`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
`____________
`
`
`PATENT OWNER’S RESPONSE
`
`

`

`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
`
`TABLE OF CONTENTS
`
`INTRODUCTION .................................................................. 1
`I.
`II. OVERVIEW OF THE ‘277 PATENT ....................................... 2
`A. Description of the ‘277 Patent ......................................................... 2
`B. Multiple Element Lens Design ........................................................ 8
`III. LEVEL OF ORDINARY SKILL ........................................... 12
`IV. CLAIM CONSTRUCTION ................................................... 12
`OVERVIEW OF THE ASSERTED PRIOR ART .................... 13
`V.
`A. Ogino (Ex. 1005) ........................................................................... 13
`B.
`Bareau (Ex. 1012) ......................................................................... 21
`VI. PATENTABILITY OF CHALLENGED CLAIMS .................. 23
`A. GROUND 1 – The Petition Fails to Demonstrate that Claims 1-3
`4 and Bareau. ................................................................................. 31
`
`and 5-8 are Unpatentable Over the Combination of Ogino Example
`
`Petitioner ignores the manufacturability of the lenses. ............................. 31
`a.
`Petitioner’s proposed assembly has overlapping lenses in the region of the
`b.
`optical rays. ........................................................................................................... 32
`c.
`Results of the combination violate the teachings of Bareau. .................... 35
`d.
`Petitioner’s process would have been contrary to a POSITA’s goal of
`improving performance. ........................................................................................ 37
`e.
`Dependent claims 2, 3, and 5-8. ................................................................ 39
`GROUND 2 – The Petition Fails to Demonstrate that Claims 1-24
`are Unpatentable Over the Combination of Ogino Example 5 and
`
`Bareau. .......................................................................................... 40
`
`B.
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`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
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`1.
`
`in view of Bareau. .................................................................... 40
`
`The Petition Fails to Demonstrate that Claims 11-17 are
`Unpatentable Over the First Modification of Ogino Example 5
`
`Petitioner ignores the manufacturability of the lenses. ............................. 40
`a.
`Petitioner’s proposed assembly has overlapping lenses in the region of the
`b.
`optical rays. ........................................................................................................... 41
`c.
`Petitioner’s process would have been contrary to a POSITA’s goal of
`improving performance. ........................................................................................ 43
`d.
`Petitioner’s differing results for Example 5 of Ogino are not explained. . 45
`e.
`Petitioner’s lens dimensions would not have been acceptable to a
`POSITA. ............................................................................................................... 47
`f.
`Petitioner tries to combine two modifications to Exampel 5 of Ogino with
`no explanation. ...................................................................................................... 49
`The Petition Fails to Demonstrate that Claims 1-10 and 18-24
`are Unpatentable Over the Second Modification of Ogino
`
`Example 5 in view of Bareau. .................................................. 50
`
`2.
`
`Petitioner ignores the manufacturability of the lenses. ............................. 50
`a.
`Petitioner’s process would have been contrary to a POSITA’s goal of
`b.
`improving performance. ........................................................................................ 51
`c.
`Petitioner ignores how a POSITA would actually design a lens. ............. 52
`d.
`Petitioner’s differing results for Example 5 of Ogino are not explained. . 53
`e.
`Dependent claims 2-10, 12-17 and 19-24. ................................................ 54
`
`VII. PETITIONER FAILS TO MEET ITS BURDEN FOR
`CHALLENGED CLAIM ....................................................... 54
`VIII. CONCLUSION .................................................................... 55
`
`
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`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
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`Cases
`
`TABLE OF AUTHORITIES
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ................................................................ 54
`
`Wasica Finance GMBH v. Continental Auto. Systems,
`853 F.3d 1272 (Fed. Cir. 2017) ................................................................ 55
`
`
`
`iii
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`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
`
`PATENT OWNER’S EXHIBIT LIST
`
`Description
`Declaration of Tom D. Milster, Ph.D.
`Curriculum Vitae of Tom D. Milster, Ph.D.
`Deposition transcript of José Sasián, February 19, 2021
`José Sasián, Introduction to Lens Design (2019)
`Declaration of José Sasián in IPR2020-00897
`McGuire Jr, J. P., & Kuper, T. G. (2012, October). Approaching di-
`rect optimization of as-built lens performance. In Novel Optical Sys-
`tems Design and Optimization XV (Vol. 8487, p. 84870D).
`International Society for Optics and Photonics
`Sturlesi, D., & O'Shea, D. C. (1991). Global view of optical design
`space. Optical engineering, 30(2), 207-218
`Symmons and Schaub, Field Guide to Molded Optics (2016)
`Declaration of Tom Milster in IPR2020-00878
`
`Exhibit No
`2001
`2002
`2003
`2004
`2005
`2006
`
`2007
`
`2008
`2009
`
`
`
`i
`
`

`

`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
`
`I.
`
`INTRODUCTION
`
`Petitioner fails to demonstrate that any claim of U.S. Patent No.
`
`10,324,277 (“the ‘277 patent”). is unpatentable. Petitioner proposes optical
`
`lens assemblies that were designed in a manner that a person of ordinary skill
`
`in the art (“POSITA”) would never have accepted or tried to implement. The
`
`manner in which Petitioner proposes to design these lens assemblies is artifi-
`
`cial and ignores standard practices that would have been used by a POSITA.
`
`Instead, improper hindsight is used to achieve the claimed invention, regard-
`
`less of the results. Many of these proposed designs would not work because
`
`the lenses are overlapping or touching. As the Board has found in a prior IPR
`
`proceeding between these two parties, these types of lens configurations are
`
`not enabled. Finally, in some instances the prior art teaches away from the
`
`proposed combination, such that a POSITA would not have designed the op-
`
`tical lens assembly proposed by Petitioner.
`
`Accordingly, the Board should find challenged claims 1-24 not un-
`
`patentable.
`
`1
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`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
`
`II. OVERVIEW OF THE ‘277 PATENT1
`
`A. Description of the ‘277 Patent
`
`The ‘277 patent is concerned with designs for a “miniature telephoto
`
`lens assembly” of a kind suitable for use in mobile phones and other portable
`
`electronic products. Ex. 1001, ‘277 patent, 1:24–28. The example designs
`
`shown in the ‘277 patent utilize five plastic lens elements, each having a com-
`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
`plex aspheric shape:
`
`
`37. The use of these multiple lens elements with aspheric shapes makes
`
`
`
`possible a lens that produces a high-quality image, by minimizing chromatic
`
`1 See generally Ex. 2001, Milster Decl. ¶¶38-54.
`aberrations and other optical aberrations that would blur or distort the image.
`
`(Ex. 1001, ’897 patent at 2:22–34, 2:51–57.)
`2
`38. These multi-lens systems with aspheric lens surfaces have a vast range
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`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
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`The use of these multiple lens elements with aspheric shapes makes
`
`possible a lens that produces a high-quality image, by minimizing chromatic
`
`aberrations and other optical aberrations that would blur or distort the image.
`
`Ex. 1001, ‘277 patent, 2:20–33, 2:49–55.
`
`These multi-lens systems with aspheric lens surfaces have a vast range
`
`of possible designs. For example, the design in figure 1A from the ‘277 patent
`
`requires several dozen numerical parameters to define the shapes, locations,
`
`and properties of its lens elements:
`
`3
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`Case No. IPR2020-00897
`Case Nos. IPR2020-00878
`U.S. Patent No. 10,324,277
`U.S. Patent No. 10,330,897
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`
`
`
`
`
`
`(Ex. 1001, ’897 patent, col. 4.)
`Ex. 1001, ‘277 patent, col. 4.
`39. The ’897 patent provides examples of lens designs and their corre-
`The ‘277 patent provides examples of lens designs and their corre-
`sponding numerical parameters, and it also teaches and claims sets of condi-
`sponding numerical parameters, and it also teaches and claims sets of condi-
`tions and relationships among the parameters that help to make a lens system
`tions and relationships among the parameters that help to make a lens system
`with high performance characteristics. The resulting lens designs are thin and
`with high performance characteristics. The resulting lens designs are thin and
`
`compact, appropriate for use in mobile devices, and they offer a large focal
`18
`Exhibit 2001
`IPR2020-00878
`Page 21 of 82
`
`4
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`compact, appropriate for use in mobile devices, and they offer a large focal
`length (and thus a large degree of image magnification) for their physical size.
`length (and thus a large degree of image magnification) for their physical size.
`Ex. 1001, ‘277 patent, 2:4–19.
`(Ex. 1001, ’897 patent at 2:6–21.)
`The lens designs in the ‘277 patent are also manufacturable, meaning
`40. The lens designs in the ’897 patent are also manufacturable, meaning
`that they have shapes that can be successfully and repeatably manufactured
`that they have shapes that can be successfully and repeatably manufactured
`using the techniques of plastic injection molding that are commonly used for
`using the techniques of plastic injection molding that are commonly used for
`mobile device camera lenses. The 277 patent designs avoid features such as
`mobile device camera lenses. The ’897 patent designs avoid features such as
`overly narrow lens edges that make a lens difficult or impossible to manufac-
`overly narrow lens edges that make a lens difficult or impossible to manufac-
`ture. Ex. 1001, ‘277 patent, 2:33–48.
`ture. (Ex. 1001, ’897 patent at 2:35–50.)
`One of the parameters of a lens design that is discussed in the ‘277 pa-
`41. One of the parameters of a lens design that is discussed in the ’897 pa-
`tent and claimed in certain claims is the “f-number” or “F#.” The f-number is
`tent and claimed in certain claims is the “f-number” or “F#.” The f-number is
`a property of a lens that relates to how bright the image formed by the lens is.
`a property of a lens that relates to how bright the image formed by the lens is.
`A lens that forms brighter images is sometimes referred to as a “faster” lens,
`A lens that forms brighter images is sometimes referred to as a “faster” lens,
`because for a given image sensor (or a given type of film) and focal length,
`because for a given image sensor (or a given type of film) and focal length,
`the minimum amount of time required to capture an image varies inversely
`the minimum amount of time required to capture an image varies inversely
`with the brightness of the image. For a single thin lens, the f number is equal
`with the brightness of the image. For a single thin lens, the f number is equal
`to the focal length of the lens divided by the diameter of the lens:
`to the focal length of the lens divided by the diameter of the lens:
`
`!−#$%&'(=
`
`!
`+,-%'.'(
`
`
`
`
`
`19
`5
`
`Exhibit 2001
`IPR2020-00878
`Page 22 of 82
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`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
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`Ex. 1016, Walker, p. 59.
`
`The diameter of the lens determines how much total light is collected
`
`per unit time by the lens from a given scene. Under certain approximations,
`
`doubling the diameter increases the amount of light collected by a factor of
`
`four. The focal length determines the image size on the sensor and thus deter-
`
`mines the size of the distribution area of the collected light. Doubling the focal
`
`length increases the area illuminated in the image by a factor of four and re-
`
`duces the intensity of the light in any given part of the image by a factor of
`
`four. So, if both the diameter and focal length are doubled, then the effects
`
`approximately cancel out, and the brightness of the image at the sensor is left
`
`unchanged, although the image is larger. In other words, it is the ratio of the
`
`focal length and the diameter that most strongly effects the image brightness.
`
`Because the diameter is in the denominator, a smaller f-number corre-
`
`sponds to a brighter image for a fixed focal length. In more complicated lens
`
`systems with multiple lens elements, such as those at issue in this IPR, the
`
`amount of light collected no longer depends on the diameter of a single lens
`
`(or of a single lens surface), and the effective focal length (EFL) is a function
`
`of the lens elements and their spacings. One definition of f number for such
`
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`Case No. IPR2020-00897
`Case Nos. IPR2020-00878
`Case Nos. IPR2020-00878
`U.S. Patent No. 10,324,277
`U.S. Patent No. 10,330,897
`U.S. Patent No. 10,330,897
`systems instead uses the diameter of the “entrance pupil” (EPD), meaning that
`systems instead uses the diameter of the “entrance pupil” (EPD), meaning that
`systems instead uses the diameter of the “entrance pupil” (EPD), meaning that
`the formula is changed to:
`the formula is changed to:
`the formula is changed to:
`
`
`
`
`
`
`(Ex. 1003, Sasián Decl. at 58–39.)
`Ex. 1003, ¶78.
`(Ex. 1003, Sasián Decl. at 58–39.)
`44. The concept of the “entrance pupil” is illustrated in the following draw-
`The concept of the “entrance pupil” is illustrated in the following draw-
`44. The concept of the “entrance pupil” is illustrated in the following draw-
`ing from Figure 4-2 of Walker:
`ing from Figure 4-2 of Walker:
`ing from Figure 4-2 of Walker:
`
`
`
`
`
`
`
`(Ex. 1016, Walker, p. 61.)
`(Ex. 1016, Walker, p. 61.)
`Ex. 1016, Walker, p. 61.
`45. As shown here, the entrance pupil reflects the size of the bundle of rays
`45. As shown here, the entrance pupil reflects the size of the bundle of rays
`As shown here, the entrance pupil reflects the size of the bundle of rays
`parallel to the optical axis of the lens that can enter the lens, travel through the
`parallel to the optical axis of the lens that can enter the lens, travel through the
`parallel to the optical axis of the lens that can enter the lens, travel through the
`aperture stop, and reach the image plane. Explained another way, the entrance
`aperture stop, and reach the image plane. Explained another way, the entrance
`aperture stop, and reach the image plane. Explained another way, the entrance
`
`7
`21
`
`21
`
`Exhibit 2001
`Exhibit 2001
`IPR2020-00878
`IPR2020-00878
`Page 24 of 82
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`pupil “is the image of the aperture stop as seen when looking from the object
`
`side of the lens.” Ex. 1016, Walker, p. 60.
`
`B. Multiple Element Lens Design
`
`The design parameters of a lens assembly include, among others: 1) the
`
`properties of lens materials (index of refraction, as well as the Abbe number,
`
`which describes the dispersion of refraction in the lens); 2) shapes of the op-
`
`tical surfaces of the lenses; 3) thicknesses of each of the lenses; 4) distances
`
`between each of the lens elements as well as the face of the image sensor; 5)
`
`the precise contours of the front (object-facing) and back (image-facing) sur-
`
`faces of the lenses; 6) the aperture stop size and location.
`
`The optical surfaces of the lenses are determined by radii of curvature
`
`and “aspheric coefficients.” To achieve improved performance by reducing
`
`spherical aberrations, astigmatism, and other problems with image quality,
`
`lens assemblies employ “aspheric” lens shapes, which are more complex than
`
`ordinary spherical lenses. The “aspheric coefficients” are parameters of a
`
`mathematical equation that defines a curve in space. The curve defined by that
`
`equation defines the curvature of the lens. The equation that defines the cur-
`
`vature of lenses is provided in the ‘277 patent at col. 4, line 5 as follows:
`
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`42.
`
`In the above equation, r is distance from (and perpendicular to) the
`
`
`
`
`optical axis, k is the conic coefficient, c=1/R where R is the radius of curvature, and
`In the above equation, r is distance from (and perpendicular to) the op-
`the (cid:302)(cid:182)s are aspheric coefficients. Each surface (front and back) of each lens is defined
`tical axis, k is the conic coefficient, c=1/R where R is the radius of curvature,
`by a combination of numbers for each of the above parameters. Calculating the
`and the α’s are aspheric coefficients. Each surface (front and back) of each
`above equation will generate a curve that defines the surface. The sum total of all of
`lens is defined by a combination of numbers for each of the above parameters.
`the parameters of a lens system, including the gaps between lenses, the curvature
`Calculating the above equation will generate a curve that defines the surface.
`parameters, indices of refraction, and Abbe numbers, all together are sometimes
`The sum total of all of the parameters of a lens system, including the gaps
`called a (cid:179)le(cid:81)(cid:86) (cid:83)(cid:85)e(cid:86)c(cid:85)i(cid:83)(cid:87)i(cid:82)(cid:81).(cid:180) See, e.g., Ex. 1006, 62-63. The pathway of light through
`between lenses, the curvature parameters, indices of refraction, and Abbe
`the lenses is defined by the incidence of rays on the surface of each lens, and then
`
`numbers, all together are sometimes called a “lens prescription.” See, e.g., Ex.
`how the material properties of the lenses bends the rays that pass through them.
`
`1006, 62-63. The pathway of light through the lenses is defined by the inci-
`These are shown mathematically, for example, in the ray-trace plots below for
`
`various lens system designs.
`dence of rays on the surface of each lens, and then how the material properties
`43. The emb(cid:82)dime(cid:81)(cid:87)(cid:86) i(cid:81) (cid:87)he (cid:182)032 a(cid:81)d (cid:182)712 (cid:83)a(cid:87)e(cid:81)(cid:87)(cid:86) describe an arrangement
`of the lenses bends the rays that pass through them. These are shown mathe-
`of at least five aspheric lens elements. As a result, there are at least the following
`matically, for example, in the ray-trace plots below for various lens system
`parameters that can be varied: the gaps between the five lenses, the sensor, the stop,
`designs.
`and window covering the sensor, and thicknesses of these elements (13 parameters
`Apple v. Corephotonics
`Exhibit 2013
`IPR2018-01146
`
`
`Exhibit 2013 Page 21 of 113
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`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
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`The embodiments in the ‘277 patent describe an arrangement of at least
`
`five aspheric lens elements. As a result, there are at least the following param-
`
`eters that can be varied: the gaps between the five lenses, the sensor, the stop,
`
`and window covering the sensor, and thicknesses of these elements (13 pa-
`
`rameters as shown in the tables describing embodiments of the ‘277 patent);
`
`the aspheric coefficients and a conic coefficient, k, and radius of curvature, r,
`
`for each lens (7 parameters per lens surface or 70 total), and Abbe numbers
`
`and refractive indices for each lens (or 10 total for 5 lenses). Therefore, there
`
`are 93 parameters that can be independently varied. This leads to a nearly in-
`
`finite variety of possible lens designs. For example, considering just ten pos-
`
`sible values for each of these parameters would require evaluating 1093
`
`combinations of parameter values. This is greater than the number of elemen-
`
`tary particles in the observable universe,2 and vastly more designs than could
`
`ever be feasibly evaluated.
`
`Moreover, the interrelationships between these parameters creates in-
`
`creased complexity. Although a computer program can predict what will hap-
`
`pen when rays of light go through a lens system, when just looking at the
`
`
`
`2 https://en.wikipedia.org/wiki/Elementary_particle
`
`10
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`Case No. IPR2020-00897
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`parameters without running a simulation, the relationship between the varia-
`
`bles can be nonlinear and unpredictable. The result is a huge design space for
`
`a lens designer to explore. And, while computer simulation and optimization
`
`techniques can help in aspects of the process, ultimately a significant degree
`
`of manual and hand-driven modification is required to arrive at an acceptable
`
`design. Also, computational optimization techniques may get trapped in local
`
`minima because of the highly multidimensional space. See, e.g., Ex. 2004, pp.
`
`167-70. So, it will be impossible to have it actually converge on an optimal
`
`design. This is equivalent to looking up in a valley surrounded by mountains.
`
`The designer may not know whether there is valley at a lower altitude on the
`
`side of one of the mountains. A POSITA would understand that purely com-
`
`puter-aided design may be appropriate for doublets or triplets (2- or 3- lens
`
`systems), but once there are more than three lenses, systems become too com-
`
`plex. See, e.g., Ex. 2004, p. 173.
`
`A POSITA would also understand that there are also a lot of factors that
`
`go beyond even the performance of image parameters that would need to be
`
`optimized. These include tolerance sensitivity, packaging, viability of materi-
`
`als, number of elements, and others. This makes the design problem even
`
`harder. Ex. 2004, p. 171.
`
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`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
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`III. LEVEL OF ORDINARY SKILL
`
`Petitioner offers that a “person having ordinary skill in the art
`
`(“POSITA”) would include someone who had, at the priority date of the ‘277
`
`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.” Pet. at 7. Further, “[s]uch a person would have
`
`had experience in analyzing, tolerancing, adjusting, and optimizing multi-lens
`
`systems for manufacturing, and would have been familiar with the specifica-
`
`tions of lens systems and their fabrication.” Id. Petitioner also submits that “a
`
`POSITA would have known how to use lens design software such as Codev,
`
`Oslo, or Zemax, and would have taken a lens design course or had equivalent
`
`training.” Id. Patent Owner does not disagree with Petitioner’s definition of a
`
`POSITA. Ex. 2001, ¶20.
`
`IV. CLAIM CONSTRUCTION
`
`Petitioner notes that two terms, “Effective Focal Length (EFL)” and
`
`“Total Track Length (TTL),” have previously been construed in relation to
`
`other patents that share a common specification with the ‘277 Patent. Pet. at
`
`8. Specifically, the Board construed these two terms in IPR2018-01140 as fol-
`
`lows:
`
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`Case No. IPR2020-00897
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`• Effective Focal Length (EFL): “the focal length of a lens assembly.”
`
`• Total Track Length (TTL): “the length of the optical axis spacing be-
`
`tween 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 a film sensor.”
`
`Patent Owner does not dispute these constructions. For all other terms,
`
`Patent Owner agrees with Petitioner that their plain and ordinary meaning, as
`
`they would have been understood by a POSITA, as of the effective filing date,
`
`in the context of the ‘277 patent, should be used. Pet. at 8; Ex. 2001, ¶59.
`
`V. OVERVIEW OF THE ASSERTED PRIOR ART3
`
`A. Ogino (Ex. 1005)
`
`Ogino issued on September 8, 2015 as U.S. Patent No. 9,128,267 (Ex.
`
`1005.) Petitioner contends that Ogino has an effective filing date of March 29,
`
`2013, based upon the filing date of the corresponding Japanese patent appli-
`
`cation. Pet. at 10.
`
`As described in Ogino’s abstract, its invention is a system of five lenses
`
`with a particular set of shapes:
`
`An imaging lens substantially consists of, in order from an ob-
`ject side, five lenses of a first lens that has a positive refractive
`
`3 See generally Ex. 2001, ¶¶60-74.
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`power and has a meniscus shape which is convex toward the
`object side, a second lens that has a biconcave shape, a third
`lens that has a meniscus shape which is convex toward the ob-
`ject side, a fourth lens that has a meniscus shape which is con-
`vex toward the image side; and a fifth lens that has a negative
`refractive power and has at least one inflection point on an im-
`age side surface. Further, the following conditional expression
`(1) is satisfied.
`
`1.4<f/f1<4 (1)
`
`Ex. 1005, Ogino, Abstract.
`
`This same set of shapes and conditions is described as the “imaging lens
`
`of the present invention” in Ogino’s “Summary of the Invention” section. Ex.
`
`1005, Ogino, 2:1–16.
`
`As shown in the embodiments, by making the first lens L1,
`which is a lens closest to the object, have a positive refractive
`power and have a meniscus shape which is convex toward the
`object side in the vicinity of the optical axis, the position of the
`rear side principal point of the first lens L1 can be set to be
`close to the object, and thus it is possible to appropriately re-
`duce the total length.
`
`Ex. 1005, Ogino, 7:31–37.
`
`Petitioner’s Ground 1 utilizing Ogino is based on Ogino’s “Example 4”
`
`or modifications to that example. Pet. at 9. The lens elements of Example 4
`
`are shown in Ogino, Figure 4:
`
`14
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`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
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`FIG.4
`
`EXAMPLE 4
`
`
`
`--...100(R14)
`
`
`
`Ex. 1005, Ogino, Figure 4.
`
`Figure 12 of Ogino provides certain optical characteristics of Example
`
`5, including its f-number of 3.04 and half-angle of view ω=32.5°:
`APPL-1005 / Page 5 of 28
`APPLE INC. v. COREPHOTONICS LTD.
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`U.S. Patent
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`Sep. 8, 2015
`
`Sheet 11 of 14
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`US 9,128.267 B2
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`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
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`% 0 | -
`
`Lu 77 00||O
`UUTÍ
`OO|-
`
`Ex. 1005, Ogino, Figure 11.
`
`The lens prescription for Example 4 is given in Ogino Tables 7 and 8:
`
`
`
`APPL-1005 / Page 12 of 28
`APPLE INC. v. COREPHOTONICS LTD.
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`
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`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
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`APPL-1005 / Page 25 of 28
`APPLE INC. v. COREPHOTONICS LTD.
`
`Ex. 1005, Ogino, columns 19-21.
`
`Petitioner’s Ground 2 utilizing Ogino is based on Ogino’s “Example 5”
`
`or modifications to that example. Pet. at 9. The lens elements of Example 5
`
`
`
`are shown in Ogino, Figure 5:
`
`17
`
`

`

`or modifications to that example. (Ex. 1003, Sasián Decl., ¶¶ 46, 51, 61.) The
`Case No. IPR2020-00897
`lens elements of Example 5 are shown in Ogino, Figure 5:
`U.S. Patent No. 10,324,277
`
`Ex. 1005, Ogino, Figure 5.
`(Ex. 1005, Ogino, Figure 5.)
`Figure 12 of Ogino provides certain optical characteristics of Example
`55. Figure 12 of Ogino provides certain optical characteristics of Example
`
`5, including its f-number of 3.94 and half-angle of view ω=25.9°:
`5, including its f-number of 3.94 and half-angle of view ω=25.9°:
`
`
`
`
`
`25
`
`18
`
`Exhibit 2001
`IPR2020-00878
`Page 28 of 82
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`

`

`Case Nos. IPR2020-00878
`Case No. IPR2020-00897
`U.S. Patent No. 10,330,897
`U.S. Patent No. 10,324,277
`
`
`
` Ex. 1005, Ogino, Figure 12.
`56. The lens prescription for Example 5 is given in Ogino Tables 9 and 10:
`The lens prescription for Example 5 is given in Ogino Tables 9 and 10:
`
`
`
`19
`
`26
`
`Exhibit 2001
`IPR2020-00878
`Page 29 of 82
`
`

`

`Case No. IPR2020-00897
`Case Nos. IPR2020-00878
`U.S. Patent No. 10,324,277
`U.S. Patent No. 10,330,897
`
`Case Nos. IPR2020-00878
`U.S. Patent No. 10,330,897
`
`
`
`
`
`(Ex. 1005, Ogino, column 21.)
`
`27
`
`
`
`
`
`Exhibit 2001
`IPR2020-00878
`Page 30 of 82
`
`B.
`
`Bareau
`
`20
`57. Bareau is an article by Jane Bareau and Peter P. Clark, titled “The Op-
`
`tics of Miniature Digital Camera Modules.” (Ex. 1012.) Dr. Sasián states that
`
`

`

`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
`
`Ex. 1005, Ogino, column 21.
`
`B.
`
`Bareau (Ex. 1012)
`
`Bareau is an article by Jane Bareau and Peter P. Clark, titled “The Op-
`
`tics of Miniature Digital Camera Modules.” Ex. 1012. Dr. Sasián states that
`
`this was presented at an International Optical Design Conference in June 2006
`
`and that it was published in SPIE Proceedings Vol. 6342 “a few months after
`
`the conference.” Ex. 1003, ¶ 70.
`
`Petitioner does not rely on any detailed lens design from Bareau or any
`
`teachings of how a lens designer would create a detailed lens design. Rather,
`
`Petitioner and Dr. Sasián rely on Bareau listing an f-number of 2.8 in its “typ-
`
`ical lens specifications for a 1⁄4′′ sensor format.” Ex. 1003, ¶¶ 71– 73; Ex.
`
`1012 at 3–4.
`
`Other parts of Bareau illustrate an important point relevant to this IPR:
`
`the fact that a person can simulate a lens design in lens design software such
`
`as Zemax does not mean that you can build that design. As Bareau explains:
`
`Layout drawings can be very misleading. Many times we find
`ourselves surprised when the mechanical layout of a lens barrel
`that looked reasonable on paper turns out to be very difficult or
`impossible to fabricate. Tabs on a barrel that appear substantial
`in a drawing, are found to be too flimsy to function on the ac-
`tual part, sharp edges on molded stops don’t fill completely be-
`cause the features are too small.
`
`21
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`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
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`Ex. 1012 at 1.
`
`Bareau explains aspects of the shape and size of lens elements, be they
`
`made out of plastic or glass, that are particularly problematic when producing
`
`miniature lenses like those at issue in this IPR:
`
`Scaling down such a lens will result in a system that is unmanu-
`facturable. If the design includes molded plastic optics, a scaled
`down system will result in element edge thicknesses shrinking
`to the point where the flow of plastic is affected. For glass ele-
`ments, the edge thicknesses will become too thin to be fabri-
`cated without chipping.
`
`Ex. 1012 at 1.
`
`Bareau explains that the issue of geometric tolerances, including both
`
`in the size and shape of individual lens elements and their alignment within
`
`the overall system, “proves to be the greatest challenge of producing these
`
`lenses.” Ex. 1012, Bareau at 3.
`
`Bareau explains that there are limits to achievable shapes in miniature
`
`lens. For molded lenses, these limits arise from the properties of the lens ma-
`
`terial, both in liquid form and in solid form, and from the techniques used to
`
`make the mold inserts that the lens parts are formed in. According to Bareau:
`
`Plastic injection molded optics have minimum edge thick-
`nesses, minimum center thicknesses and range of acceptability
`for their center to edge thickness ratio that must be met in order
`that they can be molded. Additionally, the maximum slope that
`
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`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
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`can be diamond-turned in mold inserts and measured in either
`the lens or the mold is around 45 degrees.
`
`Ex. 1012, Bareau at 8.
`
`As Bareau explains, similar limitations apply to glass lens elements:
`
`“Traditional glass lenses have similar types of requirements but with different
`
`values.” Ex. 1012, Bareau at 8. In molded glass lenses, “surfaces with in- flec-
`
`tions can only be used under very limited circumstances and flanges can only
`
`be formed in a restricted range of shapes, no sharp corners or abrupt changes
`
`in slope are allowed.” Ex. 1012, Bareau at 8.
`
`VI. PATENTABILITY OF CHALLENGED CLAIMS
`
`Petitioner’s analysis is incomplete and ignores how a POSITA would
`
`have designed an optical lens assembly. Ex. 2001, Milster Decl., ¶76. Because
`
`of this, a POSITA would understand that Petitioner’s results are at best inter-
`
`mediate structures that would not have been implemented, but rather would
`
`have needed further modification.
`
`When a POSITA starts to design an optical lens assembly, they would
`
`be provided instructions for that design and development. Ex. 2001, Milster
`
`Decl., ¶77.Those instructions would include the optical specifications that the
`
`design is require