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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. IPR2020-00896
`U.S. Patent No. 10,317,647
`____________
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`Case No. IPR2020-00896
`U.S. Patent No. 10,317,647
`
`TABLE OF CONTENTS
`
`PATENT TO GUIDE ITS OBVIOUSNESS
`
`AND 4 ARE OBVIOUS OVER OGINO’S EXAMPLE 5 IN
`
`Dr. Sasian Does Not Use the Lens Design Process That a POSITA
`
`A POSITA Would Have Considered Manufacturability When
`
`INTRODUCTION .................................................................. 1
`I.
`II. APPLE AND ITS EXPERT IMPROPERLY USE THE ‘647
`DETERMINATION. ............................................................... 1
`III. APPLE HAS FAILED TO DEMONSTRATE THAT CLAIMS 1
`VIEW OF CHEN II ................................................................ 4
`A. A POSITA Would Not Have Combined Ogino’s Example 5 and
`Chen II ............................................................................................. 4
`B.
`Would Have Used ............................................................................ 6
`C.
`Combining Ogino Example 5 and Chen II ...................................... 7
`D. Dr. Sasian Used Different Starting Vignetting in Ogino Example 5
`Based on the Patent Claims at Issue ................................................ 9
`IV. APPLE HAS FAILED TO DEMONSTRATE THAT CLAIMS 2,
`IN VIEW OF CHEN II AND BAREAU ................................. 10
`A. Dr. Sasian Does Not Use the Lens Design Process That a POSITA
`Would Have Used .......................................................................... 10
`A POSITA Would Not Design Lenses that Touch ......................... 11
`B.
`C.
`Combining Ogino Example 5, Chen II, and Bareau ..................... 12
`
`3, 5, AND 8-11 ARE OBVIOUS OVER OGINO’S EXAMPLE 5
`
`A POSITA Would Have Considered Manufacturability When
`
`i
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`
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`APPLE HAS FAILED TO DEMONSTRATE THAT CLAIM 6
`IS OBVIOUS OVER OGINO’S EXAMPLE 5 IN VIEW OF
`
`A POSITA Would Have Considered Manufacturability When
`
`Relative Illumination Is a Factor a POSITA Would Have
`
`CHEN II, BAREAU, AND KINGSLAKE .............................. 12
`A. Dr. Sasian Does Not Use the Lens Design Process That a POSITA
`Would Have Used .......................................................................... 12
`A POSITA Would Not Design Lenses that Effectively Touch ...... 12
`B.
`C.
`Combining Ogino Example 5, Chen II, Bareau, and Kingslake ... 13
`D.
`Considered ..................................................................................... 13
`VI. APPLE HAS FAILED TO DEMONSTRATE THAT CLAIM 7
`IS OBVIOUS OVER HSIEH AND BEICH ............................ 16
`A. A POSITA Would Have Considered Manufacturability When
`Combining Hsieh and Beich ......................................................... 16
`B.
`Would Have Used .......................................................................... 16
`VII. APPLE HAS FAILED TO DEMONSTRATE THAT CLAIM 12
`IS OBVIOUS OVER CHEN, IWASAKI, AND BEICH .......... 17
`A. Apple Did Not Address All the Limitations in Its Petition ........... 17
`VIII. CONCLUSION .................................................................... 19
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`Case No. IPR2020-00896
`U.S. Patent No. 10,317,647
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`V.
`
`Dr. Sasian Does Not Use the Lens Design Process That a POSITA
`
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`Cases
`
`TABLE OF AUTHORITIES
`
`Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc.,
`796 F.2d 443 (Fed. Cir. 1986) .................................................................. 15
`
`Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc.,
`381 F.3d 1371 (Fed. Cir. 2004) .................................................................. 3
`
`Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd.,
`533 F.3d 1353 (Fed. Cir. 2008) .................................................................. 6
`
`Ericsson Inc, v. Intellectual Ventures I LLC,
`901 F.3d 1374 (Fed. Cir. 2018) ................................................................ 19
`
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) .................................................................................... 14
`
`Grain Processing Corp. v. American Maize-Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) .................................................................... 3
`
`In re Dow Chem. Co.,
`837 F.2d 469 (Fed. Cir. 1988) .................................................................... 2
`
`In re Lee,
`277 F.3d 1338 (Fed. Cir. 2002) ............................................................ 2, 10
`
`In re Wesslau,
`353 F.2d 238 (CCPA 1965) ...................................................................... 15
`
`W.L. Gore & Assocs. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) .................................................................. 2
`
`Statutes
`
`35 U.S.C. § 112 ............................................................................................... 8
`
`i
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`
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`Case No. IPR2020-00896
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`Case No. IPR2020-00896
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`35 U.S.C. § 316(e) .................................................................................... 6, 10
`35 U.S.C. § 316(6) .................................................................................... 6, 10
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`ii
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`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit No
`2001
`2002
`2003
`2004
`2005
`2006
`
`2007
`
`2008
`
`Description
`Declaration of Tom D. Milster, Ph.D.
`Curriculum Vitae of Tom D. Milster, Ph.D.
`Deposition transcript of José Sasián, February 19, 2021
`José Sasián, Introduction to Lens Design (2019)
`Declaration of José Sasián in IPR2020-00897
`McGuire Jr, J. P., & Kuper, T. G. (2012, October). Ap-
`proaching direct optimization of as-built lens performance.
`In Novel Optical Systems Design and Optimization XV
`(Vol. 8487, p. 84870D). International Society for Optics
`and Photonics
`Sturlesi, D., & O'Shea, D. C. (1991). Global view of opti-
`cal design space. Optical engineering, 30(2), 207-218
`Symmons and Schaub, Field Guide to Molded Optics
`(2016)
`Declaration of Tom Milster in IPR2020-00878
`Declaration of Marc A. Fenster in Support of Motion to
`Appear Pro Hac Vice
`Declaration of James S. Tsuei in Support of Motion to Ap-
`pear Pro Hac Vice
`(New) 2012 Deposition transcript of José Sasián, July 16, 2021
`
`2009
`2010
`
`2011
`
`i
`
`
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`Case No. IPR2020-00896
`U.S. Patent No. 10,317,647
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`I.
`
`INTRODUCTION
`
`As set forth below, Apple’s reply fails to rebut the main arguments made
`
`in Corephotonics’ response. Rather, the reply and its supporting declaration
`
`make clear that Apple’s positions are based upon impermissible hindsight that
`
`violate the black letter law for obviousness analysis. Dr. Sasian, Apple’s ex-
`
`pert, uses the claims of the ‘277 patent as a guide in analyzing how a person
`
`of ordinary skill in the art (“POSITA”) would design the lens that he opines
`
`upon. He improperly stops the design process to fit the claim limitations, as
`
`opposed to fitting what a POSITA would do. But this approach is wrong, as
`
`POSITA is not permitted to use the specification or the claims as guide for
`
`determining obviousness. Finally, in an effort to cure its failure to demon-
`
`strate that all of the underlying limitations of claim 12 are found in the prior
`
`art, Apple misleadingly cites to the wrong reference. This must be rejected.
`
`Therefore, Grounds 1-6 of this IPR should be rejected and the chal-
`
`lenged claims of the ‘647 patent should be found not unpatentable.
`
`II. APPLE AND ITS EXPERT IMPROPERLY USE THE ‘647
`PATENT TO GUIDE ITS OBVIOUSNESS DETERMINATION.
`Apple uses the ‘647 patent and its claims to guide its obviousness anal-
`
`ysis. Apple’s approach is wrong and infects Apple’s entire analysis.
`
`1
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`Throughout its reply, Apple and its expert implement a lens assembly
`
`design process that is directed toward the claims of the ‘647 patent, not to the
`
`best lens assembly.1 In his initial deposition, Dr. Sasian even admitted to se-
`
`lecting embodiments based on whether they met the claims of the patent. Ex.
`
`2003, February 19, 2021, Sasián Dep. Tr. at 171:2-13. But a POSITA cannot
`
`consider the patented claims when deciding what modifications to make to the
`
`prior art. It is improper, when determining whether a person of ordinary skill
`
`would have been led to a specific combination of the Ogino and Chen II ref-
`
`erences, to “[use] that which the inventor taught against its teacher.” In re Lee,
`
`277 F.3d 1338, 1343 (Fed. Cir. 2002). See W.L. Gore & Assocs. v. Garlock,
`
`Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (“It is difficult but necessary that
`
`the decisionmaker forget what he or she has been taught . . . about the claimed
`
`invention and cast the mind back to the time the invention was made (often as
`
`here many years), to occupy the mind of one skilled in the art. ...”); See In re
`
`Dow Chem. Co., 837 F.2d 469, 473 (Fed. Cir. 1988) (“[t]here must be a reason
`
`
`1 Patent Owner’s Sur-Reply in IPR2020-00897 for U.S. Patent No. 10,324,277
`(which is the parent of the ‘647 patent), points out that the obviousness anal-
`ysis by Dr. Sasian is based on a POSITA making “minimum changes to a
`lens to maintain the lens within the scope of a patent.” See, e.g., Patent
`Owner’s Sur-Reply in IPR2020-00897, at 1-2 (emphasis added). It is un-
`likely that Dr. Sasian would change his analysis here.
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`2
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`or suggestion in the art for selecting the procedure used, other than the
`
`knowledge learned from the applicant's disclosure”); Cardiac Pacemakers,
`
`Inc. v. St. Jude Medical, Inc., 381 F.3d 1371 (Fed. Cir. 2004) (“the suggestion
`
`to combine references must not be derived by hindsight from knowledge of
`
`the invention itself.”). A patentee’s disclosure cannot be used as a blueprint to
`
`reconstruct the claimed invention from the cited prior art, as that contravenes
`
`the statutory requirement under §103 that obviousness is judged at the point
`
`in time when the invention was made. See Grain Processing Corp. v. Ameri-
`
`can Maize-Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988).
`
`Dr. Sasian’s analysis is replete with examples of ignoring what a
`
`POSITA would have actually done when designing a lens. He set parameters
`
`for various lens designs to ensure the distances were within the patent claims,
`
`while only allowing one or two parameters to vary. See, e.g., Ex. 1003, at p.
`
`118. He admitted in his deposition that he selected experimental results based
`
`on whether those results met the claims of the ‘277 patent. Ex. 2003, February
`
`19, 2021 Sasian Dep. Tr. at 171:2-13. This approach is wrong.
`
`Apple and Dr. Sasian have used an improper analysis in determining
`
`obvious. Rather than look at what a POSITA would have known at the time of
`
`the invention of the ‘647 claims, as required by §103, Apple and Dr. Sasian
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`instead use the ‘647 patent claims as a guide. This improper analysis, which
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`serves as the entire basis for Apple’s assertions in Grounds 1-6, must be dis-
`
`regarded. Therefore, Grounds 1-6 must be denied and the challenged claims
`
`of the ‘647 patent found not unpatentable.
`
`III. APPLE HAS FAILED TO DEMONSTRATE THAT
`CLAIMS 1 AND 4 ARE OBVIOUS OVER OGINO’S EXAMPLE
`5 IN VIEW OF CHEN II
`A. A POSITA Would Not Have Combined Ogino’s Example 5 and
`Chen II
`Apple continues to argue that it would have been obvious to have com-
`
`bine Chen II with Ogino Example 5 to decrease vignetting. Paper No. 21,
`
`IPR2020-00896, Petitioner’s Reply (“Reply”) at 2. In support, Apple relies on
`
`a previous Board decision in IPR2018-01140. Id. But that decision involved
`
`combining Ogino Example 6 with the teachings of Chen II because “Ogino’s
`
`Example 6 lens assembly ‘has relative illumination less than 50%’ and that a
`
`person having ordinary skill in the art ‘would have looked to improve the rel-
`
`ative illumination of Ogino’s Example 6.’” See IPR2018-01140, Paper 37, p.
`
`30. The Board’s decision regarding a different embodiment of Ogino modified
`
`by Chen II for different reasoning is not binding on the Board or the parties.
`
`Further, as shown in Patent Owner’s Response, a POSITA would not
`
`have considered modifying Ogino Example 5 with Chen II to address
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`4
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`vignetting in the way Apple argues, because Chen II and its meniscus lens
`
`have nothing to do with vignetting. Paper No. 14, IPR2020-00896, Patent
`
`Owner’s Response (“POR”) at 28-31. Even with the changes to Ogino Exam-
`
`ple 5, the decrease in vignetting is not due Chen II, as Example 1 in Chen II
`
`displays the same near-vertical-line shape characteristic near the center of the
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`first surface of the second lens. POR at 30-31; Ex. 2001, Milster Decl., ¶90.
`
`Apple provides a modified Example 5 lens which changes the radius of
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`curvature of the object-side lens from negative to positive to allegedly show
`
`that vignetting would be the same. First, this design must be rejected, as it is
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`a new design and new evidence not previously offered by Apple in its Petition.
`
`Second, this new design has not been applied against the claims of the ‘647
`
`patent. But even if this new modification is accepted, it does not address Pa-
`
`tent Owner’s arguments regarding vignetting.
`
`Rather than go through the elaborate modification of Ogino Example 5
`
`with Chen II, a POSITA would have allowed more parameter to vary in mod-
`
`ifying Example 5 alone. POR at 31. This would have been simpler and more
`
`consistent with how a POSITA would approach this issue. Patent Owner’s ex-
`
`pert, Dr. Milster, devised a modification to Ogino Example 5 that did not in-
`
`clude incorporating Chen II. This process involved a “step-wise” process for
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`5
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`allowing small changes to many parameters at the same time. See, e.g., POR
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`at 30; Ex. 2001, ¶¶101-103. In doing so, Dr. Milster’s process allowed a de-
`
`sign that obtained the “locally best result.” Id. at ¶103. Other than meeting the
`
`claim limitations, there is no reason why a POSITA would have used the more
`
`complicated process when a simpler one was available.
`
`B. Dr. Sasian Does Not Use the Lens Design Process That a POSITA
`Would Have Used
`Apple argues that Dr. Sasian used the same process as a POSITA would
`
`have in modifying Ogino Example 5. Reply at 5. But the process used by Dr.
`
`Sasian appears based on a POSITA stopping at an arbitrary point in the design
`
`process. Apple has the burden to show obviousness, and that a POSITA would
`
`have modified Ogino Example 5 to reach the specific embodiment in the Pe-
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`tition. 35 U.S.C. § 316(e). Apple fails to demonstrate why a POSITA would
`
`have ended up at the specific embodiments set forth in the Petition, which just
`
`happen to allegedly meet the claim limitations of the ‘647 patent. To do so
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`would require the POISTA to select from a large variety of potential outcomes.
`
`This is not selecting from a small and finite number of alternatives. See Eisai
`
`Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353 (Fed. Cir. 2008).
`
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`C. A POSITA Would Have Considered Manufacturability When
`Combining Ogino Example 5 and Chen II
`Apple argues that the manufacturability of the lens is irrelevant and
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`“claims 1 and 4 do not include any manufacturing-based requirements.” Re-
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`ply at 6 (emphasis in original). But this ignores that Dr. Sasian stated that a
`
`POSITA “would have had experience in analyzing, tolerancing, adjusting, and
`
`optimizing multi-lens systems for manufacturing.” Ex. 1003, ¶19. There can
`
`be no dispute that manufacturing would certainly have been consideration for
`
`a POSITA deciding whether and how to modify Ogino Example 5 in view of
`
`Chen II, both of which are directed toward lens assemblies for cell phones.
`
`Ex. 1005, 1:10-15; Ex. 1008, 1:6-8. Apple says that the issues of mass manu-
`
`facturing should be ignored. Reply at 10. But as cell phones are designed for
`
`mass manufacturing, lens assemblies designed for cell phones would also be
`
`designed for mass manufacturing.
`
`Apple continues to misunderstand Patent Owner’s arguments involving
`
`manufacturability. It is not directed toward the claim limitations, but rather to
`
`whether a POSITA, when looking to combine two references directed to cell
`
`phone cameras, would have considered manufacturability (they would have).
`
`That Patent Owner argued otherwise with respect to a different combination
`
`says nothing about the current issues with Ogino and Chen II.
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`Apple also asserts that Patent Owner’s position on addressing manufac-
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`turability is inconsistent with prior positions in another IPR proceeding. Reply
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`at 8-9. But this ignores that those prior positions were taken in contrast to
`
`Apple’s position that a POSITA would consider manufacturing when combin-
`
`ing references. Ex. 1030 at ¶ 120. In fact, the Board in IPR2019-00030 spe-
`
`cifically held that “[w]e disagree that a person having ordinary skill in optical
`
`lens design at the time of the ’568 patent would not consider ‘the limits of
`
`fabrication’ such as those discussed in Beich, particularly in light of Beich’s
`
`disclosure that ‘it is important that the designer has a basic understanding of
`
`the manufacturing process and of the limits of size and tolerances that might
`
`be expected of the finished optics.’” IPR2019-00030, Paper No. 32, Final
`
`Written Decision, at 44 (quoting Ex. 1020 (Ex. 1007 of the present IPR) at 7).
`
`Thus, Patent Owner’s position is consistent with prior Board decisions.
`
`Apple argues that the ‘647 patent contains at least one example that
`
`cannot be manufactured. Reply at 12. But an obviousness analysis is different
`
`than how a POSITA would analyze the teachings of a specific patent. Here, a
`
`POSITA would understand how to modify the ‘647 patent to make a lens as-
`
`sembly that is manufacturable. 35 U.S.C. § 112. This is consistent with the
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`skills of a POSITA, as Dr. Sasian admits. Ex. 1003, ¶ 19. However, that same
`
`8
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`POSITA, when modifying Ogino Example 5 in view of Chen II, would not
`
`have stopped with a design that was not manufacturable. Instead, the POSITA
`
`would have continued modifying the design until it could be manufactured.
`
`D. Dr. Sasian Used Different Starting Vignetting in Ogino Example 5
`Based on the Patent Claims at Issue
`Apple first argues that the difference between Dr. Sasian’s relative illu-
`
`mination graph for the unmodified Ogino Example 5 starting point in this IPR
`
`and the relative illumination graph for the unmodified Ogino Example 5 that
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`he started from in IPR2020-00897 is “due to adjustments in vignetting.” Reply
`
`at 15. But despite being asked on two separate occasions, Dr. Sasian could not
`
`explain why he made different vignetting choices for Ogino Example 5 or
`
`what those different vignetting choices were. Ex. 2010, July 16, 2021, Sasian
`
`Dep. Tr. at 71:12-20; Ex. 2003, February 19, 2021, Sasian Dep. Tr. at 149:16-
`
`23. This is despite Dr. Sasian’s testimony that “all the information all the in-
`
`formation about vignetting is contained in the drawing. With the drawing, a
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`person of skill would have known the amount of vignetting there, because the
`
`rays are showing and it can be reproduced.” Id. at 150:18-22.
`
` Even though all of the information is present in the drawings, Dr.
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`Sasian made different choices in selecting his vignetting for starting with the
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`unmodified Example 5 of Ogino depending upon which patent claims he was
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`9
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`looking to invalidate. It is improper to “[use] that which the inventor taught
`
`against its teacher.” In re Lee, 277 F.3d 1338, 1343 (Fed. Cir. 2002).
`
`Therefore, Ground 1 should be rejected and claim 1 and 4, and those
`
`that depend from them, should be found not unpatentable.
`
`IV. APPLE HAS FAILED TO DEMONSTRATE THAT
`CLAIMS 2, 3, 5, AND 8-11 ARE OBVIOUS OVER OGINO’S
`EXAMPLE 5 IN VIEW OF CHEN II AND BAREAU
`A. Dr. Sasian Does Not Use the Lens Design Process That a POSITA
`Would Have Used
`Apple continues to argue that Dr. Sasian used the same process as a
`
`POSITA would have in modifying Ogino Example 5. Reply at 5. But the pro-
`
`cess used by Dr. Sasian appears based on a POSITA stopping at an arbitrary
`
`point in the design process. Apple has the burden to show obviousness, and
`
`that a POSITA would have modified Ogino Example 5 to reach the specific
`
`embodiment in the Petition. 35 U.S.C. § 316(e). Apple fails to demonstrate
`
`why a POSITA would have ended up at the specific embodiments set forth in
`
`the Petition, which just happen to allegedly meet the claim limitations of the
`
`‘647 patent.
`
`Dr. Sasian’s design process is not how a POSITA would have designed
`
`a lens assembly. Dr. Milster’s example of a lens design process involved a
`
`“step-wise” process for allowing small changes to many parameters at the
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`same time. See, e.g., POR at 41-44; Ex. 2001, ¶¶101-103. In doing so, Dr.
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`Milster’s process allowed a design that obtained the “locally best result.” Id.
`
`at ¶103. This, and not the predetermined process of Dr. Sasian, is how a
`
`POSITA would approach lens assembly design.
`
`B. A POSITA Would Not Design Lenses that Touch
`Apple also asserts that its modification of Ogino Example 5 does not
`
`include overlapping lenses. Reply at 18. However, a visual inspection of the
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`magnified figures show that both are touching. Id. at 19. Even Dr. Sasian
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`admits that lenses L4 and L5 in both modifications are touching each other.
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`Ex. 2010, July 16, 2021, Sasian Dep. Tr. at 91:14-92:14; 92:18-23. Touching
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`would not have been within the manufacturing tolerances of the lenses. POR
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`at 48-49.
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`Apple and Dr. Sasian try to bypass this by arguing that “a POSITA
`
`would not reject touching lenses that ‘are designed to be that way.’” Replay
`
`at 20; Ex. 1037, ¶ 40. But Dr. Sasain only gives the example of a cemented
`
`doublet for such a lens design. Ex. 1037, ¶ 40. And Dr. Sasian admits that lens
`
`L4 and L5 for the first and second modified Ogino Example 5 are not designed
`
`to be cemented doublet lenses. Ex. 2010, July 16, 2021, Sasian Dep. Tr. at
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`95:1-15. Thus, a POSITA would not have stopped at this result.
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`C. A POSITA Would Have Considered Manufacturability When
`Combining Ogino Example 5, Chen II, and Bareau
`Apple says that the issues of manufacturing should be ignored. Reply
`
`at 20. Ogino Example 5, Chen II, and Bareau are all are directed toward lens
`
`assemblies for cell phones. Ex. 1005, 1:10-15; Ex. 1008, 1:6-8; Ex. 1012, at
`
`1. As cell phones are designed for manufacturing, lens assemblies designed
`
`for cell phones would also be designed for manufacturing.
`
`V. APPLE HAS FAILED TO DEMONSTRATE THAT CLAIM
`6 IS OBVIOUS OVER OGINO’S EXAMPLE 5 IN VIEW OF
`CHEN II, BAREAU, AND KINGSLAKE
`A. Dr. Sasian Does Not Use the Lens Design Process That a POSITA
`Would Have Used
`Apple continues to argue that Dr. Sasian used the same process as a
`
`POSITA would have used to modify Ogino Example 5. Reply at 22. For the
`
`same reasons noted above, Apple’s actual design process is not how a POSITA
`
`would have done it, but is actually consistent with a person using the ‘647
`
`patent claims to guide the design. As such, Apple’s analysis is wrong.
`
`B. A POSITA Would Not Design Lenses that Effectively Touch
`
`Apple also asserts that its modification of Ogino Example 5 does not
`
`include overlapping lenses. Reply at 23. But Dr. Sasian admits that lenses L4
`
`and L5 are within a few microns of each other. Ex. 2010, July 16, 2021, Sasian
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`Dep. Tr. at 97:1-11. Considering the “rules of thumb” identified by Beich (Ex.
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`1007), the distance separating these two lenses at the closest point is so small
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`as to be essentially touching. POR at 55-56. Such a small distance would not
`
`have been within the manufacturing tolerances of the lenses. POR at 56. Thus,
`
`a POSITA would not have stopped at this result.
`
`C. A POSITA Would Have Considered Manufacturability When
`Combining Ogino Example 5, Chen II, Bareau, and Kingslake
`Apple argues that no issues with manufacturability are identified in the
`
`Patent Owner’s response. Reply at 25. But this ignores the lens essentially
`
`touching as described above. This is most certainly an issue with manufactur-
`
`ability.
`
`D. Relative Illumination Is a Factor a POSITA Would Have Consid-
`ered
`Apple ignores the complete teachings of both Ogino and Bareau when
`
`seeking to modify Ogino Example 5. Apple relies upon Bareau as motivation
`
`for a POSITA to modify Ogino Example 5 to have an F-number of 2.8. Paper
`
`No. 1, Petition for Inter Partes Review of U.S. Patent No. 10,317,647 (“Pet.”)
`
`at 47; Ex. 1003, ¶ 74. But neither Apple nor Dr. Sasian ever explain why a
`
`POSITA would have selected Ogino Example 5 and changed the F-number
`
`instead of modifying Ogino Examples 1-3, which all have f-numbers below
`
`13
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`Case No. IPR2020-00896
`U.S. Patent No. 10,317,647
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`2.8. Ex. 1005, Figs. 8-10. Without such an explanation, Apple’s choice is
`
`merely impermissible use of the ‘647 patent as guidance.
`
`Further, the modified Ogino Example 5 ignores other teachings of Bar-
`
`eau. An obviousness determination requires assessing “the scope and content
`
`of the prior art.” Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17
`
`(1966). Among other things, Bareau teaches that the relative illumination
`
`should be greater than 50%, something that modified Ogino Example 5 does
`
`not achieve. Ex. 1012 at 3. Dr. Durand recognizes that Bareau “is
`
`telling a person of ordinary skill in the art to be aware of the relative illumi-
`
`nation of a lens assembly.” Ex. 2010, July 16, 2021, Sasian Dep. Tr. at 49:2-
`
`6. He also admits that relative illumination is an important consideration in
`
`the field of cell phone cameras, which is the field of invention of the Ogino
`
`patent. Id. at 49:14-50-10; Ex. 1005, 1:10-15. To a POSITA looking to modify
`
`Ogino Example 5 with Bareau, the relative illumination would have been an
`
`important criterion to consider.
`
`But Apple, and Dr. Durand, ignore relative illumination. The modified
`
`Ogino Example 5 has a relative illumination of about 45% at the farthest edge
`
`of the field. POR at 68; Ex. 1003 at p. 116. This is below Bareau’s teaching of
`
`50% or greater. Ex. 1012 at 3. Thus, Apple only relies on Bareau when
`
`14
`
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`Case No. IPR2020-00896
`U.S. Patent No. 10,317,647
`
`convenient, and otherwise ignores its teachings. However, “[i]t is impermis-
`
`sible within the framework of section 103 to pick and choose from any one
`
`reference only so much of it as will support a given position, to the exclusion
`
`of other parts necessary to the full appreciation of what such reference fairly
`
`suggests to one of ordinary skill in the art.” In re Wesslau, 353 F.2d 238, 241
`
`(CCPA 1965); see also Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc.,
`
`796 F.2d 443, 449-49 (Fed. Cir. 1986) (holding that the district court, by fail-
`
`ing to consider a prior art reference in its entirety, ignored portions of the ref-
`
`erence that led away from obviousness). Moreover, Apple has argued, and the
`
`Board has found, that a “person of skill ‘would have been aware of lens spec-
`
`ifications related to mobile phones, as evidenced by Bareau,’ who suggests a
`
`lens specification having relative illumination greater than 50% at the edge of
`
`the field.” IPR2018-01140, Paper 37, p. 30. (quoting the IPR2018-01140 Pe-
`
`tition at 40-41).
`
`Therefore, Apple approach to modifying Ogino Example 5 in view of
`
`Chen II, Bareau, and Kingslake is wrong and should be rejected.
`
`15
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`Case No. IPR2020-00896
`U.S. Patent No. 10,317,647
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`VI. APPLE HAS FAILED TO DEMONSTRATE THAT CLAIM
`7 IS OBVIOUS OVER HSIEH AND BEICH
`A. A POSITA Would Have Considered Manufacturability When
`Combining Hsieh and Beich
`Apple again mischaracterizes Patent Owner’s position by arguing that
`
`the claims do not require any manufacturing tolerances. Reply at 27. Apple
`
`further says that “Beich’s ‘rule of thumb’ is merely used to show how a
`
`POSITA would have chosen the diameter of lens L1.” Id. But this is wrong.
`
`And prior Board decisions state that a POSITA would have considered manu-
`
`facturability. IPR2019-00030, Paper No. 32, Final Written Decision, at 44.
`
`B. Dr. Sasian Does Not Use the Lens Design Process That a POSITA
`Would Have Used
`Apple again does not demonstrate why a POSITA would have stopped
`
`its design process to end up at the combination of Hsieh and Beich. And again,
`
`this modification of Hsieh and Beich just happens to allegedly meet the limi-
`
`tations of the claims of the ‘647 patent. This occurs by modifying only one
`
`parameter. But as noted above, a POSITA looking to improve performance
`
`would have investigated varying most all of the parameters. Without a reason
`
`for ignoring how a POSITA would have designed a lens assembly, this com-
`
`bination must be rejected.
`
`16
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`Case No. IPR2020-00896
`U.S. Patent No. 10,317,647
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`VII. APPLE HAS FAILED TO DEMONSTRATE THAT CLAIM
`12 IS OBVIOUS OVER CHEN, IWASAKI, AND BEICH
`A. Apple Did Not Address All the Limitations in Its Petition
`Apple argues that the Petition “shows how Chen teaches both [Limita-
`
`tions 8.13 and 8.14.].” Reply at 28. But this is a new position never previously
`
`offered in either the Petition or Dr. Sasian’s declaration.
`
`For limitation 8.13, Apple cites to disclosures in Chen (Ex. 1020) that
`
`were applied against limitation 8.5. Reply at 29. Apple then asserts that “the
`
`chart provided in the Petition and Dr. Sasián’s declaration in applying Ogino’s
`
`Example 5 to limitation 8.14 definitively shows that Chen’s lens elements
`
`(with either a refractive index (“njd”) of 1.545 and Abbe No. (“vjd”) of 55.987
`
`or njd of 1.642 and vjd of 22.409) are substantially similar to Ogino’s lenses
`
`which are also plastic.” Reply at 31.
`
`In support of this sentence, Apple cites to page 61 of its Petition. But
`
`this citation is completely misleading. The citation to page 61 of the Petition
`
`involves arguments applying the combination of Example 5 of Ogino, Chen
`
`II, and Bareau to limitation 8.14. Pet. at 54-61. It says nothing about the com-
`
`bination of Chen, Iwaskai and Beich, which is what Apple and Dr. Sasian ap-
`
`ply to claim 12 (which depends from claim 8).
`
`17
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`Case No. IPR2020-00896
`U.S. Patent No. 10,317,647
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`It is critical to remember that Apple’s petition uses to completely dif-
`
`ferent references where the lead inventor is named Chen. For Ground 6, claim
`
`12 (and thus claim 8 from which it depends), Apple relies on what it calls the
`
`Chen patent (Ex. 1020) which is U.S. Patent No. 10,324,272. For Ground 3,
`
`which includes claim 8, Apple relies on what it calls the Chen II patent (Ex.
`
`1008), which is U.S. Patent No. 10,324,273. These are two different patents
`
`which are completely unrelated. The inventors are different, the assignees are
`
`different, and the specifications are different. Apple’s attempt to interchange
`
`the teachings of Chen (Ex. 1020) and Chen II (Ex. 1008) is wrong and mis-
`
`leading.
`
`Regardless, Apple is applying, for the first time in this proceeding,
`
`some prior art combination to the limitations 8.13 and 8.14 of claim 8 in the
`
`context of claim 12 under Ground 6. Reply at 28-30. This is all new argument.
`
`There was no previous application in the Petition of any combination, be it
`
`Chen, Iwaskai, and Beich or Example 5 of Ogino, Chen II and Bareau, to
`
`limitations 8.13 and 8. 14 of claim 8 in the context of claim 12.
`
`Apple argues that it cites no new evidence and merely expands on a
`
`previously argued rationale as to why the prior art disclosures are insubstan-
`
`tially distinct from the challenged claims.” Reply at 31 (citing Ericsson Inc,
`
`18
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`
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`Case No. IPR2020-00896
`U.S. Patent No. 10,317,647
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`v. Intellectual Ventures I LLC, 901 F.3d 1374 (Fed. Cir. 2018). But this is
`
`wrong as set forth above.
`
`And at a minimum, the arguments for at least claim limitation 8.14 are
`
`completely new. There is no
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