Trials@uspto.gov
`571-272-7822
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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 10,317,647
`____________
`
`Before BRYAN F. MOORE, MONICA S. ULLAGADDI, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`ULLAGADDI, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`Paper 33
`Date: December 7, 2021
`
`
`
`
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`IPR2020-00896
`Patent 10,317,647
`____________
`
`Before BRYAN F. MOORE, MONICA S. ULLAGADDI, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`ULLAGADDI, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision
`All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`Paper 33
`Date: December 7, 2021
`
`
`
`
`
`IPR2020-00896
`Patent 10,317,647 B2
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`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition to institute an inter partes
`review of claims 1–12 (“the challenged claims”) of U.S. Patent No.
`10,317,647 (Ex. 1001, “the ’647 patent”). Paper 2 (“Pet.”). Patent Owner
`did not file a preliminary response.
`We instituted trial on the challenged claims on all grounds set forth in
`the Petition on December 8, 2020. Paper 7 (“Inst. Dec.”). After institution,
`Patent Owner filed a Patent Owner Response (Paper 14, “PO Resp.”),
`Petitioner filed a Reply to Patent Owner’s Response (Paper 21, “Pet.
`Reply”), and Patent Owner filed a Sur-Reply (Paper 22, “PO Sur-Reply”).
`An oral hearing was held on September 8, 2021, and a copy of the transcript
`was entered in the record. Paper 32 (“Tr.”).
`We have jurisdiction pursuant to 35 U.S.C. § 6. This Decision is a
`Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to
`the patentability of the claims on which we instituted trial. Having reviewed
`the arguments and the supporting evidence, we determine that Petitioner has
`shown, by a preponderance of the evidence, that claims 1–11 of the ’647
`patent are unpatentable. We determine that Petitioner has not shown by a
`preponderance of the evidence that claim 12 of the ’647 patent is
`unpatentable.
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`BACKGROUND
`II.
`Related Proceedings
`A.
`Petitioner and Patent Owner identify the following corresponding
`district court proceeding: Corephotonics, Ltd. v. Apple Inc., No. 5:19-cv-
`04809 (N.D. Cal.) (“’4809 case”). Pet. 1; Paper 5, 1.1
`From the IPR2020-00897 proceeding, we are aware of a pending civil
`action, Corephotonics, Ltd. v. Apple Inc., No. 5-18-cv-02555 (N.D. Cal.)
`(’2555 case) that concerns a parent of the ’647 patent. The ’2555 and ’4809
`cases were found related to a previously filed case in the Northern District of
`California between the same parties, No. 17-cv-06457 (N.D. Cal.). See
`’2555 case, Dkt. 14; ’4809 case, Dkt. 16. The parties are reminded that they
`must keep the Board apprised of the status of related litigations and identify
`all related administrative matters.
`We identify the following related administrative matters, including
`every application and patent claiming the benefit of the priority of the filing
`date of patents in the priority chain of the ’647 patent. See Patent Trial and
`Appeal Board Consolidated Trial Practice Guide2 (Nov. 2019) at 18; see
`also 84 Fed. Reg. 64,280 (Nov. 21, 2019).
`The ’647 patent, along with Application No. 15/976,391 (now U.S.
`Patent No. 10,330,897, “the ’897 patent”) claims priority to:
`
`
`1 Patent Owner cites Corephotonics, Ltd. v. Apple Inc., No. 3:19-cv-04809-
`LHK (N.D. Cal.) (Paper 5, 1), but this case number appears to reflect a
`typographical error. A PACER search of Case No. 5:19-cv-04809 reveals
`that Patent Owner’s complaint in that case was erroneously identified as
`“Civil Action No. 3:19-cv-4809” on its cover page.
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`Application No. 15/817,235 (now U.S. Patent No. 10,324,277, “the
`’277 patent”), which claims priority to
`Application No. 15/418,925 (now U.S. Patent No. 9,857,568, “the
`’568 patent”), which claims priority to
`Application No. 15/170,472 (now U.S. Patent No. 9,568,712, “the
`’712 patent”), which claims priority to
`Application No. 14/932,319 (now U.S. Patent No. 9,402,032, “the
`’032 patent”), which claims priority to
`Application No. 14/367,924 (abandoned), which claims priority to
`PCT/IB2014/062465, which claims priority to Prov. No. 61/842,987.
`Application No. 16/296,272 (now U.S. Patent No. 10,488,630),
`which, along with Application No. 16/296,275 (now U.S. Patent No.
`10,437,020) claim priority to the ’647 patent.
`
`The following AIA trial proceedings challenge patents in the chain of
`priority for the ’647 patent:
`IPR2020-00878 (challenges the ’878 patent);
`IPR2020-00897 (challenges the ’277 patent);
`IPR2019-00030 (challenges the ’568 patent);
`IPR2018-01146 (challenged the ’712 patent); and
`IPR2018-01140 (challenged the ’032 patent).
`The ’647 Patent
`B.
`The ’647 patent issued on June 11, 2019, and is based on an
`application filed on May 10, 2018, which claimed priority back to a
`provisional application filed July 4, 2013. Ex. 1001, codes (22), (45), (60).
`The ’647 patent discloses an optical lens assembly with five lens elements.
`Id. at code (57). Figure 1A of the ’647 patent is reproduced below.
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`Figure 1A of the ’647 patent illustrates a first
`embodiment of an optical lens system.
`The embodiments disclosed refer to an optical lens assembly
`comprising, in order from an object side to an image side: optional stop 101;
`first plastic lens element 102 with positive refractive power having a convex,
`object-side surface 102a; second plastic lens element 104 with negative
`refractive power having a meniscus, convex, object-side surface 104a; third
`plastic lens element 106 with negative refractive power having a concave,
`object-side surface 106a; fourth plastic lens element 108 with positive
`refractive power having a positive meniscus with a concave, object-side
`surface marked 108a; fifth plastic lens element 110 with negative refractive
`power having a negative meniscus with a concave, object-side surface 110a.
`Id. at 3:25–42.
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`In Table 1, reproduced below, the ’647 patent discloses radii of
`
`curvature, R, for the lens elements, lens element thicknesses and distances
`between each of the lens elements, as well as a refractive index, Nd, for each
`lens element.
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`Table 1 of the ’647 patent set forth optical
`parameters for the optical lens assembly.
`The ’647 patent discloses that
`[T]he distances between various elements (and/or surfaces) are
`marked “Lmn” (where m refers to the lens element number, n=1
`refers to the element thickness and n=2 refers to the air gap to the
`next element) and are measured on the optical axis z, wherein the
`stop is at z=0. Each number is measured from the previous
`surface. Thus, the first distance -0.466 mm is measured from the
`stop to surface 102a, the distance L11 from surface 102a to
`surface 102b (i.e. the thickness of first lens element 102) is 0.894
`mm, the gap L12 between surfaces 102b and 104a is 0.020 mm,
`the distance L21 between surfaces 104a and 104b (i.e. thickness
`d2 of second lens element 104) is 0.246 mm, etc. Also, L21=d2,
`and L51=d5.
`Id. at 4:16–29.
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`Challenged Claims
`C.
`Petitioner challenges claims 1–12 of the ’647 patent. Claims 1 and 8
`are independent. Claim 1 is reproduced below.
`1. An optical lens assembly comprising, in order from an
`object side to an image side:
`a) a first lens element L1 with positive refractive power, a
`focal length f1;
`b) a second lens element L2 with negative refractive power
`and a focal length f2 and having a meniscus shape with
`convex object-side surface;
`c) a third lens element L3 with negative refractive power and
`a focal length f3;
`d) a fourth lens element L4; and
`e) a fifth lens element L5, wherein 1.2×|f3|>|f2|>1.5×f1,
`wherein the lens assembly has an effective focal length
`(EFL), wherein a lens system that includes the lens assembly
`plus a window positioned between the fifth lens element and
`an image plane has a total track length (TTL) of 6.5
`millimeters or less and wherein the lens assembly has a ratio
`TTL/EFL<1.0.
`Ex. 1001, 8:22–39.
`Asserted Grounds of Unpatentability
`D.
`Petitioner challenges claims 1–12 as follows. See Pet. 9–10. In
`support, Petitioner relies on the First and Second Declarations of Dr. José
`Sasián (Exs. 1003, 1037). Patent Owner supports its briefing with the
`Declaration of Dr. Tom D. Milster (Ex. 2001).
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`35 U.S.C. §3
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`Reference(s)/Basis
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`Claim(s)
`Challenged
`1–3, 5
`1, 4
`2, 3, 5, 8–11
`6
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`7
`12
`
`103
`103
`103
`103
`
`Iwasaki4
`Ogino5 and Chen II6
`Ogino, Chen II, and Bareau7
`Ogino, Chen II, Bareau, and
`Kingslake8
`Hsieh9 and Beich10
`103
`Chen11, Iwasaki, and Beich
`103
`III. ANALYSIS
`Principles of Law
`A.
`A claim is unpatentable under 35 U.S.C. § 103 if the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`
`3 Because the application leading to the ’647 patent was filed after
`March 16, 2013, the effective date of the Leahy Smith America Invents Act,
`Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), patentability is governed
`by the post-AIA version of 35 U.S.C. § 103.
`4 U.S. Patent No. 9,678,310 B2 to Iwasaki et al. (Ex. 1009, “Iwasaki”).
`5 U.S. Patent No. 9,128,267 B2 to Ogino et al. (Ex. 1005, “Ogino”).
`6 U.S. Patent No. 8,233,224 B2 to Chen (Ex. 1008, “Chen II”).
`7 Jane Bareau et al., “The Optics of Miniature Digital Camera
`Modules,” SPIE Proceedings Volume 6342, International Optical
`Design Conference 2006, (2006), available at
`https://doi.org/10.1117/12.692291 (Ex. 1012, “Bareau”).
`8 Rudolf Kingslake, Optics in Photography (1992) (Ex. 1013, “Kingslake”).
`9 U.S. Patent No. 9,864,171 B2 to Hsieh et al. (Ex. 1025, “Hsieh”).
`10 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), available at
`https://doi.org/10.1117/12.861364 (Ex. 1007, “Beich”).
`11 U.S. Patent No. 10,324,273 B2 to Chen et al. (“Chen”).
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`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) when in evidence, objective evidence
`of nonobviousness, i.e., secondary considerations. See Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes
`review petitions to identify “with particularity . . . the evidence that supports
`the grounds for the challenge to each claim”)). The burden of persuasion
`never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing
`Corp. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing
`the burden of proof in an inter partes review). Furthermore, Petitioner
`cannot satisfy its burden of proving obviousness by employing “mere
`conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
`1380 (Fed. Cir. 2016).
`B.
`Petitioner contends:
`[A] Person of Ordinary Skill in the Art (“POSITA”) would
`include someone who had, at the priority date of the ’647 Patent
`(i) a Bachelor’s degree in Physics, Optical Sciences, or
`equivalent training, as well as (ii) approximately three years of
`experience in designing multi-lens optical systems. Such a
`person would have had experience in analyzing, tolerancing,
`
`Level of Ordinary Skill in the Art
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`adjusting, and optimizing multi-lens systems for manufacturing,
`and would have been familiar with the specifications of lens
`systems. In addition, a POSITA would have known how to use
`lens design software such as Code V, Oslo, or Zemax, and would
`have taken a lens design course. Lack of work experience can be
`remedied by additional education, and vice versa.
`Pet. 7 (citing Ex. 1003 ¶¶ 19, 20). Patent Owner indicates that it “does not
`disagree with Dr. Durand’s definition of a POSITA.” PO Resp. 11 (citing
`Ex. 2001 ¶ 20).
`We determine that the level of ordinary skill in the art proposed by
`Petitioner is consistent with the ’647 patent and the asserted prior art. The
`findings and conclusions set forth in this Decision are based on this
`definition proposed by Petitioner.
`Claim Construction
`C.
`For inter partes reviews filed on or after November 13, 2018, we
`apply the same claim construction standard used by Article III federal courts
`and the ITC, both of which follow Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc), and its progeny. 37 C.F.R. § 42.100(b) (2019).
`Accordingly, we construe each challenged claim of the ’647 patent to
`generally have “the ordinary and customary meaning of such claim as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” Id.
`Petitioner notes that we construed “effective focal length” (EFL) as
`the focal length of a lens assembly in the IPR2018-01140 proceeding. Pet.
`8–9 (citing Apple Inc. v. Corephotonics Ltd., IPR2018-01140, Paper 37, 10–
`18 (PTAB Dec. 3, 2019)). Petitioner notes that we construed “total track
`length” (TTL) as the length of the optical axis spacing between the object-
`side surface of the first lens element and one of: an electronic sensor, a film
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`sensor, and an image plane corresponding to either the electronic sensor or
`film sensor. Id.
`We not discern a dispute between the parties regarding these claim
`terms (EFL and TTL) or any other term or limitation and as such, we need
`not expressly construe this limitation to resolve the controversy before us.
`See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
`F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are
`in controversy, and only to the extent necessary to resolve the controversy.’”
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999))).
`
`D. Obviousness over Iwasaki
`Petitioner contends that claims 1–3 and 5 are unpatentable as obvious
`under 35 U.S.C. § 103 over Iwasaki. Pet. 12–23. For the reasons that
`follow, we determine that Petitioner establishes unpatentability of
`independent claim 1 and dependent claims 2, 3, and 5 over Iwasaki by a
`preponderance of the evidence. Patent Owner does not dispute this
`challenge.
`
`Overview of Iwasaki
`1.
`Iwasaki discloses “a fixed focus imaging lens for forming optical
`images of subjects” designed for use in portable devices including smart
`phones and mobile devices to meet a “demand for miniaturization of the
`entirety of the photography devices” and “high resolution and high
`performance.” Ex. 1009, 1:18–26, 1:36–41. Iwasaki concerns an imaging
`lens including, in order from an object side, the following lenses: first lens
`L1 that has a positive refractive power; second lens L2 that has a negative
`refractive power; third lens L3 that has a negative refractive power; fourth
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`lens L4 having a positive refractive power; fifth lens L5 that has a positive
`refractive power; and sixth lens L6 having a negative refractive power. See
`id. at 5:60–67. Figure 4 of Iwasaki is reproduced below.
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`Figure 4 of Iwasaki illustrates lenses in an
`arrangement according to an embodiment of the
`invention.
`Figure 4 is a sectional diagram that illustrates a fourth example of the
`configuration of an imaging lens according to an embodiment of the
`invention. Id.; see id. at 4:9–12.
`Independent Claim 1
`2.
` [1.0] “An optical lens assembly comprising, in
`order from an object side to an image side:”
`Petitioner contends Iwasaki discloses imaging lens L including optical
`
`lens elements arranged “in order from the object side to the image side. . . .”
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`Pet. 14 (quoting Ex. 1009, 5:60–6:3). Petitioner points primarily to Example
`4, as depicted in Figure 4, reproduced above. Id. (citing Ex. 1009, Fig. 4).12
`[1.1] “a) a first lens element L1 with positive
`refractive power, a focal length f1;”
`[1.2] “b) a second lens element L2 with negative
`refractive power and a focal length f2 and having a
`meniscus shape with convex object-side surface;”
`[1.3] “c) a third lens element L3 with negative
`refractive power and a focal length f3;”
`Petitioner contends Iwasaki discloses these limitations because,
`“[e]xample 4 includes ‘a first lens L1 having a positive refractive power, a
`second lens L2 having a negative refractive power, [and] a third lens L3
`having a negative refractive power . . . .’” Pet. 15 (quoting Ex. 1009, 5:62–
`65) (alterations in the original) (emphasis omitted). Iwasaki specifies optical
`parameters, in Table 9, for the lenses depicted in Example 4. Lens L1 is
`shown as having a focal length (f1) of 2.50 mm. Id. (citing Ex. 1009, 17:
`54–62; Ex. 1004, 30). Table 9 of Iwasaki is reproduced below.
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`12 We need not determine whether the preamble is limiting because
`Petitioner shows sufficiently that it is satisfied by the prior art.
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`Table 9 of Iwasaki discloses optical parameters for
`the lenses in each of its examples.
`The focal lengths of lenses L2 and L3 are not expressly disclosed in
`Iwasaki, but Petitioner contends the focal lengths of these lenses can be
`calculated by using the optical data for each lens and the “lens maker’s
`equation.” Pet. 15. According to Petitioner,
`[T]he focal lengths of L2 and L3 can be calculated by using the
`optical data for each lens and the commonly known “lens
`maker’s equation,” provided in Born (Ex.1010):
`
`𝑓𝑓= −
`
`𝑛𝑛𝑟𝑟1𝑟𝑟2
`(𝑛𝑛−1)[𝑛𝑛(𝑟𝑟1−𝑟𝑟2)−(𝑛𝑛−1)𝑡𝑡]
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`where, “f is the focal length, n is the index of refraction, r1 and r2
`are the curvature of the two surfaces of lens, and t is the axial
`thickness of the lens.”
`Id. at 15–16 (citing Ex. 1010, 162).13
`Petitioner’s annotated version of the Table 7 of Iwasaki is
`reproduced below and shows from where the optical data for each
`surface of lenses L2 and L3 is obtained.
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`13 Max Born et al., Principles of Optics, 6th Ed. (1980) (Ex. 1010, “Born”).
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`Petitioner contends that using the values from Iwasaki’s Table 7 in the lens
`maker’s equation yields “f2=-5.886 mm and f3=-82.221 mm.” Pet. 17.
`Petitioner also contends that, “[a] POSITA would have understood, as
`observed in Fig. 4, that L2 has a meniscus shape that is convex toward the
`object-side because the radii of curvature for L2’s surfaces (surfaces 4 and
`5) are both positive, meaning that the object-side is convex and the image-
`side is concave.” Id. (citing Ex. 1003, 31–32; Ex. 1010, Fig. 4.15).
` [1.4] “d) a fourth lens element L4; and”
`[1.5] “e) a fifth lens element L5,
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`[1.6] “wherein 1.2×|f3|>|f2|>1.5×f1,”
`[1.7] “wherein the lens assembly has an effective
`focal length (EFL),”
`[1.8] “wherein a lens system that includes the lens
`assembly plus a window positioned between the fifth
`lens element and an image plane
`[1.9] “has a total track length (TTL) of 6.5
`millimeters or less and”
`[1.10] “wherein the lens assembly has a ratio
`TTL/EFL<1.0.”
`Petitioner contends that Iwasaki discloses that Example 4 includes a
`fourth lens L4 having a positive refractive power and a fifth lens L5 having a
`positive refractive power. Pet. 17 (quoting Ex. 1009, 5:63–66; Ex. 1003,
`35–36). As discussed above, Petitioner also contends “f1 is about 2.50 mm,
`f2 is -5.886 mm, and f3 is -82.221 mm, thus meeting the claimed expression
`1.2×|f3|>|f2|>1.5×f1.” Id. at 18.
`Petitioner contends that Example 4 includes, “a cover glass (‘CG’)
`element (i.e., window) positioned between the lens assembly, including the
`L5 lens element, and the image plane.” Id. Petitioner further contends a
`POSITA would have understood the language “positioned between the
`fifth lens element and an image plane,” to be broad enough to encompass
`Iwasaki’s lens system because Iwasaki’s lens elements are positioned
`between the fifth lens element and the image plane. Id. at 20 (citing Ex.
`1003, 39). Petitioner cites Table 7 of Iwasaki as disclosing a TTL of 3.89
`mm. Id. (citing Ex. 1009, Table 7). Petitioner also cites Example 4 of
`Iwasaki as disclosing an EFL of 4.00 mm and a TTL of 3.89 thus, meeting
`the claimed ratio of TTL/EFL<1.0. Id. at 21 (citing Ex. 1003, 40–41).
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`Having reviewed the cited evidence and Petitioner’s contentions, we
`determine that Petitioner’s contentions and Dr. Sasián’s supporting
`testimony are sufficiently supported by the cited portions of Iwasaki and that
`Iwasaki teaches each of the limitations of claim 1 and its preamble. Patent
`Owner does not dispute Petitioner’s showing. For the foregoing reasons, we
`are persuaded that Petitioner establishes the unpatentability of claim 1 over
`Iwasaki by a preponderance of the evidence.
`Dependent Claims 2, 3, and 5
`3.
`Claim 2 recites “[t]he optical lens assembly of
`claim 1, wherein the lens assembly has a f-number
`F#< 2.9.”
`According to Petitioner, Iwasaki’s Example 4, specified in Table 7,
`discloses Fno=2.8. Pet. 21 (citing Ex. 1009, Table 7).
`Claim 3 recites “[t]he lens assembly of claim 2,
`wherein the TTL is equal or smaller than 6.0 mm.”
`Petitioner contends that Iwasaki’s Example 4, specified in Table 7,
`
`has a TTL of 3.89 mm, which is less than 6.0 mm. Pet. 21 (citing Ex. 1003,
`42); see Ex. 1009, Table 7.
`Claim 5 recites “[t]he lens assembly of claim 1,
`wherein lens element L1 has a concave image-side
`surface.”
`Petitioner contends Example 4 shows L1 lens has a meniscus shape.
`Pet. 22. Also, Petitioner contends, “[a] POSITA would have understood []
`that L1 is meniscus, convex toward the object-side because the radii of
`curvature for L1’s surfaces (Ri columns for surfaces 2 and 3 in Table 7) are
`both positive, meaning that the object-side is convex and the image-side is
`concave.” Pet. 22–23 (citing Ex. 1003, 42–43; Ex. 1009, Fig. 4; Ex. 1010,
`Fig. 4.15).
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`Having reviewed the cited evidence and Petitioner’s contentions, we
`determine that Petitioner’s contentions and Dr. Sasián’s supporting
`testimony are sufficiently supported by the cited portions of Iwasaki and that
`Iwasaki teaches the limitations recited in claims 2, 3, and 5. As set forth
`above, Patent Owner does not dispute Petitioner’s showing. For the
`foregoing reasons, we are persuaded that Petitioner establishes the
`unpatentability of claims 2, 3, and 5 over Iwasaki by a preponderance of the
`evidence.
`
`E. Obviousness over Ogino and Chen II
`Petitioner contends that claims 1 and 4 are unpatentable as obvious
`under 35 U.S.C. § 103 over Ogino and Chen II. Pet. 23–46. For the reasons
`that follow, we determine that Petitioner establishes unpatentability of
`independent claim 1 and dependent claim 4 over Ogino and Chen II by a
`preponderance of the evidence.
`Overview of Ogino
`1.
`Ogino relates to an imaging lens substantially consisting of, in order
`from an object side, five lenses: a first lens (L1) that has a positive refractive
`power and has a meniscus shape which is convex toward the object side; a
`second lens (L2) that has a biconcave shape; a third lens (L3) that has a
`meniscus shape which is convex toward the object side; a fourth lens (L4)
`that has a meniscus shape which is convex toward an object side; and a fifth
`lens (L5) that has a negative refractive power and has at least one inflection
`point on an image side surface. See Ex. 1005, 2:4–13. Figure 6 of Ogino is
`reproduced below.
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`See id. at 4:9–11.
`Overview of Chen II
`2.
`Chen II concerns an imaging lens system including, in order from the
`object side to the image side: a first lens element (100) with positive
`refractive power having a convex object-side surface; a second lens element
`(110) with negative refractive power; a third lens element (120) having a
`concave image-side surface; a fourth lens element (130) with positive
`refractive power; a fifth lens element (140) with negative refractive power
`having a concave image-side surface, at least one surface thereof being
`provided with at least one inflection point. Ex. 1008, 1:36–43. Figure 1 of
`Chen II is reproduced below:
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`Independent Claim 1
`3.
`[1.0] “An optical lens assembly comprising, in
`order from an object side to an image side:”
`Petitioner contends “Ogino’s Example 5 with meniscus L2 renders
`
`[the preamble] obvious because as taught in Ogino, it is still ‘[a]n imaging
`lens substantially consists of, in order from an object side, five lenses ….’”
`Pet. 36 (citing Ex. 1005, code (57)).14 We are persuaded that Ogino
`expressly depicts and discloses an optical lens assembly with an object side
`
`
`14 We need not determine whether the preamble is limiting because
`Petitioner shows sufficiently that it is satisfied by the prior art.
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`and image side and thus discloses the subject matter of the preamble [1.0]
`independent claim 1. Ex. 1005, code (57), Fig. 5.
`[1.1] “a) a first lens element L1 with positive
`refractive power, a focal length f1;”
`[1.2] “b) a second lens element L2 with negative
`refractive power and a focal length f2 and having a
`meniscus shape with convex object-side surface;”
`[1.3] “c) a third lens element L3 with negative
`refractive power and a focal length f3;”
`[1.4] “d) a fourth lens element L4; and”
`[1.5] “e) a fifth lens element L5,”
`Petitioner contends “Example 5 includes “five lenses [including] a
`first lens that has a positive refractive power…, a second lens …, [and] a
`third lens …, a fourth lens…; and a fifth lens ….” which are shown in
`Petitioner’s annotated version of Ogino’s Figure 5 below and are labeled
`below.” Pet. 39 (citing Ex. 1005, code (57)) (emphasis omitted) (second
`alteration in original).
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`Petitioner’s Annotated Version of Ogino’s
`Example 5. Id.
`Petitioner further contends that “a POSITA would have found it
`obvious to modify [Ogino’s] L2 lens from biconcave to meniscus” “by
`applying Chen II’s teaching of a meniscus shape for [its] L2 lens, as Chen II
`shows no vignetting and, as observed above, the vignetting in Ogino starts at
`the second lens.” Id. at 35, 39 (Ex. 1003 ¶ 67; Ex. 1012, 3). Petitioner
`presents a Zemax ray trace diagram and accompanying prescription data
`depicting its modification to Ogino’s Example 5 (i.e., modifying Ogino’s
`biconcave L2 lens to have, instead, a meniscus shape). Id. at 39 (citing Ex.
`1003, 61). Petitioner contends that Ogino’s unmodified Example 5 has
`f1=2.068 mm, f2=-3.168 mm, and f3=-6.926 and that the negative sign of f2
`and f3 indicate that that lens L1 has a positive refractive power and lenses L2
`and L3 have negative refractive powers. Id. at 41. Petitioner contends that
`its prescription data for Ogino’s Example 5 as modified with Chen II’s
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`meniscus shape for lens L2 results in f1=2.384 mm, f2=-5.525 mm, and f3=-
`6.952 mm, which also indicate that lens L1 has a positive refractive power
`and lenses L2 and L3 have negative refractive powers. Id.
`We are persuaded that Ogino discloses five lens elements, L1 through
`L5, in which lens L1 has a positive refractive power. Ex. 1005, 7:28–31,
`Table 9. Ogino further discloses that each of the lenses has a corresponding
`focal length f1–f5. Id. at 3:17–21. Chen II discloses a second lens having a
`meniscus shape with convex object-side surface. Ex. 1008, Fig. 1.
`According to Petitioner’s Zemax diagrams, modifying the shape of Ogino’s
`second lens L2 in Example 5, which is biconcave, with that of Chen II’s
`second lens results in focal lengths of f1=2.384 mm, f2=-5.525 mm, and
`f3=-6.952 mm, which is supported by the corresponding prescription data
`and ray trace diagram explained by Dr. Sasián. Pet. 40 (citing Ex. 1003, 63,
`Appendix, Figs. 2A, 2D); see Ex. 1003, 63. Petitioner also points to values
`from Ogino’s Table 13––from which f1=2.068 mm, f2=-3.168 mm, and f3=-
`6.926 mm are derived by Dr. Sasián––and contends that unmodified Ogino’s
`Example 5, prior to modification, indicates that lens L1 has a positive
`refractive power and that lens L2 and L3 have negative refractive powers.
`Pet. 41; Ex. 1003, 62–63. As Petitioner’s derived values and calculated
`values for f2 and f3 are negative, we are persuaded that, in modified and
`unmodified Example 5, lens L2 and lens L3 have negative refractive powers
`in and that, as the derived and calculated value for f1 is positive, lens L1 has
`a positive refractive power. Id.
` Accordingly, we are persuaded that the combination of Ogino and
`Chen II teaches limitations [1.1] through [1.5].
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`We address Petitioner’s motivation to combine below in Section
`III.E.3.a.
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` [1.6] “wherein 1.2×|f3|>|f2|>1.5×f1,”
`Petitioner contends that “Example 5 with meniscus L2 renders [sic]
`claimed expression.” Id. at 41 (citing Ex. 1003, 65–66). In particular,
`Petitioner contends that unmodified, “original Example 5 has f1=2.068 mm,
`f2=-3.168 mm, and f3=-6.926 mm and satisfies the claimed expression: 1.2 ×
`
`further contends that “Example 5 modified . . . also satisfies the claimed
`expression:” with f1=2.384 mm, f2=-5.525, and f3=-6.952 mm, which are
`
`|−6.926𝑚𝑚𝑚𝑚| > |−3.168𝑚𝑚𝑚𝑚| > 1.5 × 2.068𝑚𝑚𝑚𝑚” with the following values:
`“8.3112𝑚𝑚𝑚𝑚 > 3.168𝑚𝑚𝑚𝑚 > 3.102𝑚𝑚𝑚𝑚.” Id. (emphasis omitted). Petitioner
`input to the claimed expression “1.2 × |−6.952𝑚𝑚𝑚𝑚| > |−5.525𝑚𝑚𝑚𝑚| > 1.5 ×
`2.384 𝑚𝑚𝑚𝑚” evaluating to “8.342 mm > 5.525 mm > 3.576 mm.” Id.
`
`(emphasis added).
`We are persuaded that Petitioner explicitly provides detailed
`calculations to show how its f1, f2, and f3 values are derived for unmodified
`Example 5 and how its f1, f2, and f3 values are calculated (by Zemax) for
`Ogino’s Example 5 modified with the meniscus shape of Chen II’s second
`lens L2, and how both sets of focal lengths satisfy the claimed condition
`“1.2×|f3|>|f2|>1.5×f1.” Pet. 41; Ex. 1003, 62–63, Appendix, Fig. 2D. As
`such, we are persuaded that the combination of Ogino and Chen II teaches
`limitation [1.6].
` [1.7] “wherein the lens assembly has an effective
`focal length (EFL),”
`[1.8] “wherein a lens system that includes the lens
`assembly plus a window positioned between the fifth
`lens element and an image plane”
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`[1.9] “has a total track length (TTL) of 6.5
`millimeters or less and”
`[1.10] “wherein the lens assembly has a ratio
`TTL/EFL<1.0.”
`Petitioner contends that “[t]he effective focal length (EFL) of
`[unmodified] Example 5 is represented in Table 9 as EFL=5.956” and
`modified Example 5 “with meniscus L2 has an EFL=5.460 mm.” Id. at 41–
`42 (citing Ex. 1005, Table 9; Ex. 1003, Appendix, 67, Fig. 2A); see Ex.
`1003, 66 (Dr. Sasián’s analysis as to the claimed EFL).
`Petitioner further contends that “Ogino defines the CG element as ‘a
`flat-plate-shaped optical member, such as a cover-glass for protecting an
`imaging surface and an infrared ray cut filter.” Id. at 43 (citing Ex. 1003,
`67, Appendix, Fig. 2A; Ex.
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