Trials@uspto.gov
`571-272-7822
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`Paper 33
`Date: October 7, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE, INC.,
`Petitioner,
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`v.
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`COREPHOTONICS LTD.,
`Patent Owner.
`____________
`
`IPR2020-00897
`Patent 10,324,277 B2
`____________
`
`Record of Oral Hearing
`Held: September 8, 2021
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`
`BEFORE: BRYAN F. MOORE, GREGG I. ANDERSON and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
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`571-272-7822
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`Paper 33
`Date: October 7, 2021
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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 10,324,277 B2
`____________
`
`Record of Oral Hearing
`Held: September 8, 2021
`
`
`BEFORE: BRYAN F. MOORE, GREGG I. ANDERSON and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
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`IPR2020-00897
`Patent 10,324,277 B2
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`ON BEHALF OF THE PATENT OWNER:
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`JONATHAN LINK, ESQUIRE
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard
`12th Floor
`Los Angeles, California 90025
`(310) 826-7474
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`
`The above-entitled matter came on for hearing on Wednesday,
`September 8, 2021, commencing at 1:04 p.m. EST, by video/by telephone.
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` P P E A R A N C E S
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`ON BEHALF OF THE PETITIONER:
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`MICHAEL PARSONS, ESQUIRE
`FISH & RICHARDSON P.C.
`6000 Headquarters Drive
`Suite 200
`Plano, TX 75024
`(972) 739-6900
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`IPR2020-00897
`Patent 10,324,277 B2
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` P R O C E E D I N G S
` JUDGE ANDERSON: Okay. Very good. Good afternoon
`or morning as the case may be. This is the hearing for
`IPR2020-00897. Petitioner is Apple, Inc. Patent owner is
`Corephotonics, Inc., the owner of U.S. Patent number
`10,324,277.
` If you were paying attention and you were in the
`earlier hearing, I am a different face than what you saw. I
`am Judge Anderson. Judges Moore and Ullagaddi were in the
`prior telephone conference hearing on the prior case and they
`are on this case as well.
` A word about demonstrative exhibits. We all have
`copies of them. They are not useful to us unless you tell us
`where we need to look by slide number. So we encourage you to
`do that.
` Per the order in this case, each party will have 60
`minutes to present its argument as was the case earlier I
`believe. Petitioner has the burden to show unpatentability
`and will go first. And that will -- the petitioner's
`presentation will be followed by the patent owner. Petitioner
`may reserve time to rebut the patent owner's presentation and
`oppose it. And the patent owner may likewise reserve some
`time for a surrebuttal to what the petitioner presents in its
`rebuttal.
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`IPR2020-00897
`Patent 10,324,277 B2
` We do not have, as I'm aware of, a timer available.
`Judge Moore has agreed to keep track of time once we know what
`the parties' desires are on time. So he will do his best but
`you should not rely on him. You should rely on your knowledge
`of what your case is and what you have to present and the time
`you have to present it and make sure you get it done in the
`time allotted.
` At this time let's have introductions of counsel
`beginning with petitioner.
` MR. PARSONS: Hello, Your Honor. My name is
`Michael Parsons. I'm lead counsel for petitioner, Apple, Inc.
` JUDGE ANDERSON: Please say your name again, your
`last name again.
` MR. PARSONS: Michael Parsons with Apple -- with
`petitioner.
` JUDGE ANDERSON: Okay. And is anyone else with you
`virtually or physically that you'd like to introduce?
` MR. PARSONS: Yes. I've got Mr. Aaron Wang who is
`the in-house counsel for Apple as well as Jordan Maucotel
`who is with me -- who is my backup counsel here today.
` JUDGE ANDERSON: Okay. Well, welcome all.
` Patent owner, can you introduce yourself and
`whoever might be there with you?
` MR. LINK: Good afternoon, Your Honor. Jonathan
`Link with the law firm of Russ August & Kabat on behalf of
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`Patent 10,324,277 B2
`patent owner, Corephotonics. And with me virtually are my
`colleagues Neil Rubin and Marc Fenster.
` JUDGE ANDERSON: Thank you, and welcome to all of
`you as well. We did not receive any objections to the
`demonstratives and are proceeding on the basis that neither
`party has any objection to the other party's demonstratives.
`And with respect to objections generally, if you find that the
`other side has deviated from what they've presented in their
`papers and you think that's objectionable subject matter, do
`not object at the time. Let's keep the flow of argument
`going. And when you as petitioner or patent owner get your
`opportunity to speak, go ahead and bring that issue to our
`attention. It will be on the record. We will pay attention
`to it and give it full consideration at such time as a final
`written decision is drafted in this case.
` Now, Petitioner, would you like to reserve some
`rebuttal time?
` MR. PARSONS: Yes, Your Honor. I'd like to reserve
`20 minutes.
` JUDGE ANDERSON: Twenty minutes it shall be. With
`that, you may begin.
` MR. PARSONS: Thank you, Your Honor. Turning to
`slide 2 in our demonstratives, the issues that will be
`discussed today relate to the 277 patent which recites a
`signature telephoto lens assembly having five lens elements.
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`IPR2020-00897
`Patent 10,324,277 B2
`Now the grounds that we proposed in our petition are two-fold
`with three combinations. In the first ground we propose the
`combination of Ogino and Bareau and what this modification is
`is to modify a five lens major telephoto assembly of Ogino's
`Example 4 to have an F number of 2.8 based on the teachings of
`Bareau. In the second ground we propose two modifications of
`Ogino's Example 5. One to lower the F number to 2.8 based on
`the teachings of Bareau and a second modification to increase
`the spacing between the third and fourth lens elements based
`on a teaching in Ogino itself.
` Now patent owner has made a number of arguments
`throughout these papers that I apologize to the panel members
`who have already heard these arguments before but these are
`going to overlap to some degree because patent owner is making
`consistent arguments across all of these cases that are being
`heard today. In particular, patent owner is raising arguments
`that misapply the law, misapply the facts, or mischaracterize
`our expert's testimony.
` Moving to slide 3, we want to set the level on what
`the standard of the law requires here and what it is is for us
`to show a motivation to combine the teachings of the prior art
`references to achieve the claimed invention and that the
`skilled artisan would have had a reasonable expectation of
`success in doing so.
` Now looking at slide 4. The motivation to combine
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`IPR2020-00897
`Patent 10,324,277 B2
`as been further described by the Federal Circuit as requiring
`a determination of whether there is an apparent reason to
`combine the known elements in the fashion recited by the
`claims in the patent at issue. So what's required of us in
`the petition is just showing that there was a prior art linked
`to that embodiment, and that's what we did, and we showed how
`a person of ordinary skill would have been motivated to modify
`that embodiment to lower the F number and that was the only
`change made to a number of these grounds, and then all we had
`to show at that point was that it read on the challenged
`claims.
` There's no requirement for us to show, as patent
`owner has argued, why we selected examples 4 and 5 from Ogino
`in the first place or why Dr. Sasián's examples ended up at
`the place -- at the end -- at the stopping point that they
`did. All we needed to show was that a POSITA was motivated to
`modify the F number or modify the spacing between the third
`and fourth lens elements, which are the only two modifications
`addressed in the petition, and then show that doing that
`modification results in what was recited in the challenged
`claims.
` Now moving on to slide 5. With regards to the
`reasonable expectation of success prong here, patent owner has
`argued throughout their papers, and we would like to address
`this issue up front, that there's a difference in the experts'
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`IPR2020-00897
`Patent 10,324,277 B2
`opinions as to how they would have modified a lens using a
`lens design modification process as spelled out in Exhibit
`1017 which is the Fisher reference. Now we cited the Fisher
`reference in every single ground -- in all the grounds in this
`case as evidence of the process that a POSITA would follow in
`modifying a lens design, especially modifying a lens design
`like Ogino's examples here to adjust the F number or change
`the spacing between two elements.
` Now in the Fisher reference in Exhibit 1017 on page
`172 we just -- we pointed to this in the petition and
`explained how a POSITA would have followed this process that's
`defined in this chart. Now in this process a POSITA enters a
`lens design prescription into a program, the program generates
`that prescription, and then allows a person of ordinary skill
`in the art to modify certain aspects of it and then allow the
`software to solve for the best solution.
` Now the argument between the experts in regards to
`this is that Dr. Milster, patent owner's expert, believes that
`a person of ordinary skill would have allowed a lot of
`parameters to vary in allowing the software to solve for the
`best result, and Dr. Sasián, our expert, is of the opinion
`that a person of ordinary skill in the art would have started
`with modifying a few parameters, or sorry, would have started
`with allowing a few parameters to vary that are most impacted
`by the change that was introduced and then allowing the
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`Patent 10,324,277 B2
`software to solve fewer parameters rather than more.
` Now patent owner doesn't rely on any evidence for
`this besides a chart showing a graph pointing to what they
`believe to be the best results, but Fisher
`specifically -- sorry -- Fisher specifically supports Dr.
`Sasián's method that he followed. On page 173 describing his
`step 3 it says that it is important to note that it is not
`imperative nor is it advisable to vary every conceivable
`variable in a lens, especially early in the design phase. And
`so Dr. Sasián followed this guidance which is what a POSITA
`would have done and chose to vary a few parameters and let the
`software solve a few parameters that vary rather than allowing
`all the parameters to vary which is what Dr. Milster claims is
`the preferred method.
` So based on Fisher which was cited as sufficient
`for the process of a POSITA, Dr. Milster's process to design a
`lens and modify the lens followed the correct procedure that
`was known by a POSITA in the art.
` JUDGE ANDERSON: Counsel, let me interrupt just a
`second. A lot of good content here but you're going awful
`fast for me to follow.
` MR. PARSONS: All right. Thank you, Your Honor.
`I'll slow down.
` JUDGE ANDERSON: Could you give me a little bit of
`a -- I understand Fisher is an incremental designing process
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`Patent 10,324,277 B2
`and then pick up from there and tell me why that's important.
` MR. PARSONS: Okay. Yes, Your Honor. Now looking
`at the chart on page 172, it lays out a number of steps that a
`POSITA would follow in modifying a lens design. In step 2 it
`talks about selecting a starting point and that's what Dr.
`Sasián did in the grounds in the petition. The starting point
`was Ogino Example 4 or Ogino Example 5. The next step in that
`process is step 3 to establish variables and constraints. Now
`the description of step 3 on page 173 describes this process
`as establishing the constraints including the focal length F
`number and other parameters that would be fixed and wouldn't
`be changed by the lens design software. So in other words,
`the lens design software will allow a POSITA to choose which
`variables don't change and which variables can be changed
`which indicates the variables that the software will solve for
`in finding the best solution given a set of parameters.
` Now what's important here is that when Dr. Sasián
`made his changes following the lens design process -- for
`example, to open the aperture to support a lower F
`number -- he allowed the parameters to vary -- he allowed a
`few parameters to vary on the front of the lens that would be
`most impacted by that change in the aperture and that's
`consistent with step 3 here in Fisher where again it says it
`is important to note that it is not imperative nor is it
`advisable to vary every conceivable variable in a lens
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`Patent 10,324,277 B2
`especially early in the design phase.
` Now Dr. Milster's opinion directly contradicts this
`because he says that a POSITA would want to vary a lot of
`variables and that by varying a lot of variables you would get
`to what they consider to be the best result. But this
`directly -- his opinion directly disagrees with what Fisher
`states as to what a POSITA would actually do which is vary a
`few variables at the beginning to see how the change would
`impact the rest of the system. This is the process that Dr.
`Sasián followed and there's no evidence on the record showing
`a different lens design process to support Dr. Milster's
`assertion about allowing a lot of parameters to vary.
` Now moving on to slide 6. With the reasonable
`expectation of success prong the Federal Circuit has said that
`the case law is clear that obviousness cannot be avoided by a
`showing of some degree of unpredictability in the art so long
`as there is a reasonable probability of success. So the
`reasonable expectation of success isn't probability of
`success, it's not absolute certainty, and it cannot be based
`on patent owner arguing about unpredictability in the art.
`Unpredictability by itself is not sufficient to avoid
`obviousness. And this is highly relevant here because patent
`owner has made lots of arguments about other things a POSITA
`would have done instead of what Dr. Sasián did in the
`petition. Now all of the arguments about other things a
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`IPR2020-00897
`Patent 10,324,277 B2
`POSITA would have done are entirely irrelevant and don't
`matter to the analysis that was performed in the petition.
` Now moving on to slide 7. The first substantive
`issue that we would like to address with regards to patent
`owner's arguments in their papers is that in the surreply they
`are alleging that Dr. Sasián improperly used the patent at
`issue as a roadmap to meet the claims, and this is not the
`case.
` If we flip to slide 9, this is a quotation -- this
`is -- the portion cited on this slide is from paragraph 5 of
`Dr. Sasián's reply declaration where Dr. Sasián describes
`about his process of modifying Ogino Example 4 and that he
`would have done that by modifying a few variables in order to
`maintain his analysis within the scope of Ogino, and that's
`what that last line says here. He says that the POSITA would
`have first made minimal changes to a lens to maintain a lens
`within the scope of a patent. Now Ogino is a patent and this
`is the subject of this paragraph, not the patent at issue.
` Now in the surreply patent owner has taken this
`statement and mischaracterized it and alleges that Dr. Sasián
`over and over and over throughout the surreply -- I think they
`quoted at least seven or eight times that they're alleging
`that Dr. Sasián used the patent as a roadmap when in fact he
`didn't. This paragraph does not say what patent owner thinks
`it says. Now to prove that, in deposition when asked about
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`IPR2020-00897
`Patent 10,324,277 B2
`his process for modifying a lens Dr. Sasián explained that he
`took the teachings in the prior art, and this is on slide 8,
`he applied the teachings in the prior art to Ogino's designs,
`and then he came up with several examples and one of those
`examples met the claims and that's the example that we cite to
`in the patent. The fact that Dr. Milster came up with
`multiple examples proves that he did not use the patent as a
`roadmap. That doesn't make sense. If he used the patent as a
`roadmap he would only have one example. He wouldn't have had
`more than one example for a given change. So patent owner's
`arguments that they're alleging that Dr. Sasián used the
`patent as a roadmap mischaracterized his testimony and all
`fail for that reason.
` JUDGE ANDERSON: Counsel, so help me here a little
`bit. So the claim limitation that seems to vary between Ogino
`and the need to consult Bareau is the F stop limitation less
`than 2.9. So patent owner says, well, we've got five -- and
`I'm looking at one of their slides if you want to pull up that
`slide. It's slide 11. It's got a good summary of what Ogino
`says at various examples. So Ogino has four examples where
`the F stop is already within the limitation of the claim. In
`other words, under 2.9. So they point that out. But I assume
`those examples, and I believe I've confirmed this, do not show
`the other limitations of, for example, claim 1 whereas
`examples 4 and 5 which you rely on have the F -- F number is
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`over 2.9. So why would a person of ordinary skill look to
`other less -- I'm going to say less relevant. I'm not sure
`that's exactly the right word, but less comprehensive in terms
`of what they show examples from Ogino in order to pick a F
`stop that happens to fit the limitation of the claim? It
`seems to me that's what the patent owner is saying. You pick
`the stuff that you wanted out of examples 4 and 5 and then you
`said, well, it doesn't have this but here's some other
`examples in Ogino that do have that. Why would that happen?
`In Bareau. I'm sorry. I said Ogino.
` MR. PARSONS: Yeah. No, I understand, Your Honor.
`The answer to that is very simple. The other embodiments in
`Ogino that they point to are not telephoto and the issue here
`is -- and the most relevant lens design here is a telephoto
`lens. Now if you flip to slide 11, this is what we mean.
`Telephoto means that it has a TTL over EFL ratio of less than
`one and that's a limitation recited in the claims. The only
`two examples of Ogino Example 5 as represented in the
`drawings, there are only two embodiments that show a telephoto
`ratio. So the reason that a POSITA would have looked to
`modify a telephoto lens to have a lower F number is they would
`have looked at these embodiments. So they would have looked
`to lower the F number of these embodiments if they wanted a
`telephoto lens with a lower F number.
` Now patent owner has alleged by some way that a
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`POSITA would have modified one of these embodiments to
`increase -- to have a telephoto -- I mean let me rephrase
`that. Patent owner is basically pointing to these as only the
`F number but the F number is not the only relevant factor
`here. Also, patent owner hasn't shown any evidence how a
`POSITA would have made these lenses telephoto given that they
`already have a low F number. There's no evidence in the
`record showing how to go from a wide-angle to a telephoto
`design and so there's no support in the record to support
`patent owner's arguments about using one of these
`embodiments -- other embodiments if you're going to modify and
`achieve a telephoto design.
` JUDGE ANDERSON: So kind of circling back -- I hate
`that term -- to what you said earlier. The idea is that there
`would be a reasonable expectation of -- correct me if I'm
`wrong --reasonable expectation of success in looking at these
`telephoto lenses and using a, quote, what I think the record
`supports, is a desirable F number, F something less than 2.9.
` MR. PARSONS: Correct. It would have been obvious
`for a POSITA to modify one of these telephoto designs
`to -- no, I'll rephrase that. A POSITA would have been
`motivated to lower the F number of one of these telephoto
`designs to achieve a better, brighter lens. Lowering the F
`number means you open the aperture and more light gets through
`the system which creates a brighter, faster lens design.
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` JUDGE ANDERSON: And there is a slide that you had
`that I kind of liked on this actually that said the way to do
`that would simply be to go to the lens aperture and
`essentially substitute a faster lens and you're there.
` MR. PARSONS: Well, it's not substitute a faster
`lens. I believe you're pointing to slide 12. We're not
`talking about substituting a lens here. I want to be clear
`about that. What we're talking about was the modification
`that Dr. Sasián made on slide 12, and this is example 4 from
`Ogino in ground 1, is that he opened the aperture of the lens
`which is the portion that allows light to pass through. Now
`if you look at a lens, you have the dark circle that's around
`the lens and that's the aperture. What the aperture does is
`it controls how much light passes through that system.
` So what Dr. Sasián did in example 4 is lower the F
`number to 2.8 and he opened the aperture which then allowed
`more light to come through the system. And then because he
`made that change to the lens he allowed the lens design
`software to solve for the best result given that increase in
`aperture and that's what's shown on slide 12 is the results of
`Dr. Sasián simply opening the aperture and letting the lens
`design software find the best solution for that design.
` JUDGE ANDERSON: Okay.
` MR. PARSONS: Okay. Thank you. Now on slide 13,
`the reason that a POSITA would want to lower the F number to
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`2.8 is because that's provided by lens specifications like
`Bareau. Now patent owner has argued in several of these
`matters that a person of ordinary skill wouldn't have looked
`to Bareau because they have a field of view of 60 degrees and
`telephoto lenses have lower fields of view. But in IPR2018-
`1140 the board has already addressed this issue.
`Specifically, patent owner made a similar argument in that IPR
`regarding a parent patent to the one that's at issue here and
`in that combination we provided Ogino and we said that Ogino
`would be able to -- and we talked about the benefits of
`relying on the lens specifications of Bareau and patent owner
`argued that a POSITA would not have looked to Bareau for a
`telephoto design and the board disagreed with that. This is
`on page 31 from the final written decision in IPR2018-1140.
`Again, the board has already determined that a POSITA would
`have considered Bareau regardless of the field of view and
`would have applied it to telephoto lenses as well.
` Also, moving to slide 14, patent owner in their
`response has admitted that Bareau teaches a favorable F number
`of 2.8. There's no debate here that Bareau talks about an F
`number that a POSITA would have wanted to implement in a lens
`design whether it was conventional or telephoto. In addition
`to that, we cite to the Kingslake reference that's at the top
`of this slide that talks about the need that existed since the
`90s for a brighter, faster lens which is -- what they mean by
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`IPR2020-00897
`Patent 10,324,277 B2
`brighter or faster is a larger aperture which lets more light
`pass through the system. The faster aspect comes in that it
`requires a lower exposure time because more light is able to
`pass through the lens and hit the sensor.
` So there's no debate here, Your Honor, that a
`POSITA would have been motivated to modify a lens design,
`whether it be wide or telephoto, to lower the F number because
`there was a need in the art that existed generally for lenses
`with lower F numbers. And all we're doing is applying that
`need or desire in the art to examples 4 and 5 of Ogino here.
` Now moving to slide 15. One of the arguments that
`patent owner make that we would like to address right now is
`they point to Bareau's specification that shows a relative
`illumination above 50 percent and they complain that our
`modification that lowers the F number to 2.8 doesn't bring the
`relative illumination above 50 percent. Now Bareau talks
`about the relative illumination here being a usual
`parameter -- being usually specified above 50 percent but
`there's nothing that requires a POSITA to modify a lens to
`achieve a relative illumination above 50 percent especially
`when you're lowering the F number and you're improving overall
`illumination.
` Now to kind of explain the difference between the
`two concepts. The F number deals with how much illumination
`hits the sensor. The relative illumination describes how much
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`IPR2020-00897
`Patent 10,324,277 B2
`light and how much difference there is in light from the
`center point of the lens to the edge of the field of view. So
`if we're standing in a room and we have a window and I'm
`standing in the middle and there's a person in the corner, we
`will get light that passes through that window and 100 percent
`of the light will be on me but only 40 percent of the light
`may be on the person over in the corner. That's what relative
`illumination is, describing the difference in the amount of
`light between what I get and what they get.
` Now if we increase the size of that window where
`there's more light entering the room total and that's what the
`F number says, lower F numbers mean bigger apertures, that
`means more light is going to come into that room and I'm still
`going to receive 100 percent of it at the middle but the
`person over in the corner may receive a different percentage
`of relative illumination depending on factors in the room
`which is exactly in communication with the lens.
` Now the overall illumination in the room has
`increased so that person is going to be brighter than they
`were before and that's why relative illumination has nothing
`to do with overall illumination that's provided by lowering
`the F number. So the fact that Bareau's Example 4 shows the
`same relative -- virtually the same relative illumination as
`it did with F number set at 3.04 versus 2.8 would not persuade
`a POSITA wanting to lower the F number to improve overall
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`IPR2020-00897
`Patent 10,324,277 B2
`illumination in a lens design.
` Now moving on to slide 16. Our second ground that
`we've raised in the petition, I'll address the first
`modification that we addressed in the petition first which is
`virtually the same thing. It's modifying Ogino Example 5 to
`an F number of 2.8 also based on Bareau. Now the same reasons
`exist for modifying Ogino Example 4 as they do for modifying
`Ogino Example 5. Bareau teaches a favorable F number and
`patent owner agrees with that. Now the reason that a POSITA
`would have looked and modified example 5 is for the same
`reasons as example 4. It's good to have a telephoto ratio and
`it's the only one of -- it's the only one of two of these
`examples that have that telephoto ratio.
` Now moving on to slide 21. We'll just cut to the
`chase of the argument here since we've already addressed a
`number of these factors with regards to example 4. Now to the
`extent that what we discussed in example 4, they also apply to
`example 5.
` Now on slide 21 one of the arguments that patent
`owner has made is about manufacturability of this
`particular -- of the first lens of this particular design and
`what patent owner argues about is that the first lens, based
`on Dr. Milster's opinion, is too thin at the edges to support
`plastic injection molding. Now this is wrong for a number of
`reasons. First off, Dr. Milster's opinion with regards to
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`IPR2020-00897
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`this first lens does not view this first lens as a POSITA
`would have and that's evident if you look at the -- now the
`issue here comes down to a couple of different factors.
` If you look at the Exhibit 2009, page 34, paragraph
`72, this is Dr. Milster's declaration from the 878 IPR, not
`this IPR, but patent owner cites to this and basically
`incorporates most of these arguments into this IPR as well.
`Now in Exhibit 2009 on page 34 looking at paragraph 72, this
`describes the Chen reference. Give me a second and -- give me
`just a second.
` Now what patent owner says in regards to the Chen
`reference, now if you look at the lens that's shown below, it
`shows that it has flanges that extend beyond the useable
`aperture of the lens, and what patent owner says about this is
`they say that the -- starting at the end of page 33 they say
`that the ray trace diagrams generated by software such as
`Zemax, which is what Dr. Sasián's designs are, show parts of
`the lens elements by a physical lens element as opposed to one
`(indiscernible) software extends beyond the shape drawn by the
`lens design software at the maximum diameter where light
`passes through the lens. So in other words, patent owner has
`said that lens design represented in Zemax or other lens
`design software differ from ones that are actually
`manufactured. The manufacturing lenses have flanges on them
`so they can be mounted in a lens barrel.
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`IPR2020-00897
`Patent 10,324,277 B2
` Now Dr. Milster's opinion on this particular lens
`ignores the fact that it would have flanges if it was going to
`be manufactured. And again, Dr. Milster's opinion in this IPR
`is based on manufacturing a lens using one particular method
`of plastic injection molding. And Dr. Milster hasn't provided
`any analysis on whether or not this lens would have a problem
`if you were to add flanges on it as a POSITA would have done
`for plastic injection molding this lens.
` Now additionally, patent owner has continued -- has
`argued -- has also specified in the 878 surreply that lenses
`have flanges. So they've now admitted it in two places. But
`again, Dr. Milster's opinion has failed to address these
`lenses as a POSITA would have having flanges on them. So Dr.
`Milster's opinion in this regard is flawed.
` Now second, it would have been obvious to a person
`of ordinary skill in the art to thicken the lens if
`manufacturability was the end goal of this design, which it's
`not, and that's a thing that we'll address later in our
`argument. Now the important thing here is that the thickness
`of a lens by itself is a trivial parameter and a POSITA would
`have understood that. In Exhibit 2006, which is the Smith
`reference, it talks about this. It says, Element thickness
`must be regarded quite differently than air space is. They
`must of course be bounded by the -- sorry. Let me rephrase
`that. Now moving down to where it starts, In many designs
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