Inter Partes Review of
`Patent No. 10,317,647
`
`Apple Inc. v. Corephotonics, LTD., Case No. IPR2020-00896
`
`Michael Parsons
`Jordan Maucotel
`Haynes and Boone, LLP
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`1
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`Patent No. 10,317,647
`
`Apple Inc. v. Corephotonics, LTD., Case No. IPR2020-00896
`
`Michael Parsons
`Jordan Maucotel
`Haynes and Boone, LLP
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`1
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`
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`Grounds for challenging the claims of the ’647 patent
`
`Ground Challenged Claims
`
`References
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`1
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`2
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`3
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`4
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`5
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`6
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`1-3 and 5
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`1 and 4
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`2, 3, 5, and 8-11
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`6
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`7
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`12
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`Iwasaki (Ex. 4) (undisputed)
`
`Ogino (Ex. 5) and Chen II
`
`Ogino (Ex. 5), Chen II, and Bareau
`Ogino (Ex. 5), Chen II, Bareau, and
`Kingslake
`Hsieh (Ex. 1) and Beich
`
`Chen (Ex. 1), Iwasaki, and Beich
`
`Basis
`
`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`Petition at 9-10.
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`2
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`2
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`Obviousness only requires a motivation to combine the prior art
`and a reasonable expectation of success in doing so.
`
`• Obviousness is a question of whether a POSITA would have been:
`•
`“motivated to combine the teachings of the prior art references to achieve the
`claimed invention, and
`that the skilled artisan would have had a reasonable expectation of success in
`doing so.”
`
`•
`
`InTouch Techs., Inc. v. VGO Comms., 751 F.3d 1327, 1347 (Fed. Cir. 2014).
`Note that in IPR, the standard is a “preponderance of the evidence.” 35 U.S.C. § 316(e).
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`3
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`3
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`“Motivation to combine” is whether there is an “apparent reason to
`combine” the prior art “in the fashion claimed” by the patent.
`
`• The Sur-Reply argues throughout that Apple failed to provide reasons:
`• why a POSITA would have selected Ogino’s Ex. 5 in the first place (see p. 13) and
`• why a POSITA would have ended up at Dr. Sasián's examples in the Petition (see
`pp. 6, 10-11, 16).
`
`• These arguments fail to apply the proper obviousness standard:
`
`InTouch Techs., Inc. v. VGO Comms., 751 F.3d 1327, 1347 (Fed. Cir. 2014).
`• The claims here are directed to five-lens miniature telephoto lens assemblies and
`Ogino teaches a five-lens miniature telephoto lens assembly in Ex. 5 that would have
`been modified based on other teachings in the prior art.
`
`• The only relevant question here is what was presented in the Petition — whether a
`POSITA would have been motivated to modify Ogino’s Ex. 5 in “the fashion claimed by
`the patent at issue” — not whether a POSITA could have chosen other references or
`made other unrelated modifications. See Petitioner Reply at 5.
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`4
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`4
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`
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`“Reasonable expectation of success” only means “reasonable
`probability of success,” not absolute certainty.
`
`• The Sur-Reply argues that a POSITA modifying a lens could have made various
`modifications to achieve the desired goal (e.g., a reduced F#) and that Petitioner must
`show why a POSITA would have chosen the specific embodiment that meets the claim
`limitation (see pp. 6, 10-11, 16).
`• These argument fail because they require showing a certainty of success (of
`reaching the claimed limitation).
`
`• A “reasonable expectation of success” is simply “a reasonable probability of success” in
`achieving the claims at issue, “not absolute” certainty of achievement.
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`5
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`5
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`Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007).
`
`
`
`“Reasonable expectation of success” only means “reasonable
`probability of success,” not absolute certainty.
`
`• The Sur-Reply argues that a POSITA would have used Dr. Milster’s lens modification
`technique (many parameters vary at the same time) and not Dr. Sasián's (few parameters
`vary at the same time) (see pp. 6, 10, 16).
`• This argument fails because Dr. Sasián testified that a POSITA would use his
`technique (see APPL-1037, ¶9; APPL-1017, p.168; APPL-1028, 21:6-18), and
`there is no evidence that a POSITA would not use it where the POSITA desired
`to change one limitation (e.g., f-number).
`• The Petition shows that a POSITA using Dr. Sasián's technique had a
`reasonable probability of success in achieving each proposed combination.
`
`• A “reasonable expectation of success” is simply “a reasonable probability of success” in
`achieving the claims at issue, “not absolute” certainty of achievement. (See case law on
`previous slide)
`
`• A showing of obviousness requires
`only proof of motivation to combine
`in the way set out by the Petition,
`not motivation not to combine in
`some other way.
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`Outdry Techs. v. Geox S.P.A., WL 2603139 (Fed. Cir. 2007).
`6
`6
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`
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`Discussion Summary
`The Sur-Reply argues that Dr. Sasián’s Reply declaration improperly
`relies on the challenged claims. It does NOT.
`
`Ground 2: Obvious to modify Ogino’s Ex. 5 L2 lens to meniscus
`(object-side surface from slightly negative to slightly positive).
`
`Ground 3: Obvious to modify Ogino’s Ex. 5 lens to achieve a
`desirable D7 spacing.
`
`Ground 4: Obvious to modify Ogino’s Example 5 to decrease the f-
`number to 2.45 resulting in L1 with convex image-side surface.
`
`Grounds 2-4: Patent Owner has not shown that Dr. Sasián's examples
`cannot be made.
`Ground 5: A POSITA would have been motivated to combine
`Hsieh’s Ex. 1, unmodified, with the teachings of Beich.
`Ground 6: Chen’s Ex. 1, combined with the thinner cover glass of
`Iwasaki and the teachings of Beich, meet the challenged claims.
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`7
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`7
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`Dr. Sasián confirmed in deposition that he did not consider the
`patent at issue in deciding how to modify Ogino’s lens designs.
`• Patent Owner’s Sur-Reply in IPR2020-00897 cites to Dr. Sasián’s deposition testimony
`as support that he used the claims at issue as a roadmap. See IPR2020-00897, Sur-
`Reply at 3.
`
`• Dr. Sasián's testimony says the opposite:
`
`Ex. 2003 (Sasián depo transcript), 171:1-13 cited in IPR2020-00897 Sur-Reply at 3.
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`8
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`8
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`The Sur-Reply mischaracterizes Dr. Sasián’s Reply declaration
`as improperly relying on the claims. This is INCORRECT.
`
`• Patent Owner cites to ¶5 of Dr. Sasián's declaration in IPR2020-00897 and alleges that
`Apple’s positions “are directed toward the claims of the ’647 patent, not to the best lens
`assembly.” See Sur-Reply at 2-4, 6, 9-10, 12, 13-14, 16.
`
`• Patent Owner’s argument mischaracterizes ¶5’s discussion—that a POSITA would take
`incremental steps within the scope of Ogino’s patent—to include the patent at issue.
`
`Patent Owner treats the
`phrase “a patent” (referring
`to Ogino) as if it were “the
`patent at issue here”.
`
`Dr. Sasián's ¶5 provided
`the opinion that a POSITA
`would have made minimum
`changes to Ogino’s lenses
`to maintain the lens within
`the scope of Ogino.
`
`IPR2020-00897, APPL-1037, ¶5 cited in Sur-Reply at 1-2.
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`9
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`9
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`
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`Discussion Summary
`The Sur-Reply argues that Dr. Sasián’s Reply declaration improperly
`relies on the challenged claims. It does NOT.
`
`Ground 2: Obvious to modify Ogino’s Ex. 5 L2 lens to meniscus
`(object-side surface from slightly negative to slightly positive).
`
`Ground 3: Obvious to modify Ogino’s Ex. 5 lens to achieve a
`desirable D7 spacing.
`
`Ground 4: Obvious to modify Ogino’s Example 5 to decrease the f-
`number to 2.45 resulting in L1 with convex image-side surface.
`
`Grounds 2-4: Patent Owner has not shown that Dr. Sasián's examples
`cannot be made.
`Ground 5: A POSITA would have been motivated to combine
`Hsieh’s Ex. 1, unmodified, with the teachings of Beich.
`Ground 6: Chen’s Ex. 1, combined with the thinner cover glass of
`Iwasaki and the teachings of Beich, meet the challenged claims.
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`10
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`10
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`Ground 2: Obvious to modify Ogino’s Ex. 5 L2 lens to meniscus
`(object-side surface from slightly negative to slightly positive).
`
`• Ex. 5 has the best telephoto ratio (TTL/EFL) of Ogino’s two telephoto designs:
`
`Ogino
`
`Ex. 1
`
`Ex. 2
`
`Ex. 3
`
`Ex. 4
`
`Ex. 5
`
`Ex. 6
`
`TTL mm
`(+CG)
`TTL/EFL
`
`F-number
`
`4.239
`
`1.027
`
`2.47
`
`4.223
`
`1.025
`
`2.46
`
`4.219
`
`1.025
`
`2.45
`
`4.362
`
`0.958
`
`3.04
`
`5.273
`
`0.885
`
`3.94
`
`4.489
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`1.005
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`2.64
`
`See APPL-1005.
`
`• The ’647 patent discusses the desirability of a small TTL/EFL ratio:
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`APPL-1001, 1:45-50.
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`11
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`11
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`
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`Modifying Ogino’s Ex. 5 second lens to meniscus based on
`Chen II would have been obvious to improve performance.
`
`Ogino’s Example 5
`
`Modified Ogino’s Example 5
`(with L2 meniscus)
`
`APPL-1003 at 143 cited in Petition at 28.
`
`APPL-1003 at 147 cited in Petition at 34.
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`12
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`12
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`The Board already decided that it would have been obvious for a
`POSITA to modify Ogino based on Chen II
`
`• The Board decided this issue in IPR2018-01140 (for the parent ‘032 patent) with
`the same references and same reasons to combine.
`
`IPR2018-01140, Final Written Decision (Paper 37) at 34 cited by Petition at 36.
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`13
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`13
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`The Board already decided that it would have been obvious for a
`POSITA to modify Ogino based on Chen II’s meniscus teachings.
`
`• Again, the Board decided this issue in with the same references and same
`reasons to combine.
`
`IPR2018-01140, Final Written Decision (Paper 37) at 37 cited by Petition at 36.
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`14
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`14
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`The Board already decided that it would have been obvious for a
`POSITA to modify Ogino based on Chen II
`
`• The Board previously disagreed with Patent Owner’s arguments that changing the
`shape of the second lens is “not selecting from a small and finite number of
`alternatives”:
`
`IPR2018-01140, Final Written Decision (Paper 37) at 36-37 cited in Petition at 36.
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`15
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`15
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`A POSITA would have understood that vignetting in Ogino’s
`second lens is because of its shape.
`
`• The Sur-Reply argues vignetting at the second lens is not due to the shape (see p.5) but
`Dr. Sasián’s rebuttal analysis in the Reply shows that changing the L2 lens shape
`improves vignetting:
`Changing only this surface
`
`5 rays
`vignetted
`
`4 rays
`vignetted
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`Petitioner Reply at 3.
`16
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`16
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`
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`A POSITA would have been motivated to change the shape of
`Ogino’s Example 5 second lens based on Chen II
`
`• Modifying Ogino’s Ex. 5 second lens to meniscus improves relative illumination,
`the same reason the Board found for modifying Ex. 6:
`
`L2 modified meniscus
`
`L2 original
`
`Ex. 1003, ¶ 62, 66 cited in Petition at 31, 35.
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`17
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`17
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`
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`Discussion Summary
`The Sur-Reply argues that Dr. Sasián’s Reply declaration improperly
`relies on the challenged claims. It does NOT.
`
`Ground 2: Obvious to modify Ogino’s Ex. 5 L2 lens to meniscus
`(object-side surface from slightly negative to slightly positive).
`
`Ground 3: Obvious to modify Ogino’s Ex. 5 lens to achieve a
`desirable D7 spacing.
`
`Ground 4: Obvious to modify Ogino’s Example 5 to decrease the f-
`number to 2.45 resulting in L1 with convex image-side surface.
`
`Grounds 2-4: Patent Owner has not shown that Dr. Sasián's examples
`cannot be made.
`Ground 5: A POSITA would have been motivated to combine
`Hsieh’s Ex. 1, unmodified, with the teachings of Beich.
`Ground 6: Chen’s Ex. 1, combined with the thinner cover glass of
`Iwasaki and the teachings of Beich, meet the challenged claims.
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`18
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`18
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`A POSITA would have been motivated to modify Ogino’s Ex. 5
`lens assembly to have an f-number of 2.8 and larger D7 gap.
`
`• Ex. 5 with meniscus L2 and F=2.8
`
`• Ex. 5 with meniscus L2, F=2.8, and larger
`D7 gap
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`19
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`19
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`Petitioner Reply at 50 citing Petition at 52-59, APPL-1003 at 151, 155.
`
`
`
`Dr. Sasián showed how a POSITA would have lowered the
`f-number of Ogino’s Example 5 be L2 meniscus and F=2.8
`
`• One possible modification to Example 5 to provide a meniscus L2 lens based on Chen II and
`F=2.8 based on Bareau:
`
`APPL-1003 at 151 cited in Petition at 50.
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`20
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`20
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`A POSITA would have decrease the F-number of Ogino’s Ex. 5 to
`2.8 based on Bareau’s lens specifications.
`
`• Bareau teaches typical lens specifications for use in cell phones including an F-
`number of 2.8 which indicates the amount of light preferred for a 1/4” sensor:
`
`APPL-1012 at 3 cited in Petition at 49.
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`21
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`21
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`Lowering the F-number of a lens design is a
`well-known and desirable feature.
`
`• The need for lower f-numbers has been well known since the 1990s:
`
`APPL-1013 (Kingslake) at 104 cited in Petition at 64.
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`22
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`22
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`
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`A POSITA would have modified the gap between L3 and L4 of
`Ogino’s Ex. 5 according to Ogino’s conditional expression (10)
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`23
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`23
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`APPL-1005, 12:45-64 cited in Ex. 1003 at 84;
`Petition at 55.
`
`
`
`Dr. Sasian showed how a POSITA would have increased the D7
`gap of Ex. 5 according to conditional expression (10).
`
`• Dr. Sasián’s example shows a reasonable expectation of success in applying Ogino’s
`teaching of conditional expression (10) to Ogino’s Ex. 5:
`
`APPL-1003 at 155 cited in Ex. 1003, pp. 85-86; Petition at 56.
`
`Petition at 30.
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`24
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`24
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`
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`Increasing the D7 gap of Ogino’s Ex. 5 according to conditional
`expression (10) improves performance like relative illumination.
`
`• A POSITA would have experimented with Ogino’s Ex. 5 based on conditional expression
`(10) and found that a larger D7 gap provides better relative illumination.
`
`Ex. 1003, Appendix Fig. 3B cited in Petition at 57.
`
`Ex. 1003, Appendix Fig. 4B cited in Petition at 57.
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`25
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`25
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`
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`Discussion Summary
`The Sur-Reply argues that Dr. Sasián’s Reply declaration improperly
`relies on the challenged claims. It does NOT.
`
`Ground 2: Obvious to modify Ogino’s Ex. 5 L2 lens to meniscus
`(object-side surface from slightly negative to slightly positive).
`
`Ground 3: Obvious to modify Ogino’s Ex. 5 lens to achieve a
`desirable D7 spacing.
`
`Ground 4: Obvious to modify Ogino’s Example 5 to decrease the f-
`number to 2.45 resulting in L1 with convex image-side surface.
`
`Grounds 2-4: Patent Owner has not shown that Dr. Sasián's examples
`cannot be made.
`Ground 5: A POSITA would have been motivated to combine
`Hsieh’s Ex. 1, unmodified, with the teachings of Beich.
`Ground 6: Chen’s Ex. 1, combined with the thinner cover glass of
`Iwasaki and the teachings of Beich, meet the challenged claims.
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`26
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`26
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`
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`A POSITA would have been motivated to further decrease the f-
`number of Ogino’s Example 5 lens to 2.45.
`• Based on the motivation in the art to achieve lower f-numbers, a POSITA would have
`been motivated to lower Ogino’s Example 5 to the lowest f-number taught in Ogino’s
`examples.
`
`APPL-1013 at 104 cited in Petition at 64.
`
`Ogino
`
`Ex. 1
`
`Ex. 2
`
`Ex. 3
`
`Ex. 4
`
`Ex. 5
`
`Ex. 6
`
`TTL (mm)
`(+CG)
`TTL/EFL
`
`F-number
`
`4.239
`
`1.027
`
`2.47
`
`4.223
`
`1.025
`
`2.46
`
`4.219
`
`1.025
`
`2.45
`
`4.362
`
`0.958
`
`3.04
`
`5.273
`
`0.885
`
`3.94
`
`4.489
`
`1.005
`
`2.64
`
`See APPL-1005.
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`27
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`27
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`
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`Dr. Sasián showed how a POSITA would have lowered Ogino’s
`Ex. 5 to F=2.45, resulting in a convex image-side surface.
`
`• Only minimal changes to the modified Ex. 5 (F=2.8 and meniscus L2) are required:
`(1) Open the aperture to F/2.45,
`(2) Optimize lens for image quality.
`
`APPL-1003 at 159 cited in Petition at 70.
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`28
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`28
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`
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`The claims of the ’647 patent do not include
`relative illumination requirements.
`
`• The Sur-Reply argues that Ex. 5’s “relative illumination of about 45%” is unacceptable
`because it falls below Bareau’s “typical lens specifications.” (see pp. 14-15).
`• Although relative illumination >50% may be a motivation for some applications, the
`fact that a modified lens design falls below this figure would not have discouraged a
`POSITA from using the modified lens design. It is not a requirement for all designs.
`
`APPL-1012 (Bareau) at 3 cited in Petition at 35.
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`29
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`29
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`
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`Discussion Summary
`The Sur-Reply argues that Dr. Sasián’s Reply declaration improperly
`relies on the challenged claims. It does NOT.
`
`Ground 2: Obvious to modify Ogino’s Ex. 5 L2 lens to meniscus
`(object-side surface from slightly negative to slightly positive).
`
`Ground 3: Obvious to modify Ogino’s Ex. 5 lens to achieve a
`desirable D7 spacing.
`
`Ground 4: Obvious to modify Ogino’s Example 5 to decrease the f-
`number to 2.45 resulting in L1 with convex image-side surface.
`
`Grounds 2-4: Patent Owner has not shown that Dr. Sasián's examples
`cannot be made.
`Ground 5: A POSITA would have been motivated to combine
`Hsieh’s Ex. 1, unmodified, with the teachings of Beich.
`Ground 6: Chen’s Ex. 1, combined with the thinner cover glass of
`Iwasaki and the teachings of Beich, meet the challenged claims.
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`30
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`30
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`
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`Patent Owner’s expert admits that his opinion on “manufacturing”
`only considered injection molding for large-scale production.
`
`APPL-1028, 83:18-25.
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`31
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`31
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`
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`Grounds 2-4: An inability to mass manufacture lenses would not
`have discouraged a POSITA from using a modified lens design.
`
`• The Sur-Reply argues that a POSITA would have considered various possible mass
`manufacturing considerations when designing a lens, and that Dr. Sasián's designs are
`not manufacturable (see pp. 7-9, 11, 12, 13, 16). This fails for several reasons including:
`(1) It is undisputed that a lens assembly like Dr. Sasián's examples can be useful for
`other purposes outside of large-scale manufacturing (see slide 33);
`(2) It is undisputed that diamond turning can be used to manufacture Dr. Sasián's lens
`examples, particularly if large-scale manufacturing is not required (see slides 34-36);
`(3) The challenged claims in Grounds 2-4 do not recite any limitations directed to how
`the lens assembly is to be made, i.e., the Rules of Thumb provided in Beich or any
`others provided by Dr. Milster (see slide 37);
`(4) Patent Owner argued the exact opposite in IPR2019-00030 — that a POSITA
`would not know or care about manufacturing when designing a lens (see slide 38); and
`(5) Even if injection molding manufacturing preferences were required, tolerances are
`actually much smaller than in Beich’s rules, down to 0.5 µm (0.0005 mm) (see slide
`39).
`
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`32
`
`32
`
`
`
`(1) Dr. Sasián’s modifications Ex. 5 are suitable for purposes
`outside of large-scale manufacturing.
`
`• Patent Owner does not dispute that a POSITA could and would have modified Ogino’s
`examples for purposes other than mass manufacturing, such as research, academic
`applications, prototyping, and small-scale manufacturing.
`
`• Dr. Milster even agrees that a POSITA would design lenses for applications that do
`not involve any large-scale manufacturing, such as an international lens conference:
`
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`33
`
`33
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`APPL-1028, 182:3-14 cited in Petitioner Reply at 11.
`
`
`
`(2) Patent Owner does not dispute that the Dr. Sasián's examples
`can in fact be made using diamond turning.
`
`• Patent Owner’s expert does not dispute that the claims are not limited to mass
`manufacturing or the other purposes given by Dr. Sasián:
`
`. . .
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`34
`
`34
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`APPL-1028, 185:25-186:19.
`
`
`
`(2) Dr. Sasián’s showed, as referenced in the Reply, that his
`examples can in fact be made using diamond turning.
`
`• Diamond turning technology has been used for decades, can shape edge slope up to
`60 degrees, and can achieve tolerances of 10ths to 100ths of microns.
`
`APPL-1038 at 3 cited in Petitioner Reply at 11-12.
`
`APPL-1040 at 3 cited in Petitioner Reply at 11-12.
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`APPL-1039 at 11 cited in Petitioner Reply at 11-12.
`35
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`35
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`
`
`(2) Dr. Milster admits that his opinion on “manufacturing” only
`considered injection molding for large-scale production.
`
`APPL-1028, 183:2-7 cited in Petitioner Reply at 6.
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`36
`
`36
`
`
`
`(3) Dr. Milster admits that none of the claims challenged in
`Grounds 2-4 recite manufacturing limitations.
`
`• Dr. Mister admitted that manufacturing considerations are only recited in claims
`7 and 12, not challenged in Grounds 2-4, which rely on a later-filed CIP:
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`37
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`37
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`APPL-1028, 91:5-22 cited in Petitioner Reply at 6-7.
`
`
`
`(4) Patent Owner should not be allowed to take inconsistent
`positions on related patents having the exact same disclosure.
`
`• Patent Owner cannot argue that a POSITA would consider manufacturing to preserve
`patentability in this case (the ’647 patent) when it previously argue the exact opposite
`to preserve patentability of a parent patent (the ’568 patent) that relies on the exact
`same disclosure. (see Aylus Networks, Inc. v. Apple Inc., No. 2016-1599 (Fed. Cir.
`2017).
`
`APPL-1029 (PO Response in IPR2018-00030) at 4
`cited in Petitioner Reply at 8-9.
`
`APPL-1030 (Moore decl. in IPR2018-00030) ¶ 121
`cited in Petitioner Reply at 9.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`38
`
`38
`
`
`
`(5) Beich’s manufacturing considerations are “quick
`generalizations”, but actual tolerances are much more forgiving.
`
`• The Sur-Reply argues that Beich’s Rules of Thumb Tolerances are required
`for manufacturing Dr. Sasián's examples, but Beich’s rules are only “quick
`generalizations.”
`
`APPL-1007 (Beich) at 7 cited in Petitioner Reply at 11.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
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`39
`
`39
`
`
`
`Discussion Summary
`The Sur-Reply argues that Dr. Sasián’s Reply declaration improperly
`relies on the challenged claims. It does NOT.
`
`Ground 2: Obvious to modify Ogino’s Ex. 5 L2 lens to meniscus
`(object-side surface from slightly negative to slightly positive).
`
`Ground 3: Obvious to modify Ogino’s Ex. 5 lens to achieve a
`desirable D7 spacing.
`
`Ground 4: Obvious to modify Ogino’s Example 5 to decrease the f-
`number to 2.45 resulting in L1 with convex image-side surface.
`
`Grounds 2-4: Patent Owner has not shown that Dr. Sasián's examples
`cannot be made.
`Ground 5: A POSITA would have been motivated to combine
`Hsieh’s Ex. 1, unmodified, with the teachings of Beich.
`Ground 6: Chen’s Ex. 1, combined with the thinner cover glass of
`Iwasaki and the teachings of Beich, meet the challenged claims.
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`40
`
`40
`
`
`
`Modification to Hsieh is not required to meet the limitations of
`claim 7, only the application of Beich’s preferred lens diameter.
`
`• The Sur-Reply does not dispute that a POSITA would have combined Hsieh and Beich or
`that Hsieh’s Example 1 design meets all the limitations of the claim 7 as is (see pp. 16).
`
`•
`
`Instead, Patent Owner argues that a POSITA would have changed other unspecified
`parameters of Hseih to improve performance. However, Patent Owner does not dispute
`that Hsieh’s Example 1 lens already provides good performance.
`
`• A POSITA certainly could have varied
`more parameters if required for a
`particular application, but no
`modifications of Hsieh are needed to
`meet the limitations of claim 7.
`
`APPL-1021 (Hsieh), Fig.1 cited in Petition at 71.
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`41
`
`41
`
`
`
`Discussion Summary
`The Sur-Reply argues that Dr. Sasián’s Reply declaration improperly
`relies on the challenged claims. It does NOT.
`
`Ground 2: Obvious to modify Ogino’s Ex. 5 L2 lens to meniscus
`(object-side surface from slightly negative to slightly positive).
`
`Ground 3: Obvious to modify Ogino’s Ex. 5 lens to achieve a
`desirable D7 spacing.
`
`Ground 4: Obvious to modify Ogino’s Example 5 to decrease the f-
`number to 2.45 resulting in L1 with convex image-side surface.
`
`Grounds 2-4: Patent Owner has not shown that Dr. Sasián's examples
`cannot be made.
`Ground 5: A POSITA would have been motivated to combine
`Hsieh’s Ex. 1, unmodified, with the teachings of Beich.
`Ground 6: Chen’s Ex. 1, combined with the thinner cover glass of
`Iwasaki and the teachings of Beich, meet the challenged claims.
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`42
`
`42
`
`
`
`A POSITA would have replaced Chen’s Example 1 cover glass
`with Iwasaki’s thinner version to reduce the track length
`
`• The demand for thinner lens assemblies was known in 2013. One way to reduce this
`length is to reduce the thickness of the cover glass in a lens assembly.
`
`APPL-1009 (Iwasaki), 1:54-65 cited in Petition at 75.
`
`Chen:
`0.210 mm
`
`Iwasaki:
`0.145 mm
`
`• Patent Owner does not dispute that it would have been obvious to replace Chen’s cover
`glass with Iwasaki’s thinner cover glass.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`43
`
`43
`
`
`
`Beich’s Rules of Thumb were used to show how a POSITA would
`have chosen the first lens diameter of modified Chen’s Ex. 1.
`
`• Since the lens diameters for Chen’s Ex. 1 are not included in the lens prescription, a
`POSITA would have chosen a diameter for the first lens that meets the center-to-edge
`thickness ratio of 3:1 given by Beich.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`44
`
`44
`
`APPL-1003 at 168 cited in Petition at 76.
`
`
`
`The limitations of claims 8 and 12 are undisputedly taught
`by Chen’s example in Fig. 6 using a thinner cover glass.
`
`• The Sur-Reply argues that the Petition failed to show how elements 8.13 and 8.14 are
`met by Chen’s First Example in Fig. 6 relied on in the Petition (see pp. 17-19).
`• 8.13: “L4 and L5 are separated by a gap smaller than TTL/20”
`• 8.14: “wherein the five lens element are made of plastic”
`
`• All the law requires is that “the petition identifies, in writing and with particularity, each
`claim challenged, the grounds on which the challenge to each claim is based, and the
`evidence that supports the grounds for the challenge to each claim ….” 35 U.S.C. §
`316(a)(3).
`
`• The reasons to combine in the Petition clearly establish that Chen teaches all of the
`limitations of the claims except a lens diameter (taught by Beich) and a thinner cover
`glass (taught by Iwasaki). See Petition at 75-76, 78-81.
`
`• Patent Owner does not dispute that Chen’s First Example does in fact teach 8.13 and
`8.14.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`45
`
`45
`
`
`
`Limitation 8.13 is undisputedly taught by Chen’s First Example.
`
`• Chen meets limitation 8.13 (the L4 to L5 gap is < TTL/20), which is easily determined by
`using the TTL provided in [8.8] of 5.985 mm and the Air Gap between L4 and L5 as
`identified in Fig. 6 provided for [8.1] to [8.5].
`
`0.064 mm < 5.985 mm / 20 =
`0.064 mm < 0.29925 mm
`
`APPL-1020, Fig. 24 (annotated) cited in Petition at 91.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`46
`
`46
`
`
`
`Limitation 8.14 is undisputedly taught by Chen’s First Example.
`
`• Chen undisputedly meets limitation 8.14 (obvious that the lens elements are plastic)
`because it provides the abbe number and index of refraction for each lens, which
`indicates a plastic material. These were referenced in the Petition as indicating plastic.
`• L1, L3, L4: 1.545; 55.987
`See Ex. 1020 (Chen), Fig. 24 cited in Petition at 73, 79.
`• L2, L5:
`1.642; 22.409
`
`APPL-1018, p.27 cited in Petition at 62.
`
`Ex. 1020 (Chen), 7:11-23.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`47
`
`47
`
`
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