`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS LTD.,
`Patent Owner
`
`———————
`
`
`Declaration of José Sasián, PhD
`under 37 C.F.R. § 1.68
`in Support of Petitioner Reply
`
`
`
`
`
` Apple v. Corephotonics
`
`1
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 4
`I.
`CLAIMS 1-3 AND 5-8 ARE OBVIOUS OVER OGINO’S EXAMPLE 4
`II.
`EMBODIMENT IN VIEW OF BAREAU. ............................................................... 5
`A. A POSITA would have been motivated to modify Ogino’s Example 4
`lens as shown. .......................................................................................... 5
`1. A POSITA would have used well-known techniques to modify the
`Ogino Ex. 4 lens. ................................................................................................ 6
`B. The modified Ex. 4 lens assembly does not include overlapping lenses
` ................................................................................................................11
`C. Manufacturing considerations are not required by the ’277 claims nor
`can they be imported into the claims. ....................................................13
`1. Dr. Milster seeks to import manufacturing requirements into the
`’277 claims where there are none. ...................................................................13
`2. Dr. Milster’s arguments contradict earlier statements in a related
`case that lens design is separate from manufacturing. .....................................15
`3. Manufacturing considerations are preferences, and do not show that
`lenses cannot be physically produced. .............................................................17
`4. The modified Example 4 lens would be suitable for applications
`outside of large-scale manufacturing. ..............................................................19
`5. Whether a prior art lens design is “finished” is not relevant to the
`claims of the ’277 patent. .................................................................................20
`D. The claims of the ’277 patent do not include relative illumination
`requirements. ..........................................................................................22
`III. CLAIMS 11-17 ARE OBVIOUS OVER OGINO’S EXAMPLE 5
`EMBODIMENT IN VIEW OF BAREAU (FIRST MODIFICATION). ................23
`A. A POSITA would have been motivated to generate the first modified
`Ex. 5 lens as discussed in my Declaration. ............................................24
`
` Apple v. Corephotonics
`
`2
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`B. The first modified Ex. 5 lens assembly does not include overlapping
`lenses. .....................................................................................................27
`C. Manufacturing considerations are not required by claims 11-17 of the
`’277 patent nor can they be imported into the claims............................29
`D. A POSITA could have further modified the Example 5 lens to meet Dr.
`Milster’s “manufacturing” requirements. ..............................................31
`E. There is no reliance on a combination of two modifications of Ogino’s
`Ex. 5 lens. ...............................................................................................34
`F. Dr. Milster’s arguments about differences in relative illumination plots
`for the Ex. 5 lens are irrelevant. .............................................................35
`IV. CLAIMS 1-10 AND 18-24 ARE OBVIOUS OVER OGINO’S EXAMPLE
`5 EMBODIMENT IN VIEW OF BAREAU (SECOND MODIFICATION). ........38
`A. A POSITA would have been motivated to generate the second modified
`Ex. 5 lens as discussed in my Declaration. ............................................38
`B. Manufacturing considerations are not required by claims 1-10 and 18-
`24 of the ’277 patent nor can they be imported into the claims. ...........43
`CONCLUSION ..............................................................................................45
`V.
`VI. APPENDIX ....................................................................................................46
`
`
`
` Apple v. Corephotonics
`
`3
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`I, José Sasián, Ph.D., declare as follows:
`Introduction
`I.
`
`1.
`
`I am the José Sasián who has previously submitted a declaration as
`
`APPL-1003 in this proceeding. The terms of my engagement, my background,
`
`qualifications and prior testimony, and the legal standards and claim constructions
`
`I am applying are set forth in my previous CV and declaration. See APPL-1003;
`
`APPL-1004. I offer this declaration in reply to Dr. Milster’s declaration filed in
`
`this proceeding as Exhibit 2001. In forming my opinion, I have considered the
`
`materials noted in my previous declaration, as well as the following additional
`
`materials:
`
`• APPL-1028 – Deposition Transcript of Tom Milster, Ph.D.
`
`• APPL-1029 – IPR 2019-00030, Paper 21
`
`• APPL-1030 – IPR 2019-00030, Ex. 2005
`
`• APPL-1036 – IPR 2020-00878, Paper 12
`
`• APPL-1038 – H. M. Leung et al., “Diamond turning and soft lithography
`
`processes for liquid tunable lenses” 20 J. Michomechanics Microengineering
`
`1 (Jan. 18, 2010)
`
`• APPL-1039 – Sebastian Scheiding et al., “Diamond milling or turning for
`
`the fabrication of micro lens arrays: comparing different diamond machining
`
` Apple v. Corephotonics
`
`4
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`technologies” Proc. SPIE 7927, Advanced Fabrication Technologies for
`
`Micro/Nano Optics and Photonics IV, 79270N (14 February 2011)
`
`• APPL-1040 – Sandy Suet To et al., Materials Characterisation and
`
`Mechanism of Micro-Cutting in Ultra-Precision Diamond Turning (2018)
`
`II. Claims 1-3 and 5-8 are obvious over Ogino’s Example 4 embodiment in
`view of Bareau.
`
`A. A POSITA would have been motivated to modify Ogino’s Example
`4 lens as shown.
`
`2.
`
`As discussed in my previous Declaration, it is my opinion that a
`
`POSITA would have found it obvious to modify Ogino’s Example 4 lens assembly
`
`in view of Bareau’s specifications for cell phone camera lenses with an F#=2.8 or
`
`less for ¼” and smaller image sensors. APPL-1003, ¶¶54-61. Such a combination
`
`would have been nothing more than applying Bareau’s specification for a brighter
`
`lens system for small pixel format sensors, according to known lens design and
`
`modification methods to yield a predictable result of Ogino’s Example 4 lens
`
`assembly likewise supporting an f-number of 2.8 or lower for a small pixel sensor
`
`format. Id.
`
`3.
`
`As established in my Declaration, a POSITA would have been
`
`motivated to make these modifications using techniques within his or her skill
`
`level. See id. Furthermore, Dr. Milster’s (Patent Owner’s expert) arguments of the
`
`alleged requirements to “manufacture” the modified Example 4 lens are overly
`
` Apple v. Corephotonics
`
`5
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`rigorous and not applicable to the claims at issue. See Ex. 2001, ¶¶89-95. None of
`
`these manufacturing requirements are described in any of the claims or the
`
`specification of the ’277 patent. See APPL-1028, 90:13-91:4. Further, as discussed
`
`below, a POSITA would have been motivated to follow steps as provided in my
`
`Declaration to generate a modified lens based on Ogino’s Example 4, whether or
`
`not such manufacturing considerations were applicable.
`
`1.
`
`A POSITA would have used well-known techniques to modify
`the Ogino Ex. 4 lens.
`As discussed previously in my declaration, a POSITA would have
`
`4.
`
`used well-known techniques to modify Ogino’s Example 4 lens to achieve a
`
`specific design objective. APPL-1003, ¶¶54-60. In particular, reducing the f-
`
`number to 2.8 would have been an obvious design objective, as evidenced by
`
`Bareau and acknowledged by Patent Owner stating that “Bareau suggests that a
`
`lens with f-number of 2.8 was desirable for use in a miniature digital camera in
`
`2013” in its Response for the related IPR 2020-00878 for U.S. Patent No.
`
`10,330,897 (“the ’897 patent”). APPL-1036, p.30; see APPL-1012, pp.3-4.
`
`5.
`
`However, Dr. Milster appears to take issue with the minimal nature of
`
`changes made to Ogino’s Example 4 lens as compared to the original Example 4
`
`lens. Ex. 2001, ¶¶99-100. In particular, Dr. Milster points out that the spaces
`
`between lens elements in the modified Example 4 lens “are identical to those found
`
`in the unmodified Example 4 of Ogino.” Id., ¶100. Dr. Milster argues that instead
`
` Apple v. Corephotonics
`
`6
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`of keeping these spaces constant, “a POSITA would have allowed spacings
`
`between lens surfaces to vary” because “[t]his would permit better performance to
`
`be obtained during the design process.” Id., ¶¶99-100. However, Dr. Milster does
`
`not provide any example of how Ogino’s Example 4 lens design could have been
`
`improved by varying spacing between lens surfaces, instead relying on the bare
`
`assertion that prohibiting the lens spacings to vary “might have prevented a
`
`POSITA from finding the best performance result.” Ex. 2001, ¶100. Further, a
`
`POSITA would have known that releasing too many variables for optimization
`
`often leads to drastic changes to the lens structure and would have first made
`
`minimum changes to a lens to maintain the lens within the scope of a patent.
`
`6.
`
`Keeping certain variables constant, such as spacing between lenses,
`
`while varying other parameters, is precisely the approach a POSITA would have
`
`taken. See APPL-1017, p.168 (stating that after entering the lens design to be
`
`improved into a design computer program, “each variable is changed a small
`
`amount, called an increment, and the effect to performance is then computed”). Dr.
`
`Milster testified that he took a similar gradual “step-wise process” in modifying
`
`lenses. APPL-1028, 21:6-18. This is also the same process that Patent Owner’s
`
`expert Dr. Moore described when he was deposed in earlier, related proceedings
`
`involving patents in the same family. APPL-1023, 99:6-18 (stating that variables in
`
`a lens design are changed “gradually” and a POSITA would check optical
`
` Apple v. Corephotonics
`
`7
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`performance between steps). Besides spacing between lens elements, the thickness
`
`of each lens element is the same for the original and modified Example 4 lenses.
`
`Compare APPL-1003, p.118 with APPL-1005, Table 7, 19:28-20:42.
`
`7.
`
`To that end, a POSITA would have looked to lower the f-number of
`
`Ogino’s Example 4 lens assembly first with as few changes to the original design
`
`as possible to maintain Ogino’s lens structure. By following well-understood steps
`
`for improving a lens design such as opening the aperture, allowing vignetting, and
`
`optimizing the lens, a POSITA would have discovered that this design objective
`
`could be achieved with minimal changes to the structure of the lens, as shown by
`
`the modified Example 4 lens. See APPL-1003, p.118. These steps and the resulting
`
`modified lens were included in my earlier declaration:
`
`8.
`
`
`
` Apple v. Corephotonics
`
`8
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`APPL-1003, p.118.
`
`9.
`
`Analysis showing good optical performance of the modified Example
`
`4 lens was also provided in my Declaration:
`
`
`
` Apple v. Corephotonics
`
`9
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`
`
`APPL-1003, p.33.
`
`10. Dr. Milster does not dispute this optical performance. It is my opinion
`
`that Dr. Milster’s unsupported arguments that a POSITA would have made more
`
`changes to the parameters of Ogino’s Example 4 lens when these changes are
`
`neither defined or necessary have no weight. Again, a POSITA would have
`
` Apple v. Corephotonics
`
`10
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`explored first minimum changes to Ogino’s lens structure before attempting
`
`substantial changes.
`
`11. As discussed in my declaration, the modified Example 4 lens is only
`
`one example of a lens that a POSITA could have designed to achieve an f-number
`
`of 2.8, and represents a simple solution well within the level of skill of a POSITA.
`
`See APPL-1003, ¶59.
`
`B.
`
`The modified Ex. 4 lens assembly does not include overlapping
`lenses
`
`12. Dr. Milster further alleges that the modified Example 4 lens assembly
`
`has overlapping lens elements and argues that “a lens assembly configuration with
`
`lens[es] that are overlapping or touching would never be acceptable for an optical
`
`design, let alone for manufacturing, tolerances or desensitization.” Ex. 2001, ¶94.
`
`Dr. Milster provided an annotated lens profile of the modified Example 4 lens with
`
`red boxes drawn around the alleged overlap between lens elements L4 and L5
`
`below:
`
` Apple v. Corephotonics
`
`11
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`
`
`Ex. 2001, ¶93.
`
`13. Dr. Milster’s allegations of contact between lens elements L4 and L5
`
`appear to be based on no more than a visual inspection of the lens profile. See
`
`APPL-1028, 129:4-13 (Dr. Milster testifying that “[i]t was sufficient for me to see
`
`the overlap of the surface shapes”). In fact, although Dr. Milster identified accurate
`
`methods for determining whether lens surfaces overlap including “the sag
`
`[equation] of the surface versus radius” and viewing a zoomed-in region of the area
`
`on Zemax, he did not conduct any such analysis. See APPL-1028, 128:3-8, 133:21-
`
`134:17, 141:9-12.
`
` Apple v. Corephotonics
`
`12
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`14.
`
`If Dr. Milster had performed this analysis, he would have determined
`
`that the L4 and L5 lens elements of the modified Example 4 lens do not touch or
`
`overlap in the ray region as shown by the Zemax analysis below (and included in
`
`the Appendix), the zoomed in ray trace of lens elements L4 and L5 clearly shows
`
`space between these lens elements. See Appendix, Fig. 1.
`
`
`
`Appendix, Figs. 3A, 3B.
`
`15. Thus, Dr. Milster’s statements regarding overlapping lenses do not
`
`apply.
`
`C. Manufacturing considerations are not required by the ’277 claims
`nor can they be imported into the claims.
`
`1.
`
`Dr. Milster seeks to import manufacturing requirements into
`the ’277 claims where there are none.
`16. The majority of Dr. Milster’s arguments hinge on the alleged
`
`“manufacturability” of the modified Example 4 lens design. See Ex. 2001, ¶¶89-95.
`
`Dr. Milster does not define what “manufacturing” means in terms of the claims but
`
` Apple v. Corephotonics
`
`13
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`seems to rely on an implicit requirement of large-scale injection plastic molding.
`
`Id., ¶¶91, 94; APPL-1028, 173:18-23 (Dr. Milster stating “[i]f it’s to produce a lens
`
`that is going to be replicated a million times a month, then, absolutely the
`
`POSITA’s job is to make a manufacturable lens. And that’s the situation here with
`
`mobile cell phone lenses.”). Dr. Milster then argues that these large-scale
`
`manufacturing considerations—tolerances, oversizing, and desensitization—should
`
`be required of the modified lens designs presented in my Declaration. See Ex.
`
`2001, ¶¶89-95.
`
`17. However, claims 1-24 of the ’277 patent do not recite any
`
`manufacturing requirements. Even Dr. Milster agrees:
`
`Q. So let's continue on with the '277. And I want to look
`specifically at the claims. Is there anything in the claims
`themselves, which start on column 8, that relate to
`manufacturing considerations?
`
`A. (Witness reviewing document). I don't see any
`reference directly
`to what
`is understood
`in
`the
`specification with respect to the center-to-edge thickness
`ratio.
`
`Q. Do you see anything in the claims about other
`manufacturing considerations other than the center-to-
`edge thickness ratio?
`
`A. No, other than what's understood -- would be
`understood by a POSITA.
`
` Apple v. Corephotonics
`
`14
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`APPL-1028, 90:13-91:4.
`18. The only manufacturing consideration that Dr. Milster identified in
`
`the specification of the ’277 patent was the center-to-edge thickness ratio. See
`
`APPL-1028, 90:20-23. However, as discussed above and admitted by Dr. Milster,
`
`the center-to-edge thickness ratio does not appear in the claims. APPL-1028,
`
`90:13-91:4.
`
`19. The claims of the ’277 patent do not include any manufacturing
`
`requirements and thus it is my opinion that Dr. Milster’s arguments invoking such
`
`requirements where they are conspicuously absent should be rejected.
`
`2.
`
`Dr. Milster’s arguments contradict earlier statements in a
`related case that lens design is separate from manufacturing.
`20. Dr. Milster’s arguments that the modified Example 4 designed would
`
`be rejected on the basis of manufacturing considerations contradicts previous
`
`arguments that lens design is separate from lens manufacturing. For example, I am
`
`informed that in IPR 2019-00030 regarding the ’568 patent (the parent of the ’277
`
`patent), Patent Owner argued:
`
`And more fundamentally, a POSITA with the appropriate
`education and experience would not—as a lens designer
`and not a manufacturer—have had the motivation nor the
`requisite knowledge to combine the manufacturing and
`material science teachings of Beich with the lens system
`of Ogino.
`
` Apple v. Corephotonics
`
`15
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`APPL-1029, p.4 (emphasis original).
`
`21. Dr. Moore (Patent Owner’s expert in IPR2019-00030) also directly
`
`contradicted the opinion of Dr. Milster in this proceeding that manufacturing
`
`considerations would be an integral part of the lens design process:
`
`As I discussed herein in Section IV, the work of lens
`designers was in 2013 and still is today, separate and
`distinct from the manufacturing of lenses themselves. The
`design and manufacture of lens systems each requires
`specialized knowledge, education, and experience in
`different fields. In fact, the persistent and pervasive
`disjoint between lens designers and lens manufacture in
`the industry is noted by Beich itself ... engineers on lens
`design teams do not know, and do not care, about the
`special manufacturing concerns that crop up during the
`production of polymer lens designs.
`
`APPL-1030, p.56 (emphasis added).
`
`22.
`
`I was therefore informed that although Patent Owner’s expert argued
`
`in a related case that lens manufacturing and lens design are two completely
`
`separate considerations for a POSITA, Dr. Milster now argues that any prior art
`
`lens designs would be rejected based solely on what were previously argued to be
`
`irrelevant manufacturing considerations. See Ex. 2001, ¶¶92-98, 105-108. Thus, in
`
`my opinion, Patent Owner’s expert’s arguments appear conclusory and thus should
`
`carry no weight. A POSITA may be motivated to modify a lens design to meet a
`
` Apple v. Corephotonics
`
`16
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`particular manufacturing requirement pertinent to a particular design, but a
`
`POSITA would not wholly reject a design because it did not meet some
`
`manufacturing considerations, which Dr. Milster has not even shown would be
`
`relevant for a particular design.
`
`3. Manufacturing considerations are preferences, and do not
`show that lenses cannot be physically produced.
`
`23. Even if a POSITA found the various manufacturing considerations
`
`listed by Dr. Milster to be relevant to the lens design at issue, these considerations
`
`would have been understood to be preferences and not requirements. In fact, Beich
`
`states that “[r]ules of thumb are quick generalizations. They are useful for initial
`
`discussions, but the rules can quickly break down as the limits of size, shape,
`
`thickness, materials, and tolerances are encountered.” APPL-1007, p.7. Thus, even
`
`the strictest manufacturing requirements would have been balanced with other
`
`considerations.
`
`24.
`
`In fact, the balance between performance and cost is a common topic
`
`in lens design literature. See APPL-1012, p.11 (stating it will be “interesting to see
`
`what cost/image quality balance cell phone manufacturers finally select”); APPL-
`
`1007, p.1 (providing “a review of the cost tradeoffs between design tolerances,
`
`production volumes, and mold cavitation”).
`
`25. Even in the case where certain manufacturing considerations are
`
`important for a particular design or purpose and are not met, it does not
`
` Apple v. Corephotonics
`
`17
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`automatically mean that the design is impossible to make. See APPL-1007, p.9
`
`(discussing designs that are “more challenging to manufacture” based on unmet
`
`manufacturing considerations, but not impossible). In fact, Dr. Milster has not
`
`provided evidence that the designs in my Declaration, would have been impossible
`
`to produce. It is my opinion that the lenses presented in my Declaration would not
`
`be impossible to produce. Ray tracing shows that at F=2.8 the maximum edge
`
`thickness of the first lens is 0.059593 mm.
`
`Appendix, Fig. 1A. The edge thickness is about 1/10 the central lens thickness as
`
`shown in Fig. 1 on the left.
`
`
`
` Apple v. Corephotonics
`
`18
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`
`
`Appendix, Fig. 1B. The marginal ray length inside the lens is slightly longer at
`
`about 0.065 mm. Although the 0.065 mm annular aperture may not be ideal for
`
`mass production, the lens could be fabricated with plastic injection molding or with
`
`diamond turning as show above (on right). In reference to diamond turning, this
`
`technology has been used for several decades to shape sharp corners (APPL-1038,
`
`pp.7-8) and “edge slopes up to 60°” (APPL-1039, p.11) as well as manufacturing
`
`tolerances “smaller than one part in 104 or perhaps one part in 105” (APPL-1040,
`
`p.3). Therefore, a POSITA would have understood that the modified designs set
`
`forth in my Declaration would be physically manufacturable.
`
`4.
`
`The modified Example 4 lens would be suitable for
`applications outside of large-scale manufacturing.
`
`26. Dr. Milster’s arguments that the modified lenses be rejected for not
`
`meeting strict manufacturing requirements (such as those for mass-produced
`
` Apple v. Corephotonics
`
`19
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`lenses) ignore a POSITA designing lenses for other applications. See Ex. 2001,
`
`¶¶89-95. As discussed above, the claims of the ’277 patent do not include any
`
`requirements for mass production manufacturing. Parameter changes that a
`
`POSITA could have used to modify Ogino would therefore not have been subject
`
`to the rigorous design requirements of mass-produced injection molding as Dr.
`
`Milster argues. Id. Rather, a POSITA could have been motivated to design a lens
`
`for other purposes like limited manufacturing or experimental research.
`
`27. Dr. Milster agrees that applications for useful lens designs exist
`
`outside of large-scale manufacturing: “[a]nd so your question was does a POSITA
`
`ever design a lens other than manufacturing and my answer to that is yes.” APPL-
`
`1028, 173:9-11. An “international lens design conference” is one such non-
`
`manufacturing application that a POSITA would consider. Id., 172:25. Dr. Milster
`
`has not shown that the modified Example 4 presented in my delcaration would not
`
`have been useful for any of these other applications. Id.
`
`28. Thus, a POSITA would have understood the modified Example 4 lens
`
`assembly to have usefulness and purpose, even if it does not meet the strict large-
`
`scale manufacturing considerations Dr. Milster alleges but has not proven are
`
`required by the claims.
`
`5. Whether a prior art lens design is “finished” is not relevant to
`the claims of the ’277 patent.
`
` Apple v. Corephotonics
`
`20
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`29. As discussed above, Dr. Milster alleges that the modified lenses
`
`presented in my Declaration are “at best intermediate structures that would not
`
`have been implemented, but rather would have needed further modification.” Ex.
`
`2001, ¶76. However, the designs in the ’277 patent do not satisfy the rigorous
`
`manufacturing considerations argued by Dr. Milster. In fact, Dr. Milster did not
`
`provide any analysis of the ’277 patent showing that the claims met the same
`
`manufacturing standards that he alleges are required for the modified Example 4
`
`design, and actually admitted that he did not perform such an analysis for the
`
`lenses described in the specification:
`
`Q. Did you perform any Zemax analysis on the lenses
`described in the specification in your analysis of
`determining whether they were manufacturable?
`
`A. No. I did not.
`
`APPL-1028, 98:24-99:4.1
`
`30.
`
`If Dr. Milster would have done this analysis, he would have found that
`
`the Example 1 lens assembly of the ’277 patent is not suitable for manufacturing
`
`(under his own theory) for at least the reasons that 1) it is not desensitized and 2)
`
`suffers from ghost images that are focused on the image plane. See Appendix,
`
`
`1 Asked in reference to the ’897 patent which shares the same specification as the
`
`’277 patent.
`
` Apple v. Corephotonics
`
`21
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`pp.50-57. For example, as shown in Fig. 5B in the Appendix, the wavefront error
`
`change is significant between the nominal lens 2 of the Example 1 lens assembly
`
`of the ’277 patent and the case where the lens is decentered by 0.005 mm. In
`
`contrast, Fig. 5D shows minimal wavefront error change for the Example 1 lens
`
`assembly where lens 2 is decentered. Fig. 5E shows ghost images focusing in the
`
`image plane of the nominal Example 1 lens assembly. Based on this alone,
`
`manufacturing considerations are not implicitly required by the claims in any
`
`fashion because Patent Owner’s own embodiments do not meet them.
`
`31. Moreover, a POSITA would have understood that further steps would
`
`have been required to prepare the lenses of the ’277 patent for manufacturing, such
`
`as conducting a stray light analysis, specifying stray light apertures (glare stops),
`
`adjusting for the actual indices of refraction of chosen materials, etc. These steps
`
`are also not recited in the claims or even contemplated by the ’277 patent. It is my
`
`understanding that one cannot import into the claims requirements not recited
`
`already in the claims or specification.
`
`D. The claims of the ’277 patent do not include relative illumination
`requirements.
`
`32. Dr. Milster also argues that the modified Example 4 lens is
`
`unacceptable because relative illumination “dips below 50% at about 28°” and
`
`Bareau specifies “relative illumination [that] is >50%”. Ex. 2001, ¶97. However,
`
`similar to the manufacturing considerations discussed above, the claims of the ’277
`
` Apple v. Corephotonics
`
`22
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`patent do not include any requirements for relative illumination. Instead, the
`
`relative illumination figure of greater than 50% listed in the “typical lens
`
`specifications” of Bareau is exactly that –a “typical” lens characteristic and not a
`
`necessary requirement. See Bareau, p.7.
`
`33. Although a POSITA would have been motivated to improve relative
`
`illumination in general, a lens not meeting a “typical” relative illumination
`
`specification would not have been immediately dismissed by a POSITA. Further, if
`
`a higher relative illumination was an indispensable design requirement, a POSITA
`
`could have considered making further modifications to Ogino’s Example 4 lens
`
`assembly to achieve this. Id. Further, a POSITA would have known that
`
`photographic lenses are also designed with a relative illumination less than 50%.
`
`See APPL-1003, ¶62; APPL-1005, 19:28-22:60 (describing Ogino’s Example 4
`
`and Example 5 lens assemblies that have a relative illumination less than 50%).
`
`34. Consequently, in my opinion claims 1-3 and 5-8 are obvious in view
`
`of Ogino’s Example 4 embodiment and Bareau as presented in my Declaration.
`
`None of Dr. Milster’s arguments or alleged implicit limitations change my analysis
`
`that each and every recited limitation is satisfied as explained in my Declaration.
`
`III. Claims 11-17 are obvious over Ogino’s Example 5 embodiment in view
`of Bareau (first modification).
`
`35. Dr. Milster’s arguments regarding claims 1-24 of the ’277 patent are
`
`similarly directed to the “manufacturability” of the two modified Example 5 lenses
`
` Apple v. Corephotonics
`
`23
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`provided in my Declaration (referred to as the “first modified Example 5 lens”
`
`described with respect to claims 11-17 and the “second modified Example 5 lens”
`
`described with respect to claims 1-10 and 18-24). These arguments fail for similar
`
`reasons as discussed above.
`
`A. A POSITA would have been motivated to generate the first
`modified Ex. 5 lens as discussed in my Declaration.
`
`36. As discussed above regarding the combination of Ogino and Bareau, a
`
`POSITA looking to improve a lens design like Ogino’s Example 5 would have
`
`used well-known techniques to achieve a specific objective, such as reducing the f-
`
`number to 2.8 as evidenced by Bareau. See Petition, pp.51-59; APPL-1003, ¶¶68-
`
`75; APPL-1012, pp.3-4. One possible result of this modification is the first
`
`modified Example 5 lens presented in my Declaration:
`
` Apple v. Corephotonics
`
`24
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`
`
`Petition, p.54, APPL-1003, p.122.
`
`37. Dr. Milster makes similar arguments to those discussed above with
`
`regard to the minimal changes in the modified lens design, and points out that the
`
`first modified Example 5 lens and the original Example 5 lens have identical
`
`thicknesses of lens elements and spaces between lens elements. Ex. 2001, ¶111.
`
`Dr. Milster argues that keeping these values constant “would have almost certainly
`
`prevented a POSITA from finding the best performance result.” Id. However, Dr.
`
`Milster’s statements are not supported by an example of how Ogino’s Example 5
`
`lens design could have been improved by varying spacing between lens surfaces.
`
` Apple v. Corephotonics
`
`25
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`Further, what is the best design highly depends on application. Dr. Milster also
`
`does not address the analysis showing good optical performance of the first
`
`modified Example 5 lens as provided in my Declaration:
`
`
`
`
`
`APPL-1003, ¶72.
`
`38. As discussed above, a POSITA would have kept certain variables
`
`constant (such as the spacing between lenses) while varying other parameters to
`
` Apple v. Corephotonics
`
`26
`
`APPL-1037 / IPR2020-00897
`
`

`

`
`
`Declaration of José Sasián, Ph.D. in Support of Petitioner Reply
`
`lower the f-number of Ogino’s Example 5 lens assembly with as few changes to
`
`the original lens as possible to maintain Ogino’s lens structure. See APPL-1017,
`
`p.168. Both of Patent Owner’s experts, Dr. Milster and Dr. Moore, testified that a
`
`POSITA would have taken similar gradual steps in modifying lenses. See APPL-
`
`1028, 21:6-18; APPL-102