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`Paper No.
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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
`
`_____________________
`
`
`IPR2020-00896
`Patent No. 10,317,647
`
`_____________________
`
`
`PETITIONER’S REPLY
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`

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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`
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`B.
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`2.
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`3.
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`I.
`Claims 1-3 and 5 are unpatentable over Iwasaki’s Example 4. ...................... 1
`II.
`III. Claims 1 and 4 are obvious over Ogino’s Example 5 in view of
`Bareau. ............................................................................................................. 1
`A. A POSITA would have been motivated to modify the L2
`lens of Ogino’s Example 5 based on Chen II. ....................................... 1
`Dr. Sasián used the same techniques that a POSITA would
`have used to generate the modified Ogino Example 5. ......................... 5
`C. Manufacturing considerations are not required by claims 1
`and 4 nor can they be imported to avoid unpatentability. ..................... 6
`1.
`Patent Owner seeks to import manufacturing
`requirements into claims where there are none. ......................... 6
`Patent Owner’s arguments contradict statements
`made in a related case, and supported by a different
`expert,
`that
`lens design
`is separate
`from
`manufacturing. ............................................................................ 8
`Dr. Milster admits that a POSITA would have
`designed lenses for purposes other than mass
`production manufacturing. ........................................................10
`4. Manufacturing considerations are preferences, and
`do not show that lenses cannot be physically
`produced. ...................................................................................11
`5. Whether a prior art lens design is finished is not
`relevant to the claims. ...............................................................12
`Patent Owner’s arguments about differences in relative
`illumination plots for the Example 5 lens are irrelevant. ....................13
`IV. Claims 2, 3, 5, and 8-11 are obvious over Ogino’s Example 5 in
`view of Chen II and Bareau. ..........................................................................15
`ii
`
`D.
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`B.
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`C.
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`V.
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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`A. A POSITA would have been motivated to modify Ogino’s
`Example 5 as discussed in the Petition. ..............................................15
`Dr. Sasián used the same techniques that a POSITA would
`have used to generate the first and second modified
`Example 5. ...........................................................................................16
`The modified Example 5 designs do not
`include
`overlapping lenses. ..............................................................................18
`D. Manufacturing considerations are not required by claims
`2, 3, 5, and 8-11, nor can they be imported to avoid
`unpatentability. ....................................................................................20
`Claim 6 is obvious over Ogino’s Example 5 in view of Chen II,
`Bareau, and Kingslake. ..................................................................................21
`A. A POSITA would have been motivated to generate the
`third modified Ogino’s Example 5, as discussed in the
`Petition. ................................................................................................21
`The
`third modified Example 5 does not
`include
`overlapping lenses. ..............................................................................23
`C. Manufacturing considerations are not required by claim 6,
`nor can they be imported to avoid unpatentability. .............................25
`The claims do not
`include
`relative
`illumination
`requirements. .......................................................................................26
`VI. Claim 7 is obvious over Hsieh and Beich. ....................................................27
`A. Manufacturing considerations such as tolerances and
`desensitization are not required by claim 7. ........................................27
`The combination of Hsieh and Beich does not require
`modifications to meet the limitations of claim 7. ................................27
`VII. Claim 12 is obvious over Chen, Iwasaki, and Beich. ....................................28
`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. .....................................................................28
`iii
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`B.
`
`D.
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`B.
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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`VIII. Conclusion .....................................................................................................33
`IX. Certificate of Word Count .............................................................................34
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`iv
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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
` PETITIONER’S EXHIBIT LIST
`Updated: June 21, 2021
`
`
`
`
`
`APPL-1001 U.S. Patent No. 10,317,647
`
`APPL-1002 Prosecution History of U.S. Patent No. 10,317,647
`
`APPL-1003 Declaration of José Sasián, Ph.D., under 37 C.F.R. § 1.68
`APPL-1004 Curriculum Vitae of José Sasián, Ph.D.
`
`APPL-1005 U.S. Patent No. 9,128,267 to Ogino et al. (“Ogino”)
`
`APPL-1006 Warren J. Smith, MODERN LENS DESIGN (1992) (“Smith”)
`APPL-1007 William S. Beich et al., “Polymer Optics: A manufacturer’s
`perspective on the factors that contribute to successful programs,”
`SPIE Proceedings Volume 7788, Polymer Optics Design,
`Fabrication, and Materials (August 12, 2010),
`https://doi.org/10.1117/12.861364 (“Beich”)
`APPL-1008 U.S. Patent No. 7,777,972 to Chen et al. (“Chen”)
`APPL-1009 U.S. Patent No. 9,678,310 to Iwasaki et al. (“Iwasaki”)
`
`APPL-1010 Max Born et al., PRINCIPLES OF OPTICS, 6th Ed. (1980) (“Born”)
`
`APPL-1011 Prosecution history of U.S. Patent No. 9,128,267 to Ogino
`APPL-1012 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-1013 Rudolf Kingslake, OPTICS IN PHOTOGRAPHY (1992) (“Kingslake”)
`
`APPL-1014 U.S. Patent No. 7,859,588 to Parulski et al. (“Parulski”)
`APPL-1015 Japanese Patent Pub. No. JP2013106289 to Konno et al. and
`certified English translation
`APPL-1016 Bruce J. Walker, OPTICAL ENGINEERING FUNDAMENTALS (1995)
`(“Walker”)
`
`
`
`v
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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`
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`
`
`APPL-1017 Robert E. Fischer, Optical System Design (2008) (“Fischer”)
`APPL-1018 Alan Symmons & Michael Schaub, FIELD GUIDE TO MOLDED
`OPTICS (2016) (“Schaub”)
`APPL-1019 Optical Society of America, HANDBOOK OF OPTICS, vol. II 2nd
`ed. (1995) (“Handbook of Optics”)
`APPL-1020 U.S. Patent No. 10,324,273 to Chen et al. (“Chen”)
`
`APPL-1021 U.S. Patent No. 9,857,568
`
`APPL-1022 U.S. Patent No. 9,568,712
`APPL-1023 Deposition Transcript of Duncan Moore, Ph.D. in IPR2018-01140
`
`APPL-1024 U.S. Patent No. 7,321,475 to Wang et al.
`APPL-1025 Greg Hollows et al., “Matching lenses and sensors”, Vision
`Systems design (March 2009)
`APPL-1026 Prosecution history of U.S. Patent No. 9,678,310 to Iwasaki et al.
`
`APPL-1027 Email from Patent Owner’s counsel authorizing electronic service
`
`APPL-1028
`(NEW)
`APPL-1029
`(NEW)
`APPL-1030
`(NEW)
`APPL-1031
`(NEW)
`APPL-1032
`(NEW)
`APPL-1033
`(NEW)
`
`
`
`Deposition Transcript of Tom Milster, Ph.D.
`
`IPR 2019-00030, Paper 21
`
`IPR 2019-00030, Ex. 2005
`
`Reserved
`
`Reserved
`
`Reserved
`
`vi
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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`
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`
`Reserved
`
`Reserved
`
`Reserved
`
`Declaration of José Sasián, Ph.D. in support of Petitioner’s Reply
`
`H. M. Leung et al., “Diamond turning and soft lithography
`processes for liquid tunable lenses” 20 J. Micromechanics
`Microengineering 1 (Jan. 18, 2010)
`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) https://doi.org/10.1117/12.874751
`Sandy Suet To et al., Materials Characterisation and Mechanism of
`Micro-Cutting in Ultra-Precision Diamond Turning (2018)
`
`
`
`
`
`APPL-1034
`(NEW)
`APPL-1035
`(NEW)
`APPL-1036
`(NEW)
`APPL-1037
`(NEW)
`APPL-1038
`(NEW)
`
`APPL-1039
`(NEW)
`
`APPL-1040
`(NEW)
`
`
`
`
`
`
`vii
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`

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`
`
`Introduction
`
`I.
`
`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
`
`
`
`
`
`The Petition and evidence explain why a person of skill in the art
`
`(“POSITA”) would have understood the cited references to render claims 1-12
`
`unpatentable. Patent Owner’s Response fails to overcome the Petition because it
`
`imports numerous manufacturing-based considerations not required by the claims
`
`or even mentioned in the specification. The Board should therefore find the
`
`challenged claims unpatentable.
`
`II. Claims 1-3 and 5 are unpatentable over Iwasaki’s Example 4.
`
`Patent Owner does not dispute that claims 1-3 and 5 are unpatentable over
`
`Iwasaki’s Example 4.
`
`III. Claims 1 and 4 are obvious over Ogino’s Example 5 in view of Bareau.
`A. A POSITA would have been motivated to modify the L2 lens of
`Ogino’s Example 5 based on Chen II.
`
`The Petition shows that a POSITA would have been motivated to modify
`
`Ogino’s Example 5 to have a meniscus second lens (as taught by Chen II) to
`
`decrease vignetting from total internal reflection and ray aberration. Petition,
`
`pp.26-37, APPL-1003, ¶¶55-68. Patent Owner disagrees, arguing that the meniscus
`
`shape (convex object-side) of Chen II’s second lens “has nothing to do with
`
`vignetting” and instead is due to Chen II’s aspherics. Response, pp.28-29.
`
`As referenced in the Petition, this issue has been extensively addressed by
`
`the Board and parties in IPR 2018-01140 and is currently pending decision at the
`1
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`
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`

`

`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`Federal Circuit. Petition, p.36; IPR2018-00140, Paper 37, pp.32-38. The Board in
`
`
`
`
`
`
`
`that case concluded that it would have been obvious for a POSITA to combine
`
`Chen II’s teaching of using a meniscus L2 lens with Ogino’s Example 6. 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 have provided the same benefits as previously shown for
`
`Example 6, the Board should similarly conclude here that it would have been
`
`obvious for a POSITA to combine Ogino and Chen II. APPL-1037, ¶4.
`
`
`
`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:
`
`Petition, pp.31-32; APPL-1009, Fig. 1 (annotated). Even without a written
`
`
`
`
`
`2
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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`explanation of vignetting in Chen II’s specification, the difference in vignetting
`
`
`
`
`
`
`
`between the second lenses of Ogino’s Example 5 and Chen II’s Example 1 would
`
`have been apparent to a POSITA. APPL-1037, ¶5.
`
`Additionally, a POSITA would have understood that changing the radius of
`
`curvature of the object-side surface of Ogino’s L2 lens from negative to positive
`
`(even without changing the aspherics) would reduce vignetting, as shown below in
`
`the comparison of 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 aspheric coefficients. APPL-1037, ¶5.
`
`R1/L2 = -18.78836 (Original)
`
`R1/L2 = +18.78836 (Modified)
`
`
`
`
`
`APPL-1037, Appendix, Figs. 1A, 1B
`
`Notwithstanding the subtle change in shape between the two lenses, the
`
`modified lens has reduced vignetting (the original lens shows five rays that are
`
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`3
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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`vignetted by total internal refraction and the modified lens shows only four rays
`
`
`
`
`
`
`
`vignetted). APPL-1037, ¶6. A POSITA thus would have understood that
`
`vignetting could be reduced, and relative illumination improved, in Ogino’s
`
`Example 5 lens by changing the L2 lens to have a meniscus shape as shown by
`
`Chen II. Petition, p.36; APPL-1003, ¶68; APPL-1037, ¶6.
`
` Patent Owner also argues that “a POSITA starting with Ogino Example 5
`
`would simply set more surfaces to vary to improve performance without significant
`
`vignetting” and presents its own modified Example 5 lens that does not meet the
`
`limitations of claim 1. Response, pp.31-33. Patent Owner provides no motivation
`
`for this other than Dr. Milster’s bare assertion that a POSITA would have arrived
`
`some solution other than Dr. Sasián’s. APPL-1037, ¶7. However, as discussed
`
`previously, Dr. Sasián’s modified lenses are examples of “possible lens designs”
`
`that a POSITA would have considered to improve Ogino’s embodiments and
`
`teachings, or that a POSITA would have arrived at in the process of adjusting
`
`Ogino’s lenses. See APPL-1003, ¶¶79, 88. The fact that other modifications could
`
`have also been successful is irrelevant since Chen II shows reduced vignetting at
`
`the second lens because of its meniscus shape. This argument really further
`
`strengthens Petitioner’s position that a POSITA would have been motivated to
`
`improve Ogino’s Example 5 lens, and would have had the requisite skills to do so.
`
`APPL-1037, ¶7.
`
`
`
`4
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`

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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`B. Dr. Sasián used the same techniques that a POSITA would have
`used to generate the modified Ogino Example 5.
`
`
`
`Patent Owner complains about the minimal nature of changes made to Dr.
`
`Sasián’s modified Ogino’s Example 5 lens as compared to the original Example 5
`
`lens and points out that the distances between lens elements, conic constants, and
`
`surface radii for some of the lens elements “are identical to those found in the
`
`unmodified Example 5 of Ogino.” Response, p.47. According to Patent Owner,
`
`allowing these characteristics to vary “would permit better performance to be
`
`obtained during the design process.” Id., p.46.
`
`However, keeping certain variables constant, such as lens spacing, while
`
`varying other parameters, is precisely the approach a POSITA would have taken.
`
`See APPL-1037, ¶9; APPL-1017, p.168 (stating that to improve a lens design,
`
`“each variable is changed a small amount, called an increment, and the effect to
`
`performance is then computed”). Dr. Milster took a similar gradual “step-wise
`
`process” in modifying lenses. APPL-1028, 21:6-18. Patent Owner’s previous
`
`expert Dr. Moore described a similar process when asked in a deposition involving
`
`patents in the same family. See APPL-1013, 99:6-18 (stating that variables in a
`
`lens design are changed “gradually” and a POSITA would check optical
`
`performance between steps).
`
`To reduce the number of steps, a POSITA would have looked to modify
`
`
`
`5
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`

`

`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
`
`Ogino’s Example 5 lens assembly with as few changes to the original lens as
`
`
`
`
`
`
`
`possible. APPL-1037, ¶10. For example, simply changing the shape of the second
`
`lens to be meniscus according to the teachings of Chen II (as shown by Dr.
`
`Sasián’s modified Example 5), a POSITA would have achieved desirably
`
`improved performance with minimal design changes. See APPL-1003, p.118.
`
`C. Manufacturing considerations are not required by claims 1 and 4
`nor can they be imported to avoid unpatentability.
`
`1.
`
`Patent Owner seeks to import manufacturing requirements
`into claims where there are none.
`
`Patent Owner argues against the “manufacturability” of the modified
`
`Example 5 lens (see Response, pp.38-40, 44-46) but does not define
`
`“manufacturing” as applied to the claims. Rather, Patent Owner seems to rely on
`
`the requirement of large-scale injection plastic molding. Id., pp.38-40; 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.”).
`
`Patent Owner discusses diverse manufacturing considerations including
`
`manufacturing tolerances, oversizing, and desensitization which it seeks to require
`
`of Dr. Sasián’s modified lens designs. Response, pp.38-40, 44-46.
`
`However, claims 1 and 4 do not include any manufacturing-based
`
`requirements. Tellingly, when questioned about whether manufacturing criteria
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`
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`6
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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`were required by any of the claims of ’647 patent, Dr. Milster’s only answer was
`
`
`
`
`
`
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`the center-to-edge thickness ratio in claims 7 and 12, which are not at issue in this
`
`ground. APPL-1028, 91:5-22.
`
`The Petition shows how these center-to-edge thickness ratios are disclosed
`
`in the prior art without relying on Ogino. Petition, pp.71-96. Moreover, the center-
`
`to-edge thickness ratio only appears in claims 7 and 12 and is thus not required of
`
`the other claims. See SRI Int’l v. Matsushita Elec. Corp., 775 F. 2d 1107 (“It is
`
`settled law that when a patent claim does not contain a certain limitation and
`
`another claim does, that limitation cannot be read into the former claim in
`
`determining either validity or infringement.”).
`
`The principle that claim limitations cannot be imported from the
`
`specification when they are not present in the claims is well-established1 and
`
`particularly applicable to the present case. Specifically, the center-to-edge
`
`thickness ratio at issue was not originally described in the specification of previous
`
`
`1 See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
`
`2004) (“it is important not to import into a claim limitations that are not part of the
`
`claim. For example, a particular embodiment appearing in the written description
`
`may not be read into a claim when the claim language is broader than the
`
`embodiment.”).
`
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`7
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`

`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`patents in the family of the ’647 patent but was later added in the continuation-in-
`
`
`
`
`
`
`
`part application that issued as U.S. Patent No. 9,857,568 (“the ’568 patent”) which
`
`was found unpatentable based on Ogino’s Example 6. See APPL-1021, 1:6-17;
`
`IPR2019-00030, paper 32.
`
`Patent Owner does not dispute that claims with this limitation (claims 7 and
`
`12) are not entitled to the original priority date of the other claims. See Ex. 2002,
`
`¶35 (Dr. Milster giving an effective filing date of July 4, 2013 for claims 1-6 and
`
`8-11 and January 30, 2017 for claims 7 and 12). Thus, based on Dr. Milster’s
`
`opinion, the other claims of the ’647 patent do not include any manufacturing
`
`requirements. Id. Accordingly, Patent Owner’s arguments to import manufacturing
`
`considerations where they are conspicuously absent should be rejected.
`
`2.
`
`Patent Owner’s arguments contradict statements made in a
`related case, and supported by a different expert, that lens
`design is separate from manufacturing.
`
`Patent Owner’s insistence that a POSITA would immediately reject lens
`
`designs based on manufacturing considerations directly contradicts its earlier
`
`arguments made in IPR2019-00030 regarding the ’568 patent, the parent of the
`
`’647 patent:
`
`And more fundamentally, a POSITA with the appropriate
`education and experience would not—as a lens designer
`and not a manufacturer—have had the motivation nor the
`requisite knowledge to combine the manufacturing and
`8
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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
`material science teachings of Beich with the lens system
`of Ogino.
`
`
`
`
`
`APPL-1029, p.4 (emphasis original). Dr. Moore (Patent Owner’s expert in
`
`IPR2019-00030) also directly contradicts Dr. Milster’s opinion 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 original).
`
`In other words, after arguing in a related case (to preserve patentability of a
`
`related patent) that manufacturing and lens design are completely separate
`
`considerations for a POSITA, Patent Owner now seeks to reject any prior art lens
`
`designs based solely on what were previously irrelevant manufacturing
`
`considerations. See Response, pp.38-40, 44-46. Patent Owner cannot have it both
`
`ways. It cannot argue that a POSITA would not consider manufacturing to preserve
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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`patentability for a parent patent then argue the exact opposite to preserve
`
`
`
`
`
`
`
`patentability in a child patent relying on the exact same disclosure. Patent Owner’s
`
`arguments here are both conclusory and inconsistent and therefore carry no weight.
`
`A POSITA may be motivated to modify a lens design to meet a particular
`
`manufacturing requirement pertinent to a particular design, (see IPR2019-00030,
`
`Paper 32, p.35), but a POSITA would not wholly reject a design because it did not
`
`meet various manufacturing considerations, which Patent Owner has not even
`
`shown would be relevant for any particular design. APPL-1037, ¶18.
`
`3.
`
`Dr. Milster admits that a POSITA would have designed
`lenses for purposes other than mass production
`manufacturing.
`
`Patent Owner’s arguments concerning mass production applications fail to
`
`consider that a POSITA would have designed lenses for other applications that do
`
`not involve mass production manufacturing. See Response, pp.38-40, 44-46. As
`
`discussed above, the claims do not require mass production manufacturing. See
`
`APPL-1028, 91:5-22. Moreover, a POSITA would have been motivated to design
`
`lenses for other purposes like prototyping, limited manufacturing, or
`
`experimentation. APPL-1037, ¶19. These lens designs would not have been limited
`
`by mass-produced injection molding as Patent Owner argues. Id.
`
`Rather, Dr. Milster agrees that there are other applications for useful lens
`
`designs that are not based on any level of manufacturing: “[a]nd so your question
`
`
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`10
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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
`
`was does a POSITA ever design a lens other than manufacturing and my answer to
`
`
`
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`
`
`
`that is yes.” APPL-1028, 173:9-11. An “international lens design conference” is
`
`one such non-manufacturing application. Id., 172:25. A POSITA would not have
`
`been limited by a particular manufacturing method when designing for research or
`
`academic applications as is the case with the modifications of Ogino’s Example 5
`
`presented in the Petition. APPL-1037, ¶21.
`
`4. Manufacturing considerations are preferences, and do not
`show that lenses cannot be physically produced.
`
`Even if a POSITA found the various manufacturing considerations listed by
`
`the Patent Owner 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,
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`thickness, materials, and tolerances are encountered.” APPL-1007, p.7. Thus, even
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`the strictest manufacturing requirements would have been balanced with other
`
`considerations. APPL-1037, ¶22. Further, Patent Owner has not provided evidence
`
`that any lens design, including the designs in the Petition, would have been
`
`impossible to produce. These designs would have been manufacturable even with
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`the tolerances suggested by Patent Owner with manufacturing methods such as
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`ultra-precision diamond turning. APPL-1037, ¶22. Commonly used for half a
`
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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`century, this technology can shape sharp corners (APPL-1038, pp.7-8) and “edge
`
`
`
`
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`
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`slopes up to 60°” (APPL-1039, p.11) as well as manufacturing tolerances “smaller
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`than one part in 104 or perhaps one part in 105” (APPL-1040, p.3). Therefore, a
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`POSITA would have understood that the modified designs set forth in the Petition
`
`are manufacturable. APPL-1037, ¶22.
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`5. Whether a prior art lens design is finished is not relevant to
`the claims.
`
`Patent Owner also alleges that the Dr. Sasián’s modified lenses are “at best
`
`intermediate structures that would not have been implemented, but rather would
`
`have needed further modification.” Response, pp.38, 44. However, the designs in
`
`the ’647 patent also do not satisfy these rigorous standards. In fact, Dr. Milster did
`
`not provide any analysis of the lenses of the ’647 patent to show they meet the
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`manufacturing criteria allegedly required for Dr. Sasián’s modified designs, and
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`actually admitted that he did not perform such an analysis for the lenses of the ’897
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`patent (which are the same as the ’647 patent). APPL-1028, 98:24-99:4.
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`If Dr. Milster had done this analysis, he would have found that the Example
`
`1 lens assembly of the ’647 patent is not suitable for manufacturing (under his own
`
`theory) for at least the reasons that 1) it is not desensitized and 2) suffers from
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`serious ghost images that are focused on the image plane. APPL-1037, ¶26,
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`Appendix pp.43-50. Based on this alone, Patent Owner’s manufacturing
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`
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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`requirements are not implicitly required by the claims in any fashion. EPOS
`
`
`
`
`
`
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`Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014) (“A claim
`
`construction that excludes a preferred embodiment ... is rarely, if ever correct and
`
`would require highly persuasive evidentiary support.”) (citation omitted).
`
`Moreover, a POSITA would have understood that further steps would have
`
`been required to prepare the lenses of the ’647 patent for manufacturing which are
`
`also not recited in the claims or even contemplated by the ’647 patent. APPL-1037,
`
`¶27. Patent Owner cannot now import requirements not recited in the claims or to
`
`maintain patentability over an obvious modification of the prior art. See Atlantic
`
`Research Mktg. Sys., Inc. v. Troy, No. 11-1002 (Fed. Cir. 2011) (rejecting claims
`
`that “exceed in scope the subject matter that [applicant] chose to disclose to the
`
`public in the written description”).
`
`D.
`
`Patent Owner’s arguments about differences in relative
`illumination plots for the Example 5 lens are irrelevant.
`
`Patent Owner references a slight difference in the relative illumination
`
`graphs for the unmodified Ogino Example 5 lens as provided by Dr. Sasián in his
`
`Declaration for this proceeding and for IPR2020-00897 (for the related ’277
`
`patent) as shown below:
`
`
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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`
`
`
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`Ex. 2005, IPR2020-00897, p.120
`
`
`
`APPL-1003, p.144.
`
`
`
`With respect to these differences, Patent Owner alleges that the relative
`
`illumination is “about 10% lower at 12.95°, 15.54°, and 18.13°” and that this
`
`difference “requires a POSITA to begin at different starting points.” Response,
`
`p.50.
`
`However, the minor difference in relative illumination graphs for the
`
`unmodified Example 5 lens is inconsequential and would have been irrelevant to a
`
`POSITA. APPL-1037, ¶30. A POSITA would have sought to improve the relative
`
`illumination of Ogino’s Example 5 lens given either graph, and the modified
`
`Example 5 lenses shows improvements to relative illumination. See Petition, p.35,
`
`APPL-1003, ¶66. Further, Patent Owner presents no evidence that the minimal
`
`difference of 10% for only a portion of the relative illumination graph would have
`
`impacted a POSITA’s design process or decisions. APPL-1037, ¶30.
`
`As pointed out by Patent Owner, Dr. Sasián testified that the slight
`
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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`difference between the graphs is due to adjustments for vignetting. Ex. 2003,
`
`
`
`
`
`
`
`149:16-23. Optical data describing a precise amount of vignetting is not included
`
`in the lens prescription for the Example 5 lens, but instead “all the information
`
`about vignetting is contained in [Ogino’s] drawing. 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. Therefore, slight differences in
`
`interpreting the amount of vignetting in the drawing may result in slightly different
`
`relative illumination graphs. However, Dr. Sasián also testified that “both
`
`simulations reflect Ogino’s original design” and so the difference is
`
`inconsequential. Id., 151:12-13.
`
`Consequently, claims 1 and 4 are obvious in view of Ogino’s Example 5 and
`
`Chen II as presented in the Petition. None of Patent Owner’s arguments or alleged
`
`implicit limitations change the fact that each and every recited limitation is
`
`satisfied. Petitioner therefore respectfully requests that these claims be found
`
`unpatentable.
`
`IV. Claims 2, 3, 5, and 8-11 are obvious over Ogino’s Example 5 in view of
`Chen II and Bareau.
`
`A. A POSITA would have been motivated to modify Ogino’s
`Example 5 as discussed in the Petition.
`
`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
`
`
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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`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
`
`evidenced by Bareau. See Petition, pp.46-51, 51-59; APPL-1003, ¶¶68-75; APPL-
`
`1012, pp.3-4. Two possible results of this modification process are the first and
`
`second modified Example 5 lenses presented in the Petition and Declaration of Dr.
`
`Sasián:
`
`APPL-1003, p.151
`(first modified Example 5 lens)
`
`
`
`APPL-1003, p.155
`(second modified Example 5 lens)
`
`
`
`As discussed in the Petition, the first modified Example 5 lens incorporating
`
`the teachings of Chen II and Bareau renders obvious claims 2, 3, and 5 and the
`
`second modified Example 5 lens renders obvious claims 8-11. Petition, pp.52-59,
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`APPL-1003, pp.80-95.
`
`B. Dr. Sasián used the same techniques that a POSITA would have
`used to generate the first and second modified Example 5.
`
`Similar to the discussion above, Patent Owner appears to take issue with the
`
`
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`Petitioner’s Reply
` IPR2020-00896 (Patent No. 10,317,647)
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`minimal nature of changes made in Dr. Sasián’s first and second modified
`
`
`
`
`
`
`
`Example 5 lenses and points out that the spacings between lens elements, conic
`
`constants, and surface radii for some of the lens elements are identical to those
`
`found in the unmodified Example 5 of Ogino. Response, pp.56-57, 61-62. Patent
`
`Owner argues that keeping these values constant “would have almost certainly
`
`prevented a POSITA from finding the best performance result.” Id., pp.62, 67.
`
`However, as discussed above, a design process that keeps certain parameters
`
`constant while varying other parameters is not only well-known in the art, but is
`
`also the process carried out by Patent Owner’s experts. See APPL-1037, ¶36;
`
`APPL-1017, p.168; APPL-1028, 21:6-18; APPL-1013, 99:6-18. In both modified
`
`Example 5 lens designs, a POSITA would have been motivated to lower the f-
`
`number of the original Example 5 lens assembly with as few changes to the
`
`original lens as possible. APPL-1037, ¶36. Dr. Sasián showed that a POSITA
`
`would have discovered that this design objective could be achieved with minimal
`
`changes to the structure of