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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.
`____________
`
`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
`____________
`
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
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`TABLE OF CONTENTS
`
`PATENT TO GUIDE ITS OBVIOUSNESS
`
`Dr. Sasian Does Not Use the Lens Design Process That a POSITA
`
`CLAIMS 1-3 AND 5-8 ARE UNPATENTABLE OVER OGINO
`
`INTRODUCTION .................................................................. 1
`I.
`II. APPLE AND ITS EXPERT IMPROPERLY USE THE ‘277
`DETERMINATION. ............................................................... 1
`III. GROUND 1 – APPLE FAIL’S TO DEMONSTRATE THAT
`EXAMPLE 4 IN VIEW OF BAREAU ..................................... 4
`A. A POSITA Would Not Have Combined Ogino’s Example 4 and
`Bareau ............................................................................................. 4
`B.
`Would Have Used ............................................................................ 5
`C.
`A POSITA Would Not Design Lenses that Effectively Touch ........ 6
`D. A POSITA Would Have Considered Manufacturability When
`Combining Ogino Example 4 and Bareau ...................................... 7
`E.
`Considered ....................................................................................... 9
`IV. GROUND 2 – APPLE FAILS TO DEMONSTRATE THAT
`EXAMPLE 5 IN VIEW OF BAREAU. .................................. 11
`A.
`Render Claims 11-17 Unpatentable .............................................. 11
`1.
`A POSITA Would Not Design Lenses that Effectively Touch . 12
`2.
`Combining Ogino Example 5 and Bareau ............................... 12
`
`Relative Illumination Is a Factor a POSITA Would Have
`
`CLAIMS 1-24 ARE UNPATENTABLE OVER OGINO
`
`Example 5 in view of Bareau (First Modification) Does Not
`
`A POSITA Would Have Considered Manufacturability When
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`Dr. Sasian Used Different Starting Vignetting in Ogino
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`3.
`Example 5 Based on the Patent Claims at Issue ...................... 14
`Render Claims 1-10 and 18-24 Unpatentable ............................... 15
`CONCLUSION .................................................................... 17
`
`Example 5 in view of Bareau (Second Modification) Does Not
`
`B.
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`V.
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`Cases
`
`TABLE OF AUTHORITIES
`
`Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc.,
`796 F.2d 443 (Fed. Cir. 1986) .................................................................. 10
`
`Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc.,
`381 F.3d 1371 (Fed. Cir. 2004) .................................................................. 2
`
`Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd.,
`533 F.3d 1353 (Fed. Cir. 2008) .................................................................. 6
`
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ...................................................................................... 9
`
`Grain Processing Corp. v. American Maize-Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) .................................................................... 3
`
`In re Dow Chem. Co.,
`837 F.2d 469 (Fed. Cir. 1988) .................................................................... 2
`
`In re Lee,
`277 F.3d 1338 (Fed. Cir. 2002) .................................................................. 2
`
`In re Wesslau,
`353 F.2d 238 (CCPA 1965) ...................................................................... 10
`
`W.L. Gore & Assocs. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) .................................................................. 2
`
`Statutes
`
`35 U.S.C. § 112 ............................................................................................... 8
`
`35 U.S.C. § 316(e) .......................................................................................... 5
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`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit No
`2001
`2002
`2003
`2004
`2005
`2006
`
`2007
`
`2008
`
`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). Ap-
`proaching direct optimization of as-built lens performance.
`In Novel Optical Systems Design and Optimization XV
`(Vol. 8487, p. 84870D). International Society for Optics
`and Photonics
`Sturlesi, D., & O'Shea, D. C. (1991). Global view of opti-
`cal design space. Optical engineering, 30(2), 207-218
`Symmons and Schaub, Field Guide to Molded Optics
`(2016)
`Declaration of Tom Milster in IPR2020-00878
`Declaration of Marc A. Fenster in Support of Motion to
`Appear Pro Hac Vice
`Declaration of James S. Tsuei in Support of Motion to Ap-
`pear Pro Hac Vice
`(New) 2012 Deposition transcript of José Sasián, July 16, 2021
`
`2009
`2010
`
`2011
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`Case No. IPR2020-00897
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`I.
`
`INTRODUCTION
`
`As set forth below, Apple’s reply fails to rebut the main arguments made
`
`in Corephotonics’ response. Rather, the reply and its supporting declaration
`
`make clear that Apple’s positions are based upon impermissible hindsight that
`
`violate the black letter law for obviousness analysis. Dr. Sasian, Apple’s ex-
`
`pert, explicitly admits to using the claims of the ‘277 patent as a guide in an-
`
`alyzing how a POSITA would design the lens that he opines upon. But this
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`approach is wrong, as POSITA is not permitted to use the specification or the
`
`claims as guide for determining obviousness.
`
`Therefore, Grounds 1 and 2 of this IPR should be rejected and the chal-
`
`lenged claims of the ‘277 patent should be found not unpatentable.
`
`II. APPLE AND ITS EXPERT IMPROPERLY USE THE ‘277
`
`PATENT TO GUIDE ITS OBVIOUSNESS DETERMINATION.
`
`Apple uses the ‘277 patent and its claims to guide its obviousness anal-
`
`ysis. Apple’s approach is wrong and infects Apple’s entire analysis.
`
`In his reply declaration, Apple’s expert, Dr. Sasian, stated that he disa-
`
`grees with the Patent Owner and its expert because “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
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`1
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`a lens to maintain the lens within the scope of a patent.” Ex. 1037 at ¶5
`
`(emphasis added). But a POSITA cannot consider the patented claims when
`
`deciding what modifications to make to the prior art. It is improper, when
`
`determining whether a person of ordinary skill would have been led to a spe-
`
`cific combination of the Ogino and Bareau references, to “[use] that which the
`
`inventor taught against its teacher.” In re Lee, 277 F.3d 1338, 1343 (Fed. Cir.
`
`2002). See W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed.
`
`Cir. 1983) (“It is difficult but necessary that the decisionmaker forget what he
`
`or she has been taught . . . about the claimed invention and cast the mind back
`
`to the time the invention was made (often as here many years), to occupy the
`
`mind of one skilled in the art. ...”); See In re Dow Chem. Co., 837 F.2d 469,
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`473 (Fed. Cir. 1988) (“[t]here must be a reason or suggestion in the art for
`
`selecting the procedure used, other than the knowledge learned from the ap-
`
`plicant's disclosure”); Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381
`
`F.3d 1371 (Fed. Cir. 2004) (“the suggestion to combine references must not
`
`be derived by hindsight from knowledge of the invention itself.”). A patentee’s
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`disclosure cannot be used as a blueprint to reconstruct the claimed invention
`
`from the cited prior art, as that contravenes the statutory requirement under
`
`§103 that obviousness is judged at the point in time when the invention was
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`made. See Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d
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`902, 907 (Fed. Cir. 1988).
`
`Dr. Sasian’s analysis is replete with examples of ignoring what a
`
`POSITA would have actually done when designing a lens. He set parameters
`
`for various lens designs to ensure the distances were within the patent claims,
`
`while only allowing one or two parameters to vary. See, e.g., Ex. 1003, at p.
`
`118. He admitted in his deposition that he selected experimental results based
`
`on whether those results met the claims of the ‘277 patent. Ex. 2003, February
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`19, 2021, Sasian Dep. Tr. at 171:2-13. In light of his admission that he views
`
`a POSITA’s lens design process to be guided by the patent claims, this is to be
`
`expected.
`
`Apple and Dr. Sasian have used an improper analysis in determining
`
`obvious. Rather than look at what a POSITA would have known at the time of
`
`the invention of the ‘277 claims, as required by §103, Apple and Dr. Sasian
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`instead use the ‘277 patent claims as a guide. This improper analysis, which
`
`serves as the entire basis for Apple’s assertions in Grounds 1 and 2, must be
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`disregarded. Therefore, both Grounds 1 and 2 must be denied and the chal-
`
`lenged claims of the ‘277 patent found not unpatentable.
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`III. GROUND 1 – APPLE FAILS TO DEMONSTRATE THAT
`CLAIMS 1-3 AND 5-8 ARE UNPATENTABLE OVER OGINO
`EXAMPLE 4 IN VIEW OF BAREAU
`A. A POSITA Would Not Have Combined Ogino’s Example 4 and
`Bareau
`As explained in Corephotonics’ response, Apple’s combination of
`
`Ogino with Bareau rests on a lens design that cannot be manufactured. A lens
`
`that cannot be made cannot satisfy the limitations of the ‘277 patent claims to
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`a “lens assembly” comprising “a plurality of refractive lens elements” or “five
`
`refractive lens elements.” Ex. 1001 at 8:21-22; 9:27–28; 10:16-17. And even
`
`if it could, no POSITA would be motivated to design such an impossible lens.
`
`Apple argues that the manufacturability of the lens is irrelevant and “are
`
`not a necessary part of the process a POSITA would have followed to generate
`
`the modified Example 4 lens design.” Paper No. 22, Petitioner’s Reply (“Re-
`
`ply”) at 2. But this ignores that its own expert stated that a POSITA “would
`
`have had experience in analyzing, tolerancing, adjusting, and optimizing
`
`multi-lens systems for manufacturing.” Ex. 1003, ¶19. There can be no dispute
`
`that manufacturing would certainly have been consideration for a POSITA de-
`
`ciding whether and how to modify Ogino Example 4 in view of Bareau, both
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`of which are directed toward lens assemblies for cell phones. Ex. 1005, 1:10-
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`15; Ex. 1012, Abstract at 1.
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`B. Dr. Sasian Does Not Use the Lens Design Process That a POSITA
`Would Have Used
`Apple argues that its design process is consistent with that which would
`
`have been employed by a POSITA. Reply at 2. Dr. Sasian’s design process is
`
`not how a POSITA would have designed a lens assembly. Dr. Milster’s exam-
`
`ple of a lens design process involved a “step-wise” process for allowing small
`
`changes to many parameters at the same time. See, e.g., Paper No. 15, Patent
`
`Owner’s Response (“POR”) at 27-30; Ex. 2001, ¶¶85-88. In doing so, Dr.
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`Milster’s process allowed a design that obtained the “locally best result.” Id.
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`at ¶87. This, and not the predetermined process of Dr. Sasian, is how a
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`POSITA would approach lens assembly design.
`
`Apple further argues that Patent Owner’s arguments regarding how a
`
`POSITA would have modified Ogino Example 4 fail because “Patent Owner
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`does not provide any example of how Ogino’s Example 4 could have been
`
`improved by varying spacing between lens surfaces.” Reply, 3. But this mis-
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`understands the argument. Apple has the burden to show obviousness, and that
`
`a POSITA would have modified Ogino Example 4 to reach the specific em-
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`bodiment in the Petition. 35 U.S.C. § 316(e). Apple fails to demonstrate why
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`a POSITA would have ended up at the specific embodiments set forth in the
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`Petition, which just happen to allegedly meet the claim limitations of the ‘277
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`patent. To do so would require the POISTA to select from a large variety of
`
`potential outcomes. This is not selecting from a small and finite number of
`
`alternatives. See Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353 (Fed.
`
`Cir. 2008).
`
`Apple further argues that because more changes “are neither defined or
`
`necessary” its modification of Ogino Example 4 is acceptable. Reply at 6. But
`
`the failure to define these is on Apple, which seems to believe that a POSITA
`
`would stop at an arbitrary point in the design process. The only rationale pro-
`
`vided by Apple for stopping the design process comes from Dr. Sasian’s as-
`
`sertion that a POSITA would modify Ogino Example 4 “to maintain the lens
`
`within the scope of the patent.” Ex. 1037, ¶ 5. This rationale is improper and
`
`must be rejected.
`
`C. A POSITA Would Not Design Lenses that Effectively Touch
`
`Apple also asserts that its modification of Ogino Example 4 does not
`
`include overlapping lenses. Reply at 8. But Dr. Sasian admits that lenses L4
`
`and L5 are within several microns to each other. Ex. 2010, July 16, 2021,
`
`Sasian Dep. Tr. at 25:11-26:10. Considering the “rules of thumb” identified
`
`by Beich (Ex. 1007), the distance separating the two at the closest point is so
`
`small as to be essentially touching. POR at 34-35. Such a small distance would
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`not have been within the manufacturing tolerances of the lenses. POR at 33-
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`34. Thus, a POSITA would not have stopped at this result.
`
`D. A POSITA Would Have Considered Manufacturability When
`Combining Ogino Example 4 and Bareau
`Apple argues that the manufacturability of the lens is irrelevant and “the
`
`claims do not recite any manufacturing requirements.” Reply at 10 (emphasis
`
`in original). But this ignores that its own expert stated that a POSITA “would
`
`have had experience in analyzing, tolerancing, adjusting, and optimizing
`
`multi-lens systems for manufacturing.” Ex. 1003, ¶19. There can be no dispute
`
`that manufacturing would certainly have been consideration for a POSITA de-
`
`ciding whether and how to modify Ogino Example 4 in view of Bareau, both
`
`of which are directed toward lens assemblies for cell phones. Ex. 1005, 1:10-
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`15; Ex. 1012, at 1.
`
`Apple also asserts that Patent Owner’s position on addressing manufac-
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`turability is inconsistent with prior positions in another IPR proceeding. Reply
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`at 11-12. But this ignores that those prior positions were taken in contrast to
`
`Apple’s position that a POSITA would consider manufacturing when combin-
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`ing references. Ex. 1030 at ¶ 120. In fact, the Board in IPR2019-00030 spe-
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`cifically held that “[w]e disagree that a person having ordinary skill in optical
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`lens design at the time of the ’568 patent would not consider ‘the limits of
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`fabrication’ such as those discussed in Beich, particularly in light of Beich’s
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`disclosure that ‘it is important that the designer has a basic understanding of
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`the manufacturing process and of the limits of size and tolerances that might
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`be expected of the finished optics.’” IPR2019-00030, Paper No. 32, Final
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`Written Decision, at 44 (quoting Ex. 1020 (Ex. 1007 of the present IPR) at 7).
`
`Thus, Patent Owner’s position is consistent with prior Board decisions.
`
`Apple continues to misunderstand Patent Owner’s arguments involving
`
`manufacturability. It is not directed toward the claim limitations, but rather to
`
`whether a POSITA, when looking to combine two references directed to cell
`
`phone cameras, would have considered manufacturability (they would have).
`
`That Patent Owner argued otherwise with respect to a different combination
`
`says nothing about the current issues with Ogino and Bareau.
`
`Apple also argues that the ‘277 patent contains at least one example that
`
`cannot be manufactured. Reply at 15. But an obviousness analysis is different
`
`than how a POSITA would analyze the teachings of a specific patent. Here, a
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`POSITA would understand how to modify the ‘277 patent to make a lens as-
`
`sembly that is manufacturable. 35 U.S.C. § 112. This is consistent with the
`
`skills of a POSITA, as Dr. Sasian admits. Ex. 1003, ¶ 19. However, that same
`
`POSITA, when modifying Ogino Example 4 in view of Bareau, would not
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`have stopped with a design that was not manufacturable. Instead, the POSITA
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`would have continued modifying the design until it could be manufactured.
`
`E. Relative Illumination Is a Factor a POSITA Would Have Consid-
`ered
`Finally, Apple ignores the complete teachings of both Ogino and Bar-
`
`eau when seeking to modify Ogino Example 4. Apple relies upon Bareau as
`
`motivation for a POSITA to modify Ogino Example 4 to have an F-number of
`
`2.8. Paper No. 1, Petition for Inter Partes Review of U.S. Patent No.
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`10,324,277 (“Pet.”) at 13; Ex. 1003, ¶ 55. But neither Apple nor Dr. Sasian
`
`ever explain why a POSITA would have selected Ogino Example 4 and
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`changed the F-number instead of modifying Ogino Examples 1-3, which all
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`have f-numbers below 2.8. Ex. 1005, Figs. 8-10. Without such an explanation,
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`Apple’s choice is merely impermissible use of the ‘277 patent as guidance.
`
`Further, the modified Ogino Example 4 ignores other teachings of Bar-
`
`eau. An obviousness determination requires assessing “the scope and content
`
`of the prior art.” Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17
`
`(1966). Among other things, Bareau teaches that the relative illumination
`
`should be greater than 50%, something that modified Ogino Example 4 does
`
`not achieve. Ex. 1012 at 3. Dr. Durand recognizes that Bareau “is
`
`telling a person of ordinary skill in the art to be aware of the relative
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`illumination of a lens assembly.” Ex. 2010, July 16, 2021, Sasian Dep. Tr. at
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`49:2-6. He also admits that relative illumination is an important consideration
`
`in the field of cell phone cameras, which is the field of invention of the Ogino
`
`patent. Id. at 49:14-50-10; Ex. 1005, 1:10-15. To a POSITA looking to modify
`
`Ogino Example 4 with Bareau, the relative illumination would have been an
`
`important criterion to consider.
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`But Apple, and Dr. Durand, ignore relative illumination. The modified
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`Ogino Example 4 has a relative illumination of 30% at the farthest edge of the
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`field. POR at 50-51; Ex. 1003 at p. 116. This is well below Bareau’s teaching
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`of 50% or greater. Ex. 1012 at 3. Thus, Apple only relies on Bareau when
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`convenient, and otherwise ignores its teachings. However, “[i]t is impermis-
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`sible within the framework of section 103 to pick and choose from any one
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`reference only so much of it as will support a given position, to the exclusion
`
`of other parts necessary to the full appreciation of what such reference fairly
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`suggests to one of ordinary skill in the art.” In re Wesslau, 353 F.2d 238, 241
`
`(CCPA 1965); see also Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc.,
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`796 F.2d 443, 449-49 (Fed. Cir. 1986) (holding that the district court, by fail-
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`ing to consider a prior art reference in its entirety, ignored portions of the ref-
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`erence that led away from obviousness). Moreover, Apple has argued, and the
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`Board has found, that a “person of skill ‘would have been aware of lens spec-
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`ifications related to mobile phones, as evidenced by Bareau,’ who suggests a
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`lens specification having relative illumination greater than 50% at the edge of
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`the field.” IPR2018-01140, Paper 37, p. 30. (quoting the IPR2018-01140 Pe-
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`tition at 40-41).
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`Therefore, Apple approach to modifying Ogino Example 4 in view of
`
`Bareau is wrong and should be rejected.
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`IV. GROUND 2 – APPLE FAILS TO DEMONSTRATE THAT
`CLAIMS 1-24 ARE UNPATENTABLE OVER OGINO EXAM-
`PLE 5 IN VIEW OF BAREAU.
`Apple’s reliance on the modifications of Oginio Example 5 in view of
`
`Bareau suffer from the same deficiencies set forth above with respect to the
`
`modification of Ogino Example 4.
`
`A. Example 5 in view of Bareau (First Modification) Does Not Ren-
`der Claims 11-17 Unpatentable
`Apple again mischaracterizes Patent Owner’s position by arguing that
`
`Patent Owner has not shown how the first modified “Ogino’s Example 5 could
`
`have been improved.” Reply at 19. Again, Apple does not demonstrate why a
`
`POSITA would have stopped its design process to end up at the first modified
`
`Ogino Example 5. And again, the first modified Ogino Example 5 just hap-
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`pens to allegedly meet the limitations of the claims of the ‘277 patent. And yet
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`again, the only rationale for arriving at the first modified Ogino Example 5 is
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`Dr. Sasian’s improper obviousness analysis that a POSITA would “maintain
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`the lens within the scope of a patent.” Ex. 1037, ¶5.
`
`Apple continues to provide no motivation as to why a POSITA would
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`have started with Example 5 of Ogino and then modified to an f-number of
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`2.8. Reply at 20. This is despite Ogino Examples 1-3 already having f-num-
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`bers less than 2.8. Ex. 1005, Figs. 8-10.
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`1.
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`A POSITA Would Not Design Lenses that Effectively Touch
`
`Apple argues that lenses L4 and L5 of the first modified Ogino Example
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`5 do not overlap. Reply at 21. Although lenses L4 and L5 in the first modified
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`Ogino Example 5 do not touch, the distances between them are only several
`
`microns. Ex. 2010, July 16, 2021, Sasian Dep. Tr. at 59:23-61:2. As with mod-
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`ified Example 4, the distances would not be within tolerances that a POSITA
`
`would use. POR at 42-43.
`
`2.
`A POSITA Would Have Considered Manufacturability
`When Combining Ogino Example 5 and Bareau
`Recognizing that the center-to-edge lens dimensions of lens L1 in the
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`first modified Ogino Example 5 is deficient, Apple attempts to correct it by
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`adding as previously unknow lens design with flanges on lens L1. Reply, 23-
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`24. First, this new design must be rejected, as it is a new design not previously
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`offered by Apple in Petition. Second, this new design has not been applied
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`against the claims 11-19 of the ‘277 patent. Finally, Apple argues that it could
`
`be manufactured by a diamond-turning process. But such as process takes an
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`hour or more to perform on just a single lens. Ex. 2010, July 16, 2021, Sasian
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`Dep. Tr. at 39:24-40:24. This process would not be used in mass production
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`of lens assemblies for cell phones as described in Ogino and Bareau. Id. at
`
`40:25-41:2.
`
`Implicitly acknowledging that manufacturability is in fact an issue, Ap-
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`ple offers up yet another alternative to first modified Ogino Example 5. Reply,
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`24-26. Again, this new modification must be rejected as new positions not
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`previously identified in the Petition. Ex. 2010, July 16, 2021, Sasian Dep. Tr.
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`at 64:11-65:22. That Apple and Dr. Sasian initially ignored how a POSITA
`
`would actually design a lens assembly does not permit them to change the
`
`design at this late date. Furthermore, Apple has not applied this alternative to
`
`the first modified Ogino Example to claims 11-19 of the ‘277 patent. Id. at
`
`65:23-67:9.
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`Further, Dr. Sasian’s process of “gradual steps” is not how a POSITA
`
`would have designed a lens assembly. Reply at 25. Dr. Sasian’s approach of
`
`keeping too many inputs static would limit the results and prevent a POSITA
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`from obtaining a locally best result. See, e.g., POR at 30, Ex. 2001, ¶87. Tell-
`
`ingly, neither Apple nor Dr. Sasian deny this.
`
`3.
`Dr. Sasian Used Different Starting Vignetting in Ogino Ex-
`ample 5 Based on the Patent Claims at Issue
`Apple also argues that the difference between Dr. Sasian’s relative illu-
`
`mination graph for the unmodified Ogino Example 5 starting point in this IPR
`
`and the relative illumination graph for the unmodified Ogino Example 5 that
`
`he started from in IPR2020-00896 is “due to adjustments in vignetting.” Reply
`
`at 28. But despite being asked on two separate occasions, Dr. Sasian could not
`
`explain why he made different vignetting choices for Ogino Example 5 or
`
`what those different vignetting choices were. Ex. 2010, July 16, 2021, Sasian
`
`Dep. Tr. at 71:12-20; Ex. 2003, February 19, 2021, Sasian Dep. Tr. at 149:16-
`
`23. This is despite Dr. Sasian’s testimony that “all the information all the in-
`
`formation about vignetting is contained in the drawing. With the drawing, a
`
`person of skill would have known the amount of vignetting there, because the
`
`rays are showing and it can be reproduced.” Id. at 150:18-22.
`
` Even though all of the information is present in the drawings, Dr.
`
`Sasian made different choices in selecting his vignetting for starting with the
`
`unmodified Example 5 of Ogino depending upon which patent claims he was
`
`looking to invalidate. This was done because, in his opinion, a POSITA would
`
`14
`
`
`
`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
`
`have modified the prior art “to maintain the lens within the scope of a patent.”
`
`Ex. 1037, ¶ 5.
`
`B. Example 5 in view of Bareau (Second Modification) Does Not
`Render Claims 1-10 and 18-24 Unpatentable
`As with the first modified Ogino Example 5, Apple again mischaracter-
`
`izes Patent Owner’s position by arguing that Patent Owner has not shown how
`
`the second modified “Ogino’s Example 5 could have been improved.” Reply
`
`at 32. Again, Apple does not demonstrate why a POSITA would have ended
`
`up at the specific embodiment of the second modified Ogino Example 5. And
`
`again, the second modified Ogino Example 5 just happens to allegedly meet
`
`the claims of the ‘277 patent. And yet again, the only rationale for arriving at
`
`the second modified Ogino Example 5 is Dr. Sasian’s improper obviousness
`
`analysis that a POSITA would “maintain the lens within the scope of a patent.”
`
`Ex. 1037, ¶5.
`
`In response to Patent Owner’s argument that Dr. Sasian’s three experi-
`
`ments on spacing between L3 and L4 in Ogino Example 5 were unnecessarily
`
`limited, Apple agrees that “a POSITA would have experimented with many
`
`parameters of the Example 5, include the distance D7 at issue.” Reply at 33.
`
`Apple then tries to spin this as merely demonstrating the steps “a POSITA
`
`would have taken” and serving as evidence that “‘larger gaps produce better
`
`15
`
`
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`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
`
`image quality in Ogino’s Example 5 lens.”” Id. But this ignores that Dr. Sasian
`
`conveniently selected the experiment that met the claims of the ‘277 patent,
`
`while ignoring that the other two “maybe they weren’t within the range of the
`
`‘277 Patent.” Ex. 2003, February 19, 2021, Sasián Dep. Tr. at 171:2-13. Apple
`
`argues that this just shows that “a POSITA would have conducted experiments
`
`similar to those shown by Dr. Sasián within the range that includes the
`
`claims.” Reply at 35. But neither Apple nor Dr. Sasian explain why a POSITA
`
`would have choose that experimentation that was in the range as opposed to
`
`using others. Without such an explanation, the only logical explanation is that
`
`Dr. Sasian chose that result “to maintain the lens within the scope of a patent.”
`
`Ex. 1037, ¶5.
`
`Apple continues to provide no motivation as to why a POSITA would
`
`have started with Example 5 of Ogino and then modified to an f-number of
`
`2.8. This is despite Ogino Examples 1-3 already having f-numbers less than
`
`2.8. Ex. 1005, Figs. 8-10.
`
`
`
`
`
`16
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`
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`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
`
`V. CONCLUSION
`
`For the reasons set forth above, Corephotonics respectfully requests
`
`that the Board affirm the validity of claims 1–24 of the ‘277 patent.
`
`Dated: July 26, 2021
`
`
`
` /Neil A. Rubin/
`Neil A. Rubin (Reg. No. 67,030)
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Telephone: 310-826-7474
`
`Attorney for Patent Owner,
`COREPHOTONICS, LTD.
`
`17
`
`
`
`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
`
`CERTIFICATE OF WORD COUNT
`
`I certify that there are 3,409 words in this paper, excluding the portions
`
`exempted under 37 C.F.R. § 42.24(a)(1), according the word count tool in
`
`Microsoft Word.
`
`
`
`
` /Neil A. Rubin/
`Neil A. Rubin (Reg. No. 67,030)
`
`
`18
`
`
`
`Case No. IPR2020-00897
`U.S. Patent No. 10,324,277
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that “Patent Owner’s Sur-Reply,” and accompanying
`
`exhibits was served on July 26, 2021 by email sent to:
`
`Michael S. Parsons
`Andrew S. Ehmke
`Jordan Maucotel
`Stephanie N. Sivinski
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Telephone: 214-651-5000
`Email: michael.parsons.ipr@haynesboone.com
`Email: andy.ehmke.ipr@haynesboone.com
`Email: jordan.maucotel.ipr@haynesboone.com
`Email: stephanie.sivinski.ipr@haynesboone.com
`
`
`
` /Neil A. Rubin/
`
`
`
`
`19
`
`
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