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`Paper No.
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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
`
`_____________________
`
`
`IPR2020-00897
`Patent No. 10,324,277
`
`_____________________
`
`
`PETITIONER’S REPLY
`
`
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`

`

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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`
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`
`
`I.
`II.
`
`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`Claims 1-3 and 5-8 are obvious over Ogino’s Example 4 in view
`of Bareau. ......................................................................................................... 1
`A. A POSITA would have been motivated to modify Ogino’s
`Example 4 as shown. ............................................................................. 1
`1.
`Dr. Sasián used the same techniques that a POSITA
`would have used to generate the modified Ogino
`Example 4. .................................................................................. 2
`The modified Example 4 does not include overlapping
`lenses ..................................................................................................... 7
`C. Manufacturing considerations are not required by the
`claims nor can they be imported to avoid unpatentability. ................... 9
`1.
`Patent Owner seeks to import manufacturing
`requirements into the claims where there are none. ................... 9
`Patent Owner’s arguments contradict its statements
`in a related case that lens design is separate from
`manufacturing. ..........................................................................11
`3. Manufacturing considerations are preferences, and
`do not show that lenses cannot be physically
`produced. ...................................................................................13
`The modified Example 4 would be suitable for
`applications outside of large-scale manufacturing. ..................14
`5. Whether a prior art lens design is “finished” is not
`relevant. .....................................................................................15
`The claims do not
`include
`relative
`illumination
`requirements. .......................................................................................16
`III. Claims 11-17 are obvious over Ogino’s Example 5 in view of
`Bareau (first modification). ...........................................................................17
`ii
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`D.
`
`
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`B.
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`2.
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`4.
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`B.
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`E.
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`F.
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`A. A POSITA would have been motivated to generate the
`first modified Example 5 as discussed in the Petition. .......................18
`The first modified Example 5 lens assembly does not
`include overlapping lenses. .................................................................21
`C. Manufacturing considerations are not required by claims
`11-17 nor can they be imported to avoid unpatentability. ..................22
`D. A POSITA could have further modified Example 5 to meet
`Patent Owner’s “manufacturing” requirements. .................................24
`Petitioner does not rely on a combination of two
`modifications of Ogino’s Example 5. .................................................27
`Patent Owner’s arguments about differences in relative
`illumination plots for the Example 5 are irrelevant. ...........................28
`IV. Claims 1-10 and 18-24 are obvious over Ogino’s Example 5 in
`view of Bareau (second modification). .........................................................30
`A. A POSITA would have been motivated to generate the
`second modified Example 5 as discussed in the Petition. ...................30
`B. Manufacturing considerations are not required by the
`claims, nor can they be imported to avoid unpatentability. ................35
`Conclusion .....................................................................................................37
`V.
`VI. Certificate of Word Count .............................................................................38
`
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`
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`iii
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
`PETITIONER’S EXHIBIT LIST
`
`
`
`
`
`Updated: June 21, 2021
`
`APPL-1001 U.S. Patent No. 10,324,277
`APPL-1002 Prosecution History of U.S. Patent No. 10,324,277
`
`APPL-1003 Declaration of José Sasián, Ph.D., under 37 C.F.R. § 1.68
`
`APPL-1004 Curriculum Vitae of José Sasián
`APPL-1005 U.S. Patent No. 9,128,267 to Ogino et al. (“Ogino”)
`
`APPL-1006 Warren J. Smith, MODERN LENS DESIGN (1992) (“Smith”)
`APPL-1007 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),
`https://doi.org/10.1117/12.861364 (“Beich”)
`APPL-1008 U.S. Patent No. 7,777,972 to Chen et al. (“Chen”)
`APPL-1009 Reserved
`
`APPL-1010 Max Born et al., PRINCIPLES OF OPTICS, 6th Ed. (1980) (“Born”)
`
`APPL-1011 Prosecution history of U.S. Patent No. 9,128,267 to Ogino
`APPL-1012 Jane Bareau et al., “The optics of miniature digital camera
`modules,” SPIE Proceedings Volume 6342, International Optical
`Design Conference 2006; 63421F (2006)
`https://doi.org/10.1117/12.692291 (“Bareau”)
`APPL-1013 Rudolf Kingslake, OPTICS IN PHOTOGRAPHY (1992) (“Kingslake”)
`
`APPL-1014 U.S. Patent No. 7,859,588 to Parulski et al. (“Parulski”)
`APPL-1015 Japanese Patent Pub. No. JP2013106289 to Konno et al. and
`certified English translation
`
`
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`Petitioner’s Reply
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`APPL-1016 Bruce J. Walker, OPTICAL ENGINEERING FUNDAMENTALS (1995)
`(“Walker”)
`APPL-1017 Robert E. Fischer, Optical System Design (2008) (“Fischer”)
`APPL-1018 Michael P. Schaub, THE DESIGN OF PLASTIC OPTICAL
`SYSTEMS (2009) (“Schaub”)
`APPL-1019 Optical Society of America, HANDBOOK OF OPTICS, vol. II 2nd
`ed. (1995) (“Handbook of Optics”)
`APPL-1020 U.S. Patent No. 10,324,273 to Chen et al. (“Chen”)
`
`APPL-1021 U.S. Patent No. 9,857,568
`APPL-1022 U.S. Patent No. 9,568,712
`
`APPL-1023 Deposition Transcript of Duncan Moore, Ph.D. in IPR2018-01140
`
`APPL-1024 U.S. Patent No. 7,321,475 to Wang et al.
`APPL-1025 U.S. Patent No. 8,508,648 to Kubota et al.
`
`APPL-1026 Reserved
`
`Deposition Transcript of Tom Milster, Ph.D.
`
`APPL-1027 Email from Patent Owner’s counsel authorizing electronic service
`APPL-1028
`(NEW)
`APPL-1029
`(NEW)
`APPL-1030
`(NEW)
`APPL-1031 Reserved
`APPL-1032 Reserved
`
`IPR2019-00030, Paper 21
`
`IPR2019-00030, Ex. 2005
`
`APPL-1033 Reserved
`
`APPL-1034 Reserved
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`v
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`APPL-1035 Reserved
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`
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`
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`IPR2020-00878, Paper 12
`
`Declaration of José Sasián, Ph.D. in support of Petitioner’s Reply
`
`H. M. Leung et al., “Diamond turning and soft lithography
`processes for liquid tunable lenses” 20 J. Micromechanics
`Microengineering 1 (Jan. 18, 2010)
`Sebastian Scheiding et al., “Diamond milling or turning for the
`fabrication of micro lens arrays: comparing different diamond
`machining technologies” Proc. SPIE 7927, Advanced Fabrication
`Technologies for Micro/Nano Optics and Photonics IV, 79270N
`(14 February 2011) https://doi.org/10.1117/12.874751
`Sandy Suet To et al., Materials Characterisation and Mechanism of
`Micro-Cutting in Ultra-Precision Diamond Turning (2018)
`
`APPL-1036
`(NEW)
`APPL-1037
`(NEW)
`APPL-1038
`(NEW)
`
`APPL-1039
`(NEW)
`
`APPL-1040
`(NEW)
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`vi
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`Introduction
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`
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`I.
`
`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`
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`The Petition and evidence provide detailed reasons why a person of skill in
`
`the art (“POSITA”) would have understood the cited references to render obvious
`
`claims 1-24. Patent Owner’s Response fails to overcome the Petition because it
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`imports numerous manufacturing considerations not required by the claims or even
`
`mentioned in the specification. The Board should therefore continue to find the
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`challenged claims unpatentable.
`
`II. Claims 1-3 and 5-8 are obvious over Ogino’s Example 4 in view of
`Bareau.
`
`A. A POSITA would have been motivated to modify Ogino’s
`Example 4 as shown.
`
`Patent Owner does not dispute that the modifications of Ogino’s Example 4
`
`meet all the requirements of the claims at issue. See Response, p.30. Patent Owner
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`also does not dispute that a POSITA could have modified Ogino’s Example 4 to
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`reduce the f-number in the way shown by Petitioner’s expert Dr. Sasián. In fact,
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`Patent Owner states that a POSITA would have understood the modified Example
`
`4 to be an “intermediate result” that could have been produced, but not
`
`implemented. See Response, pp.23, 30.
`
`Instead, Patent Owner argues that a POSITA would not actually follow this
`
`approach, alleging inaccurate analysis of the modified lens design, design process
`
`assumptions, and irrelevant manufacturing requirements. See Response, pp.32-39.
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`1
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`However, as established in the Petition and discussed below, a POSITA would
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`
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`
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`have been motivated to make these modifications using techniques well within his
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`or her skill level. See Petition, pp.41-45, 52-56; APPL-1003, ¶¶51-58, 61-67.
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`Furthermore, Patent Owner’s arguments regarding rigorous manufacturing
`
`considerations allegedly required to “manufacture” the modifications of Ogino’s
`
`Example 4 are irrelevant as none are required or even mentioned in the claims or
`
`the specification, and are not a necessary part of the process a POSITA would have
`
`followed to generate the modified Example 4 lens design. APPL-1037, ¶3.
`
`1.
`
`Dr. Sasián used the same techniques that a POSITA would
`have used to generate the modified Ogino Example 4.
`
`A POSITA looking to improve a lens design (such as Ogino’s Example 4)
`
`would have used well-known techniques to modify the design to achieve a specific
`
`design objective. APPL-1003, ¶¶51-58. Specifically, reducing the f-number to 2.8
`
`would have been an obvious design objective, as evidenced by Bareau. See APPL-
`
`1012, pp.3-4. Patent Owner acknowledged 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.
`
`Patent Owner appears to take issue with the minimal nature of changes made
`
`to Ogino’s Example 4 as compared to the original Example 4. pointing out that the
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`2
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`spaces between lens elements in the modified Example 4 “are identical to those
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`
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`
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`found in the unmodified Example 4 of Ogino.” Response, p.38. According to
`
`Patent Owner: “a POSITA would have allowed spacings between lens surfaces to
`
`vary” to “permit better performance to be obtained during the design process.” Id.,
`
`p.37. However, Patent Owner does not provide any example of how Ogino’s
`
`Example 4 could have been improved by varying spacing between lens surfaces,
`
`instead relying on Dr. Milster’s statement that keeping spacings constant “might
`
`have prevented a POSITA from finding the best performance result.” Ex. 2001,
`
`¶100.
`
`Keeping certain variables constant, such as spacing between lenses, while
`
`varying other parameters, is precisely the approach a POSITA would have taken.
`
`See APPL-1037, ¶6; APPL-1017, p.168 (stating that to improve a lens design,
`
`“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. Patent Owner’s
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`expert Dr. Moore also described a similar process 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 performance between steps). Petitioner notes that besides
`
`spacing between lens elements, the thickness of each lens element is the same for
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`3
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`the original and modified Example 4 designs. Compare APPL-1003, p.118 with
`
`
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`
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`APPL-1005, Table 7, 19:28-20:42.
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`To that end, a POSITA would have looked to lower the f-number of Ogino’s
`
`Example 4 with as few changes to the original design as possible. APPL-1037, ¶7.
`
`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 Dr. Sasián’s modified Example 4 lens. See
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`APPL-1003, p.118; APPL-1037, ¶7. These steps and the resulting modified lens
`
`were included in Dr. Sasián’s Declaration:
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`
`
`4
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`Petitioner’s Reply
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`APPL-1003, p.118. Analysis showing the good optical performance of the
`
`modified Example 4 was also provided in Dr. Sasián’s Declaration:
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`5
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`APPL-1003, p.33.
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`Patent Owner does not dispute this optical performance. Therefore, Patent
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`Owner’s unsupported arguments that a POSITA would have made more changes to
`
`the parameters of Ogino’s Example 4 when these changes are neither defined or
`
`necessary should be rejected. APPL-1037, ¶10.
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`6
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`The modified version of Ogino’s Example 4 is only one example of a lens
`
`
`
`
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`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. Petition, p.18; APPL-
`
`1003, ¶59.
`
`B.
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`The modified Example 4 does not include overlapping lenses
`
`Patent Owner further alleges that the modified Example 4 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.” Response, pp. 32-35. Patent
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`Owner showed this alleged overlap between lens elements L4 and L5 with red
`
`boxes in the drawing below:
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`7
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`Response, p.33.
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`Patent Owner’s allegations of overlapping lenses appear to be based on a
`
`simple visual inspection by Dr. Milster. See APPL-1028, 129:4-13 (Dr. Milster
`
`testifying that “[i]t was sufficient for me to see the overlap of the surface shapes”).
`
`Although Dr. Milster identified accurate methods for determining whether lens
`
`surfaces overlap including “the sag [equation] of the surface versus radius” and
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`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.
`
`If Dr. Milster had performed this analysis, he would have determined that
`8
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`the L4 and L5 lens elements of the modified Example 4 do not touch or overlap as
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`
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`
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`shown by the zoomed in ray trace of these lens elements below. APPL-1037, ¶14
`
`
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`APPL-1037, ¶14. Thus, Patent Owner’s statements regarding overlapping lenses
`
`are untrue.
`
`C. Manufacturing considerations are not required by the claims nor
`can they be imported to avoid unpatentability.
`
`1.
`
`Patent Owner seeks to import manufacturing requirements
`into the claims where there are none.
`
`The majority of Patent Owner’s arguments hinge on the alleged
`
`“manufacturability” of the modified Example 4 lens design. See Response, pp.31-
`
`35. These arguments rely on an implicit requirement of large-scale injection plastic
`
`molding. Id., pp.31-32; APPL-1028, 173:18-23. Patent Owner then argues that
`
`these large-scale manufacturing considerations—tolerances, oversizing, and
`
`desensitization—should be required of the modified lens designs presented in the
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`Petition. Response, pp.23-26, 31-32, 39-41, 50-51.
`9
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`However, the claims do not recite any manufacturing requirements. Even
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`
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`
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`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.
`
`APPL-1028, 90:13-91:4.
`
`The only manufacturing consideration that Dr. Milster identified in the
`
`specification was the center-to-edge thickness ratio. See APPL-1028, 90:20-23.
`
`However, the center-to-edge thickness ratio does not appear in the claims and
`
`cannot now be imported to save patentability here. See Superguide Corp. v.
`
`DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“… it is important
`
`not to import into a claim limitations that are not part of the claim. For example, a
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`10
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`particular embodiment appearing in the written description may not be read into a
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`
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`claim when the claim language is broader than the embodiment.”).
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`Thus, the claims do not include any manufacturing requirements and Patent
`
`Owner’s arguments invoking such requirements where they are conspicuously
`
`absent should be rejected. APPL-1037, ¶19.
`
`2.
`
`Patent Owner’s arguments contradict its statements in a
`related case that lens design is separate from
`manufacturing.
`
`Patent Owner’s arguments that the modified Example 4 would be rejected on
`
`the basis of manufacturing considerations contradicts its previous arguments that
`
`lens design is separate from lens manufacturing. For example, 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.
`
`APPL-1029, p.4 (emphasis original). Dr. Moore (Patent Owner’s expert in
`
`IPR2019-00030) also directly contradicted the opinion of Patent Owner’s expert in
`
`this proceeding that manufacturing considerations would be an integral part of the
`
`lens design process:
`
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
`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 original).
`
`In other words, after arguing in a related case that lens manufacturing and
`
`lens design are two completely separate considerations for a POSITA, Patent
`
`Owner now argues that any prior art lens designs would be rejected based solely on
`
`what were previously argued to be irrelevant manufacturing considerations. See
`
`Response, pp.31-35. Patent Owner cannot have it both ways. It cannot argue that a
`
`POSITA would not consider manufacturing to preserve patentability for a parent
`
`patent then argue the exact opposite to preserve patentability in a child patent
`
`relying on the exact same disclosure. Consequently, Patent Owner’s arguments
`
`here are conclusory and inconsistent and thus carry no weight.
`
`A POSITA may be motivated to modify a lens design to meet a particular
`
`
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`12
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`manufacturing requirement pertinent to a particular design, (see IPR2019-00030,
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`
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`Paper 32, p.35), but a POSITA would not wholly reject a design because it did not
`
`meet various manufacturing considerations, which Patent Owner has not even
`
`shown would be relevant for any particular design. APPL-1037, ¶22.
`
`3. Manufacturing considerations are preferences, and do not
`show that lenses cannot be physically produced.
`
`Even if a POSITA found the various manufacturing considerations listed by
`
`the Patent Owner 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. APPL-1037, ¶23.
`
`Even in the case where certain manufacturing considerations are important
`
`for a particular design or purpose and are not met, it does not 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, Patent Owner has not provided
`
`evidence that any lens design, including the designs in the Petition, would have
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`been impossible to produce.
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`4.
`
`The modified Example 4 would be suitable for applications
`outside of large-scale manufacturing.
`
`Patent Owner’s arguments concerning mass production applications fail to
`
`consider that a POSITA would have designed lenses for other applications that do
`
`not involve mass production manufacturing. See Response, pp.38-40, 44-46. As
`
`discussed above, the claims here do not include any requirement for mass
`
`production manufacturing. See APPL-1028, 91:5-22. Moreover, a POSITA would
`
`have been motivated to design a lens for limited manufacturing or experimental
`
`purposes. APPL-1037, ¶27. These lens designs would not have been subject to the
`
`rigorous design requirements of mass-produced injection molding as Patent Owner
`
`argues. Id.
`
`Dr. Milster agrees that there are other applications for useful lens designs
`
`that are not based on any level of manufacturing, and he gave a specific example of
`
`an “international lens design conference” as one such non-manufacturing
`
`application that a POSITA would consider. APPL-1028, 173:9-11, 172:25. A
`
`POSITA would have also been motivated to design for other applications that do
`
`not involve large scale manufacturing, including research and academic
`
`applications. APPL-1037, ¶28. The modifications of Ogino’s Examples presented
`
`in the Petition would have been useful for any of these other applications. Id.
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`14
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
`5. Whether a prior art lens design is “finished” is not relevant.
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`As discussed above, Patent Owner alleges that the modified lenses presented
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`by Dr. Sasián are “at best intermediate structures that would not have been
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`implemented, but rather would have needed further modification.” Response, p.23.
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`However, not even the embodiments in the specification satisfy the rigorous
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`manufacturing considerations argued by Patent Owner. In fact, Dr. Milster
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`admitted that he did not perform such an analysis for the lenses described in the
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`specification of the ’277 patent. APPL-1028, 98:24-99:4.1
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`If Dr. Milster had done this analysis, he would have found that the Example
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`1 lens assembly of the ’277 patent is not suitable for manufacturing (under his own
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`theory) for at least the reasons that 1) it is not desensitized and 2) suffers from
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`serious ghost images that are focused on the image plane. APPL-1037, ¶30. Based
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`on this alone, manufacturing considerations are not implicitly required by the
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`claims in any fashion because Patent Owner’s own embodiments do not meet
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`them. EPOS Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir.
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`2014) (“A claim construction that excludes a preferred embodiment ... is rarely, if
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`ever correct and would require highly persuasive evidentiary support.”) (citation
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`1 Asked in reference to the ’897 patent which shares the same specification as the
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`’277 patent.
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`omitted).
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`Moreover, a POSITA would have understood that further steps required for
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`manufacturing, such as conducting a stray light analysis, specifying stray light
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`apertures, adjusting for the actual indices of refraction of chosen materials, etc., are
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`also not recited in the claims or even contemplated by the ’277 patent. APPL-1037,
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`¶31. Patent Owner cannot import requirements not recited in the claims or
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`specification, nor even implicit in its own disclosed designs, to maintain
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`patentability over an obvious modification of the prior art. See Atlantic Research
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`Mktg. Sys., Inc. v. Troy, No. 11-1002 (Fed. Cir. 2011) (rejecting claims that
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`“exceed in scope the subject matter that [applicant] chose to disclose to the public
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`in the written description”).
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`D. The claims do not include relative illumination requirements.
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`Patent Owner also argues that the modified Example 4 is unacceptable
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`because relative illumination “dips below 50% at about 28°” and Bareau specifies
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`“relative illumination [that] is >50%”. Response, p.36. However, similar to the
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`manufacturing considerations discussed above, the claims do not include any
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`requirements for relative illumination. Instead, the relative illumination figure of
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`>50% listed in the “typical lens specifications” of Bareau is exactly that—a
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`“typical” lens characteristic and not a necessary requirement. See Bareau, p.7;
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`APPL-1037, ¶32. Although a POSITA would have been motivated to improve
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`relative illumination in general, a lens not meeting a “typical” relative illumination
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`specification would not have been immediately dismissed by a POSITA. APPL-
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`1037, ¶33. Further, if a higher relative illumination was an indispensable design
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`requirement, a POSITA could have considered making further modifications to
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`Ogino’s Example 4 to achieve this. Id. Further, a POSITA would have known that
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`photographic lenses are also designed with a relative illumination less than 50%.
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`APPL-1037, ¶33; see APPL-1003, ¶62; APPL-1005, 19:28-22:60 (describing
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`Ogino’s Example 4 and Example 5 lens assemblies that have a relative
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`illumination less than 50%).
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`Consequently, claims 1-3 and 5-8 are obvious in view of Ogino’s Example 4
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`and Bareau as presented in the Petition. None of Patent Owner’s arguments or
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`alleged implicit limitations change the fact that each and every recited limitation is
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`satisfied as explained in the Petition. Petitioner therefore respectfully requests that
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`these claims be found unpatentable and cancelled.
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`III. Claims 11-17 are obvious over Ogino’s Example 5 in view of Bareau
`(first modification).
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`Patent Owner’s arguments are similarly directed to the “manufacturability”
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`of the two modified Example 5 lenses provided in the Petition (referred to as the
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`“first modified Example 5” described with respect to claims 11-17 and the “second
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`modified Example 5” described with respect to claims 1-10 and 18-24). These
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`arguments fail for similar reasons as discussed above.
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`A. A POSITA would have been motivated to generate the first
`modified Example 5 as discussed in the Petition.
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`As discussed above regarding the combination of Ogino and Bareau, a
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`POSITA looking to improve a lens design like Ogino’s Example 5 would have
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`used well-known techniques to achieve a specific objective, such as reducing the f-
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`number to 2.8 as evidenced by Bareau. See Petition, pp.51-59; APPL-1003, ¶¶68-
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`75; APPL-1012, pp.3-4. One possible result of this modification is the first
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`modified Example 5 presented in the Petition and Declaration of Dr. Sasián:
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`Petition, p.54, APPL-1003, p.122.
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`Patent Owner makes similar arguments to those discussed above that
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`keeping the thicknesses of lenses and spaces between lenses constant would have
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`“prevented a POSITA from finding the best performance result.” Response, p.44.
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`However, Patent Owner’s statements do not state how Ogino’s Example 5 could
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`have been improved and does not address Dr. Sasián’s analysis showing the good
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`optical performance of the first modified Example 5:
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`APPL-1003, ¶72.
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`As discussed above, a POSITA would have kept certain variables constant
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`(such as the spacing between lenses) while varying other parameters to lower the f-
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`number of Ogino’s Example 5 with as few changes to the original lens as possible.
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`See APPL-1037, ¶38; APPL-1017, p.168. Both of Patent Owner’s experts, Dr.
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`Milster and Dr. Moore, testified that a POSITA would have taken similar gradual
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`steps in modifying lenses. See APPL-1028, 21:6-18; APPL-1023, 99:6-18.
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`Accordingly, as provided in the Petition and Declaration, Dr. Sasián showed
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`that a POSITA would have been motivated to and successful at reducing the Ogino
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`Example 5 to an f-number of 2.8 using the same lens design process that would
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`have been used by a POSITA. Petition, pp.53-55; APPL-1003, ¶¶68-72.
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`B.
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
`The first modified Example 5 lens assembly does not include
`overlapping lenses.
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`Patent Owner further alleges that the first modified Example 5 has
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`unacceptable overlapping lens elements L2 and L3 (marked with red boxes around
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`the supposed overlapping portions):
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`Response, p.42.
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`However, the L2 and L3 lens elements do not touch or overlap, as shown by
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`Dr. Sasián’s Zemax analysis:
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`APPL-1037, ¶41.
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`The zoomed-in ray trace of lens elements L2 and L3 above clearly shows
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`space between these lens elements. APPL-1037, ¶42. Therefore, the allegation that
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`the first modified Example 5 has overlapping lenses is without merit.
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`C. Manufacturing considerations are not required by claims 11-17
`nor can they be imported to avoid unpatentability.
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`Patent Owner argues that “[i]n light of the consideration of manufacturing,
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`tolerances, or system desensitization, a POSITA would certainly not have arrived
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`at the lens configuration in the First Modified Example 5.” Response, pp.40-41;
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`see also pp.43-49. Patent Owner also argues that lens element L1 of the first
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`modified Example 5 would be “unacceptable to POSITA because of the large
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`center-to-edge thickness ratio” and that the “first lens shape leaves no room to
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`oversize or to have rounded or chamfered corners.” Response, pp.47-48.
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`Petitioner’s arguments above similarly apply here. In particular, Dr. Milster
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`Petitioner’s Reply
` IPR2020-00897 (Patent No. 10,324,277)
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`testified that the claims do not include any manufacturing considerations. APPL-
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`1028, 90:13-91:4. Further, Patent Owner’s arguments directly contradict its earlier
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`arguments that “engineers on lens design teams do not know, and do not care,
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`about the special manufacturing concerns.” See APPL-1030, p.56; APPL-1029,
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`p.4. Patent Owner also ignores other applications for lens design that do not require
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`large-scale manufacturing, such as research and academic applications, and has not
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`shown that the modified Example 5 designs would not have been useful f