the design process of a POSITA.
`
`31. As pointed out by Dr. Milster, the slight difference between the
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`graphs is due to adjustments for vignetting. Ex. 2003, 149:16-23. Optical data
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`describing vignetting is not included in the lens prescription for the Example 5
`
`lens, but instead “all the information about vignetting is contained in the drawing.
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`With the drawing, a person of skill would have known the amount of vignetting
`
`there, because the rays are showing and it can be reproduced.” Id., 150:18-22.
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`However, I also testified that “both simulations reflect Ogino’s original design”
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`and so the difference has no consequences in trying to improve Ogino’s lenses. Id.,
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`151:12-13. In particular, both relative illumination graphs were generated from the
`
`prescription table of Ogino Ex.5 but the vignetting was chosen differently because
`
`the analyses was done at different times. Vignetting can be accounted in a lens
`
`design program using vignetting factors or using apertures. The rays chosen by
`
`each of these approaches differs and this explains the difference in relative
`
`illumination. Either choice would have done by a POSITA in improving the lens.
`
`32. Thus it is my opinion that claims 1 and 4 are obvious in view of
`
`Ogino’s Example 5 embodiment and Bareau as presented in my Declaration. It is
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`also my opinion that none of Dr. Milster’s arguments or alleged implicit limitations
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`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
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`change my analysis that each and every recited limitation is satisfied as explained
`
`in my Declaration.
`
`IV. Claims 2, 3, 5, and 8-11 are obvious over Ogino’s Example 5
`embodiment in view of Chen II and Bareau.
`
`33. Dr. Milster’s arguments regarding claims 2, 3, 5, and 8-11 of the ’647
`
`patent are similarly directed to the “manufacturability” of the two modified
`
`Example 5 lenses provided in my Declaration (referred to as the “first modified
`
`Example 5 lens” described with respect to claims 2, 3, and 5 and the “second
`
`modified Example 5 lens” described with respect to claims 8-11). See APPL-1003,
`
`¶¶68-75. It is my opinion that these arguments fail for similar reasons as discussed
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`above.
`
`A. A POSITA would have been motivated to modify Ogino’s Ex. 5
`lens as discussed in my Declaration.
`
`34. Similar to the discussion regarding the combination of Ogino and
`
`Chen II discussed above, a POSITA looking to improve a lens design such as
`
`Ogino’s Example 5 would have used well-known techniques to modify the design
`
`to achieve a specific design objective, such as reducing the f-number to 2.8 as
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`evidenced by Bareau. See APPL-1003, ¶¶68-75; APPL-1012, pp.3-4. Two possible
`
`results of this modification process are the first and second mo