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.
`
`
`
`
`
`Paper 7
`Date: December 8, 2020
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`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.
`
`
`
`
`
`Paper 7
`Date: December 8, 2020
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
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`
`
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`IPR2020-00896
`Patent 10,317,647
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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.”). Corephotonics,
`Ltd. (“Patent Owner”) did not file a Preliminary Response.
`We have authority under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition shows “there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.” 35
`U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.4(a). Based on the information
`presented in the Petition and the supporting evidence, we determine that
`there is a reasonable likelihood Petitioner would prevail with respect to at
`least one of the challenged claims. Accordingly, we institute an inter partes
`review of claims 1–12 on all grounds set forth in the Petition.
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far. This is not a final
`decision as to patentability of the challenged claims.
`BACKGROUND
`II.
`A.
`Related Proceedings
`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
`
`
`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.
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`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 Office
`Consolidated Trial Practice Guide2 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:
`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
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`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
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`power having a negative meniscus with a concave, object-side surface 110a.
`Id. at 3:25–42.
`
`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.
`
`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
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`d2 of second lens element 104) is 0.246 mm, etc. Also, L21=d2,
`and L51=d5.
`Id. at 4:16–29.
`
`
`
`Challenged Claims
`C.
`Petitioner challenges claims 1–12 of the ’647 patent. Claims 1 and 8
`are independent. Claim 1 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.
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`Asserted Grounds of Unpatentability
`D.
`Petitioner challenges claims 1–12 as follows. See Pet. 9–10.
`
`
`
`Claims Challenged
`1–3, 5
`1, 4
`2, 3, 5, 8–11
`6
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`35 U.S.C. §3
`103
`103
`103
`103
`
`7
`12
`
`103
`103
`
`Reference(s)/Basis
`Iwasaki4
`Ogino5 and Chen II6
`Ogino, Chen II, and Bareau7
`Ogino, Chen II, Bareau, and
`Kingslake8
`Hsieh9 and Beich10
`Chen, Iwasaki, and Beich
`
`In support, Petitioner relies on the declaration of Dr. José Sasián (Ex.
`1003).
`
`
`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”).
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`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
`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) 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).
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`Level of Ordinary Skill in the Art
`
`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 multilens optical systems. Such a person
`would have had experience in analyzing, tolerancing, 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). As Patent Owner did not file a
`preliminary response, Patent Owner does not take a position as to the level
`of ordinary skill in the art.
`We determine, on the current record, that the level of ordinary skill in
`the art proposed by Petitioner is consistent with the ’647 patent and the
`asserted prior art. We adopt that level in deciding whether to institute trial.
`
`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.
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`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
`sensor, and an image plane corresponding to either the electronic sensor or
`film sensor. Id.
`We note, however, that Petitioner proposes a different construction of
`TTL in IPR2020-00877, which involves the same parties. See Apple Inc. v.
`Corephotonics Ltd., IPR2020-00877, Paper 7, 9 (PTAB Nov. 3, 2020). The
`parties should address during trial whether and why the construction of this
`term should differ in these two IPRs.
`At this stage of the proceeding, we do not discern a dispute between
`the parties regarding this limitation and 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 the evidence sufficiently supports Petitioner’s
`arguments and thus establishes a reasonable likelihood of prevailing with
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`respect to the challenge to independent claim 1, and dependent claims 2, 3,
`and 5, at this stage of the proceeding.
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`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, 36–41. Iwasaki concerns an imaging
`lens consisting of, in order from an object side, four or more lenses: a first
`lens L1 that has a positive refractive power; a second lens L2 that has a
`negative refractive power; a third lens L3 that has a negative refractive
`power; a fourth lens L4 having a positive refractive power; a fifth lens L5
`that has a positive refractive power; and a 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.
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`Independent Claim 1
`2.
` “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. . . .”
`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).
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`Having reviewed the cited evidence and Petitioner’s contentions, we
`determine that Petitioner’s contentions are sufficiently supported by the cited
`portions of Iwasaki, at this stage of the proceeding.11, 12
`“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;”
`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 for the lenses depicted in Example 4 in Table 9. 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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`11 We need not determine whether the preamble is limiting, at this stage of
`the proceeding, because Petitioner shows sufficiently that it is satisfied by
`the prior art.
`12 Regardless of the fact that Patent Owner did not file a preliminary
`response, the burden of persuasion remains with the Petitioner. See
`Dynamic Drinkware, 800 F.3d at 1378.
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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]
`
`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, 14
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`13 Max Born et al., Principles of Optics, 6th Ed. (1980) (“Born”).
`14 The cited portion in Born does not appear to refer to any equation as the
`lens maker’s equation, nor is it immediately clear that above-quoted
`equation is derivable from any of the equations disclosed in Born. The
`parties are invited to address this issue at trial.
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`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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`.
`Petitioner’s annotated version of Iwasaki’s
`Table 7 shows which values of optical data, for
`surfaces of lenses L2 and L3, are selected.
`Petitioner contends 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).
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`Having reviewed the cited evidence and Petitioner’s contentions, we
`determine that Petitioner’s contentions are sufficiently supported by the cited
`portions of Iwasaki, at this stage of the proceeding.
`“d) a fourth lens element L4; and
`L5, wherein
`e)
`a
`fifth
`lens
`element
`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.”
`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
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`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).
`Having reviewed the cited evidence and Petitioner’s contentions, we
`determine that Petitioner’s contentions are sufficiently supported by the cited
`portions of Iwasaki, at this stage of the proceeding.
`For the foregoing reasons, we are persuaded that Petitioner
`demonstrate sufficiently a reasonable likelihood of prevailing in showing
`that claim 1 is unpatentable over Iwasaki.
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`Dependent Claims 2, 3, and 5
`3.
`Claim 2 recites “The 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 “The 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 “The 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
`
`18
`
`
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`IPR2020-00896
`Patent 10,317,647
`
`
`concave.” Pet. 22–23 (citing Ex. 1003, 42–43; Ex. 1009, Fig. 4; Ex. 1010,
`Fig. 4.15).
`We have reviewed Petitioner’s arguments and evidence concerning
`claims 2, 3, and 5 and are persuaded, at this stage of the proceeding, that
`Petitioner has also shown a reasonable likelihood of prevailing in
`demonstrating that these claims are obvious in view of Iwasaki.
`
`
`
`Independent Claim 8 and Dependent Claims 4, 6, 7, and 9–12
`4.
`As to the remaining claims and grounds asserted in the Petition,
`Petitioner has set forth contentions regarding the remaining claims. Patent
`Owner does not raise any arguments as to these claims as it did not file a
`preliminary response. Having decided that Petitioner is likely to prevail as
`to claims 1–3 and 5 as challenged in the Petition, the review shall proceed on
`all challenged claims and on all grounds raised in the Petition.
`
`IV. CONCLUSION
`For the foregoing reasons, we conclude that the information presented
`in the Petition demonstrates a reasonable likelihood of prevailing with
`respect to establishing that at least one claim of the ’647 patent is
`unpatentable. Accordingly, we institute inter partes review of all challenged
`claims and all grounds presented in the Petition. See PGS Geophysical AS v.
`Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (indicating that a decision
`whether to institute an inter partes review “require[s] a simple yes-or-no
`institution choice respecting a petition, embracing all challenges included in
`the petition”); Guidance on the Impact of SAS on AIA Trial Proceedings
`(April 26, 2018).
`
`19
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`IPR2020-00896
`Patent 10,317,647
`
`
`
`
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED, pursuant to 35 U.S.C. § 314(a), that an inter partes
`review of claims 1–12 is instituted with respect to all grounds set forth in the
`Petition;
`FURTHER ORDERED, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`§ 42.4(b), that the inter partes review of the ’647 patent shall commence on
`the entry date of this Order, and notice is hereby given of the institution of a
`trial; and
`FURTHER ORDERED that within ten (10) days of any significant
`developments in the parallel district court proceedings (Section II.A above),
`including but not limited to claim interpretation developments, any ruling on
`a stay, and the setting of a trial date, the parties shall file a joint report
`detailing any such development.
`
`
`
`
`
`
`
`
`
`20
`
`
`
`
`
`
`
`IPR2020-00896
`Patent 10,317,647
`
`PETITIONER:
`
`Michael S. Parsons
`Andrew S. Ehmke
`Jordan Maucotel
`HAYNES AND BOONE, LLP
`michael.parsons.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`jordan.maucotel@haynesboone.com
`
`
`PATENT OWNER:
`
`Neil Rubin
`C. Jay Chung
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`jchung@raklaw.com
`
`
`
`
`21
`
`
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