Trials@uspto.gov
`571-272-7822
`
`Paper 34
`Entered: December 6, 2021
`
`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
`
`
`
`
`
`
`
`
`
`
`Before BRYAN F. MOORE, GREGG I. ANDERSON, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 34
`Entered: December 6, 2021
`
`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
`
`
`
`
`
`
`
`
`
`
`Before BRYAN F. MOORE, GREGG I. ANDERSON, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2020-00897
`Patent 10,324,277 B2
`
`I. INTRODUCTION
`Apple, Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–24 of U.S. Patent No. 10,324,277 (Ex. 1001, “the ’277
`patent”). Paper 3 (“Pet.”). Corephotonics, Ltd. (“Patent Owner”) did not
`file a Preliminary Response. We instituted inter partes review on December
`8, 2020. Paper 8 (“Inst. Dec.”). Patent Owner filed a Response (Paper 15,
`“PO Resp.”), Petitioner filed a Reply (Paper 22, “Reply”), and Patent Owner
`filed a Sur-Reply (Paper 23, “Sur-Reply”). A hearing was held on
`September 8, 2021, and a transcript is of record. Paper 33 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 314. Upon considering the
`record, for reasons discussed below, we find claims 1–24 unpatentable.
`
`
`II. BACKGROUND
`A. Real Parties in Interest
`The real parties in interest are Apple Inc. and Corephotonics, Ltd.
`Pet. 1.
`
`B. Related Matters
`Petitioner advises us that the ’277 patent is the subject of one pending
`civil action, Corephotonics, Ltd. v. Apple Inc., Case No. 5-18-cv-02555
`(N.D. Cal.) (“’2555 case”). Pet. 2. Patent Owner advises us of a separate
`civil action involving the same parties, Corephotonics, Ltd. v. Apple Inc.,
`Case No. 3:19-cv-04809 (N.D. Cal.) (“’4809 case”). Paper 6, 1. The ’2555
`and ’4809 cases were found related to a previously filed case in the Northern
`District of California between the same parties, Case No. 17-cv-06457
`(N.D.Cal.). See ’2555 case, Dkt. 14; ’4809 case, Dkt. 16.
`Petitioner further advises us of two inter partes review proceedings
`between these same parties, IPR2018-01140 (“’1140 IPR”) and IPR2018-
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`2
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`Patent 10,324,277 B2
`01146 (“’1146 IPR”), which challenge respectively certain claims of U.S.
`Pat. Nos. 9,568,712 (“the ’712 patent”) and 9,402,032 (“the ’032 patent”). 1, 2
`Pet. 8, fn.2.
`We identify the following related administrative matters, including
`every application and patent claiming the benefit of the priority of the filing
`date of patents in the priority chain of the ’277 patent. See Office
`Consolidated Trial Practice Guide3 at 18; see also 84 Fed. Reg. 64,280 (Nov.
`21, 2019).
`U.S. Patent No. 10,317,647 (“the ’647 patent”) and U.S. Patent No.
`10,330,897 (“the ’897 patent”) claim priority to:
`Application No. 15/817,235 (now the ’277 patent), which claims
`priority to Application No. 15/418,925 (now U.S. Patent No.
`9,857,568, “the ’568 patent”), which claims priority to
`Application No. 15/170,472 (now the ’712 patent), which claims
`priority to Application No. 14/932,319 (now the ’032 patent), which
`claims priority to Application No. 14/367,924 (abandoned), which
`claims priority to PCT/IB2014/062465, which claims priority to Prov.
`No. 61/842,987.
`With respect to AIA trial proceedings, we note the following:
`IPR2020-00896 (challenges the ’647 patent);
`
`1 The ’277 patent is a continuation-in-part of the ’712 patent which is a
`continuation of the ’032 patent. Ex. 1001, at [63].
`2 The ’1140 and ’1146 IPRs have both terminated in final written decisions
`relating to certain claims of the challenged patents. ’1140 IPR, Paper 37
`(claims 1, 13, 14, and 15 shown unpatentable); ’1146 IPR, Paper 37 (claims
`15–17 shown unpatentable). Patent Owner has appealed both decisions to
`the United States Court of Appeals for the Federal Circuit. ’1140 IPR, Paper
`38; ’1146 IPR, Paper 38.
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
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`
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`IPR2020-00897
`Patent 10,324,277 B2
`IPR2020-00878 (challenges the ’897 patent);
`IPR2019-00030 (challenges the ’568 patent);4
`
`IPR2018-01146 (challenges ’712 patent); and
`IPR2018-01140 (challenges the ’032 patent), as identified by
`Petitioner.
`
`C. The Technology and ’277 Patent
`The application for the ’277 patent was filed November 19, 2017. Ex.
`1001, at [22]. A provisional application No. 61/842,987 was filed July 4,
`2013.5 Id. at [60].
`
`1. Technology
`The ’277 patent describes and claims an optical lens system used in a
`portable electronic product such as a cell phone. Ex. 1001, 1:24–29. A long
`effective focal length (EFL) relative to a short total track length (TTL) of the
`lens assembly enables good quality images. Id. at 1:31–45. The latest lens
`designs use five lenses but the TTL/EFL ratio is larger than desired. Id. at
`1:41–45.
`
`
`4 The ’030 IPR terminated in a final written decision finding all challenged
`claims unpatentable. ’030 IPR, Paper 32, 48; see also Corephotonics, Ltd. v.
`Apple Inc. & Andrew Hirshfeld, Intervenor2 (Appeal No. 2020-1961 (Fed.
`Cir. Oct. 25, 2021) (affirming final written decision).
`5 Because the effective filing date of this patent is March 16, 2013, or later,
`AIA § 103 applies to this proceeding. Ex. 1001, at [52], [60].
`
`4
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`IPR2020-00897
`Patent 10,324,277 B2
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`2. ’277 Patent
`Figure 1A of the ’277 patent is reproduced below.
`
`
`Figure 1A illustrates a first embodiment of the optical lens system.
`Ex. 1001, 2:59–60. Referring to Figure 1A, optical lens system 100 includes
`five lenses 102, 104, 106, 108, and 110 arranged in order along optical axis z
`from the object side of the system (the x axis) to the image side (image plane
`114). Id. at 3:25–46, 4:19 (discussing optical axis z). Each lens is of a
`specific refractive power and shape. Id. at 3:19–44. An “image sensor (not
`shown) is disposed at image plane 114 for the image formation.” Id. at
`3:44–46.
`Each of the five lenses of this embodiment has refractive powers and
`shapes shown in Figure 1A and further specified as follows:
`first lens 102 has a positive refractive power and a convex object-
`side surface and a concave image side surface (Ex. 1001, 3:26–
`28);
`
`second lens 104 has a negative refractive power of and a
`meniscus convex object-side surface (Id. at 3:28–31);
`
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`5
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`IPR2020-00897
`Patent 10,324,277 B2
`third lens 106 has a negative refractive power a concave object-
`side surface and a concave image-side surface (Id. at 3:31–33);
`
`fourth lens 108 has a positive refractive power and a positive
`meniscus with a concave object-side (Id. at 3:34–38); and
`
`fifth lens 110 has a negative refractive power having a negative
`meniscus, with a concave object-side surface (Id. at 3:38–41).
`
`
`D. Illustrative Claim
`All claims of the ’277 patent, 1 through 24, are challenged. Pet. 9.
`Claims 1, 11, and 18 are independent apparatus claims to “a lens assembly.”
`Ex. 1001, 8:21–10:46. The remaining claims 2–10, 12–17, and 19–24 all
`depend directly or indirectly from one of the independent claims. Claim 1 is
`reproduced below as illustrative.
`[1.0]6 A lens assembly, comprising:
`
`[1.1] a plurality of refractive lens elements arranged along an
`optical axis, wherein at least one surface of at least one of the
`plurality of lens elements is aspheric,
`
`[1.2] wherein the lens assembly has an effective focal length
`(EFL),
`
`[1.3] wherein a lens system that includes the lens assembly plus
`a window positioned between the plurality of lens elements and
`an image plane has a total track length (TTL) of 6.5 millimeters
`or less,
`
`[1.4] wherein a ratio TTL/EFL is less than 1.0,
`
`
`
`6 Each claim and its limitations are bracketed in the Petition. See, e.g., Pet.
`20 ([1.0] is the preamble of claim 1). We adopt this format for purposes of
`this Decision.
`
`6
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`IPR2020-00897
`Patent 10,324,277 B2
`[1.5] wherein the plurality of lens elements comprises, in order
`from an object side to an image side, a first lens element with
`positive refractive power,
`
`[1.6] a second lens element with negative refractive power,
`
`[1.7] and a third lens element,
`
`[1.8] wherein a focal length f1 of the first lens element is smaller
`than TTL/2 and
`
`[1.9] wherein a lens assembly F # is smaller than 2.9.
`
`Ex. 1001, 8:22–36.
`
`E. Evidence
`This proceeding relies on the following prior art references and
`expert testimony:
`Ogino (Ex. 1005)7: Ogino et al., US 9,128,267 B2, filed Mar. 29,
`2013, issued Sept. 8, 2015.
`Bareau (Ex. 1012)8: Bareau et al., “The Optics of Miniature Digital
`Camera Modules,” SPIE Proceedings Volume 6342, International Optical
`Design Conference 2006; 63421F (2006), available at https://doi.org/
`10.1117/12.692291.
`Petitioner also relies on the Declaration of José Sasián, PhD under
`37 C.F.R. § 1.68 (“Sasián Dec.”, Ex. 1003) and the Declaration of José
`
`
`7 Petitioner alleges Ogino “was filed on March 26, 2014 and claims priority
`to Japanese Application No. 2013-072282 filed on March 29, 2013.” Pet. 9.
`Thus, Petitioner alleges Ogino is prior art under 35 U.S.C. §102(a)(2) as of
`its Japanese filing date. Id. On this record, we find that Ogino is prior art.
`8 Petitioner alleges Bareau “was both presented publicly and published in
`2006 [Ex. 1003 ¶ 50] and is prior art under §102(a)(1).” Pet. 9. On this
`record, we find that Bareau is prior art.
`
`7
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`IPR2020-00897
`Patent 10,324,277 B2
`Sasián, PhD under 37 C.F.R. § 1.68 in Support of Petitioner Reply (“Sasián
`Reply Dec.,” Ex. 1037).
`Patent Owner relies, in part, on the Declaration of Tom D. Milster,
`Ph.D. Pursuant to 37 C.F.R. § 1.68 (“Milster Dec.,” Ex. 2001).
`F. Asserted Grounds
`Petitioner asserts that claims 1–24 would have been unpatentable on
`the following grounds (Pet. 9):
`35 U.S.C. §9
`Claims Challenged
`1–3, 5–8
`103
`1–24
`103
`
`Reference(s)/Basis
`Ogino Example 4,10 Bareau
`Ogino Example 5, Bareau
`
`
`
`III. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner alleges a person having ordinary skill in the art would have
`had “(i) a bachelor’s degree in Physics, Optical Sciences, or equivalent
`training, as well as (ii) approximately three years of experience in designing
`multi-lens optical systems.” Pet. 7 (citing Ex. 1003, 1111). Petitioner further
`alleges a person of ordinary skill “would have known how to use lens design
`software such as Code V, Oslo, or Zemax, and would have taken a lens
`
`
`9 The Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011) revised 35 U.S.C. §§ 102 and 103, effective March
`16, 2013. The ’277 patent has an effective filing date later than March 16,
`2013 (see Section II.C, fn. 5). Thus, the grounds asserted are under the AIA
`version of 35 U.S.C. § 103.
`10 Petitioner primarily relies on Examples 4 and 5, but also cites Example 6.
`See, e.g., Pet. 27. We consider all cited portions of Ogino.
`11 Petitioner alternates its citations to the Sasián Declaration (Ex. 1003)
`between page numbers and paragraph numbers. Compare Pet. 7 (citing
`page) with Pet. 9 (citing paragraph). We refer to page numbers, which are
`used more often in the Petition, using paragraph cites when they are
`referenced.
`
`8
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`IPR2020-00897
`Patent 10,324,277 B2
`design course.” Id. (citing Ex. 1003 ¶ 19). Patent Owner “does not
`disagree” with Petitioner’s proposed description of a person of ordinary skill
`in the art. PO Resp. 12 (citing Ex. 2001 ¶ 20). On this record, and to the
`extent relevant to our findings, we adopt Petitioner’s proposal which is
`consistent with the prior art of record.
`B.
`Claim Construction
`In an inter partes review for a petition filed on or after November 13,
`2018, a claim “shall be construed using the same claim construction standard
`that would be used to construe the claim in a civil action under 35 U.S.C.
`282(b).” See Changes to the Claim Construction Standard for Interpreting
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
`Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
`November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)); see
`also Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en
`banc) (citation omitted). The Petition here was accorded a filing date of
`May 4, 2020 (Paper 7), and the district court construction standard applies.
`1. “effective focal length” and “total track length”
`As Petitioner alleges, we construed “effective focal length” (EFL”)
`and “total track length” (“TTL”)12 in the final decisions in the ’1140 and
`’1146 IPRs. Pet. 8; id. at fn. 2. Specifically, our analysis concluded
`“effective focal length” is “the focal length of a lens assembly.” ’1140 IPR,
`Paper 37, 10; ’1146 IPR, Paper 37, 8. We further concluded “total track
`
`
`12 We also noted in the Institution Decision that Petitioner proposed a
`different construction of TTL in IPR2020-00877 (“’877 IPR”), which
`involves the same parties. Inst. Dec. 11. The parties were advised to
`“address during trial whether and why the construction of this term should
`differ.” Id. Neither party did so.
`
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`9
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`IPR2020-00897
`Patent 10,324,277 B2
`length” is “the length of the optical axis spacing between the object-side
`surface of the first lens element and one of: an electronic sensor, a film
`sensor, and an image plane corresponding to either the electronic sensor or a
`film sensor.” ’1140 IPR, Paper 37, 10–18; ’1146 IPR, Paper 37, 8–14. The
`challenged patents in the ’1140 and ’1146 IPRs share common subject
`matter with the ’277 patent. See Section II.B above.
`Neither party disputes the constructions of EFL and TTL from the
`’1140 or ’1146 IPRs as set forth above. Pet. 8; PO Resp. 13. There is no
`dispute as to the meaning of EFL or TFL. Accordingly, to the extent
`relevant and to complete the record, we maintain the above constructions of
`EFL and TTL for purposes of this Decision.
`2. Remaining claim terms
`In the Institution Decision, we determined no other claim term
`required construction. Inst. Dec. 10–11. Both parties agree that the
`remaining words of the claims do not require express construction and are
`given their ordinary and customary meaning as understood by a person of
`ordinary skill in the art. Pet. 8; PO Resp. 13.
`C. Obviousness Legal Standard
`A patent claim is invalid as obvious if the differences between the
`claimed invention and the prior art are “such that the claimed invention as a
`whole would have been obvious before the effective filing date of the
`claimed invention to a person having ordinary skill in the art to which the
`claimed invention pertains.” 35 U.S.C. § 103.
`The ultimate determination of obviousness is a question of law,
`but that determination is based on underlying factual findings.
`. . . The underlying factual findings include (1) “the scope and
`content of the prior art,” (2) “differences between the prior art
`and the claims at issue,” (3) “the level of ordinary skill in the
`
`10
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`IPR2020-00897
`Patent 10,324,277 B2
`pertinent art,” and (4) the presence of secondary considerations
`of nonobviousness such “as commercial success, long felt but
`unsolved needs, failure of others,” and unexpected results.
`
`In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (citing inter alia
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).
`“To satisfy its burden of proving obviousness, a petitioner cannot
`employ mere conclusory statements. The petitioner must instead articulate
`specific reasoning, based on evidence of record, to support the legal
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016). Furthermore, in assessing the prior art, the
`Board must consider whether a person of ordinary skill would have been
`motivated to combine the prior art to achieve the claimed invention.
`Nuvasive, 842 F.3d at 1381.
`As the Federal Circuit found, in quoting from the Supreme Court’s
`decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–419 (2007),
`“because inventions in most, if not all, instances rely upon
`building blocks long since uncovered, and claimed discoveries
`almost of necessity will be combinations of what, in some sense,
`is already known,” “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant
`field to combine the elements in the way the claimed new
`invention does.”
`
`Personal Web Technologies, LLC v. Apple, Inc., 848 F.3d 987, 991–992
`(Fed. Cir. 2017).
`D. Patent Owner’s Patentability Arguments on Design and Manufacturing
`Considerations
`Patent Owner argues all claims of the ’277 patent remain patentable
`over all of Petitioner’s asserted grounds of unpatentability. PO Resp. 23–30
`
`11
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`IPR2020-00897
`Patent 10,324,277 B2
`(first ground), 40–54 (second ground);13 Sur-Reply 4; see Sections III.E and
`F below. Patent Owner argues Petitioner’s unpatentability analysis is
`“incomplete and ignores how a [person of ordinary skill in the art] would
`have designed an optical lens assembly.” PO Resp. 23–30 (citing Ex. 2001
`¶¶ 76–79, 83). Patent Owner also argues Petitioner’s unpatentability
`analysis “does not address the tolerances and manufacturability of the design
`that would necessarily be considered by a [person of ordinary skill in the
`art].” Id. at 31 (citing Ex. 2001 ¶ 90). Patent Owner’s arguments on design
`and manufacturing considerations are found throughout Patent Owner’s
`briefs. See generally, PO Resp. 31–55 (grounds 1 and 2); Sur-Reply 8.
`Patent Owner relies on the non-precedential opinion in the final
`decision in the ’030 IPR to argue that manufacturing concerns are relevant to
`whether a person of ordinary skill in the art would have modified the prior
`art in the manner Petitioner proposes. Tr. 36:15–23. The ’030 IPR final
`decision finds a lens designer of ordinary skill would have “taken into
`account manufacturing concerns.” ’030 IPR, Paper 32 at 18; see also Sur-
`Reply 8 (“manufacturability . . . is not directed toward the claim limitations,
`but rather to whether a [person of ordinary skill in the art] would have
`considered manufacturability”). We find that the knowledge of a lens
`designer of ordinary skill in the art includes familiarity with manufacturing
`and fabrication. See Section III.A above.
`Notwithstanding the preceding finding, Patent Owner’s counsel was
`unable to cite authority reflecting how manufacturability is relevant to the
`
`
`13 Patent Owner’s arguments for the first ground are very similar for the
`second ground. Compare PO Resp. 31 (ground 1) with PO Resp. 40 (both
`arguing “Petitioner ignores the manufacturability of the lenses”). For this
`Section III.D we discuss the first ground as representative.
`
`12
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`IPR2020-00897
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`ultimate conclusion of obviousness. Tr. 37:5–39:4.14 That a person of
`ordinary skill would consider manufacturing issues does not answer whether
`the claimed subject matter would have been obvious to that person. The
`level of ordinary skill in the art is only part of the obviousness inquiry. For
`example, neither Patent Owner nor its expert explain sufficiently how the
`manufacturing arguments show any “differences between the prior art and
`the claims at issue.” See Graham, 383 U.S. at 17–18. This is an
`unsurprising result because, as we find below, the claims do not recite any
`manufacturing requirements.
`Patent Owner does not specifically argue that the Petition lacks a
`sufficient showing of reasons to combine Ogino Examples 4 or 5 and
`Bareau. See generally PO Resp. Patent Owner does argue that a person of
`
`
`14 The colloquy from the cited portion of the transcript reads as follows:
`JUDGE ANDERSON: Well, so that – that’s interesting, but is
`there any legal authority other than this non-precedential
`opinion, which is on appeal as I understand it, to support patent
`owner’s view that in some way manufacturing concerns are
`relevant to whether a person of ordinary skill in the art would
`make this modification?
`MR. LINK: Well, Your Honor, I believe -- you know, going
`back to the very basics, in an obviousness analysis the person of
`ordinary skill in the art is required to look at the entire scope of
`the prior art. . . . And so a person of ordinary skill in the art
`would need to -- necessarily need to consider that to make sure
`that they could in fact create this lens assembly.
`JUDGE ANDERSON: They need to consider what?
`MR. LINK: They would need to consider the manufacturability.
`That is could a design that they created be manufactured?
`JUDGE ANDERSON: So my question is do you have any legal
`authority to support that position?
`MR. LINK: Well, beyond this -- you know, this prior holding
`here, no. . . .
`
`13
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`ordinary skill would not combine the references based on various
`manufacturing considerations. See, e.g., id. at 37 (a person of ordinary skill
`“would not have modified Ogino Example 4” with Bareau because of
`relative illumination considerations). Patent Owner argues that “in some
`instances the prior art teaches away from the proposed combination.” Id. at
`1, 10. At their core, all of Patent Owner’s arguments relate to physical
`combinability of the references based on manufacturing issues and are not
`reasons a person of ordinary skill would not have combined the references.
`See Sections III.E.5 and III.F.8 below (analyzing the reasons for combining
`the references).
`Neither does Patent Owner identify any theory of patentability based
`on an alleged inability to manufacture the claimed invention. As noted
`above, problems in physically combining references are irrelevant to
`whether a person of ordinary skill would have had reason to combine the
`references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (test for
`obviousness is not “whether the features of a secondary reference may be
`bodily incorporated into the structure of the primary reference; nor is it that
`the claimed invention must be expressly suggested in any one or all of the
`references”).
`We find that design and manufacturing considerations are not recited
`in any of the claims and cannot be imported into them. See Reply 9–10. On
`this record, manufacturing considerations would not have been a reason
`preventing a person of ordinary skill in the relevant field from combining the
`elements in the way the claimed new invention does. See Personal Web
`Technologies, 848 F.3d at 991–992; see, e.g., PO Resp. 31 (arguing the
`Petition does not address “tolerances and manufacturability” in combining
`Ogino Example 4 and Bareau). This finding is supported by the claim
`
`14
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`language, which does not recite any design and manufacturing consideration.
`See, e.g., Ex. 1001, 8:22–36 (claim 1, reproduced above in Section II.D).
`Based on Patent Owner’s inability to articulate any legal theory supporting
`its position on manufacturability, we further find that a person of ordinary
`skill would “not wholly reject a design because it did not meet various
`manufacturing considerations.” See Reply 13 (citing Ex. 1037 ¶ 22).
`The finding is also by supported by testimony from Patent Owner’s
`and Petitioner’s experts. Relative to manufacturing, Dr. Milster testified the
`claims of the ’277 patent do not recite manufacturing considerations “other
`than what’s understood -- would be understood by a [person of ordinary skill
`in the art].” Milster Deposition (“Milster Dep.,” Ex. 1028, 90:13–91:4); see
`also Ex. 1037 ¶ 17 (relying on the above Milster Deposition testimony to
`assert the claims “do not recite any manufacturing requirements”).
`In the ’030 IPR, Patent Owner’s expert, Dr. Moore, testified that
`“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.” Ex. 1030,15 56 (emphasis original). Petitioner
`argues Patent Owner inconsistently argues that manufacturing considerations
`are relevant here when they were argued as being irrelevant in the ’030 IPR.
`Reply 12.
`Notwithstanding our overall conclusion regarding manufacturability,
`we analyze Patent Owner’s design and manufacturing arguments in Sections
`III.E.6 and III.F.9 below. Petitioner’s showing and any remaining
`arguments of Patent Owner are also discussed.
`
`
`15 Declaration of Duncan Moore, Ph.D. Pursuant to 37 C.F.R. § 1.68 in
`’030 IPR.
`
`15
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`E. Obviousness of Claims 1–3 and 5–8 over Ogino Example 4 and Bareau
`Petitioner alleges claims 1–3 and 5–8 would have been obvious over
`Ogino Example 4 and Bareau. Pet. 10. Petitioner also relies on the Sasián
`Declaration and the Sasián Reply Declaration. Ex. 1003 ¶¶ 44–62; Ex. 1037
`¶¶ 12–73. The Sasián Declaration includes a claim chart for this ground
`appended to paragraph 62. Ex. 1003, 34–60.
`1. Ogino Example 4 (Ex. 1005)
`Ogino discloses a five-lens system for use in portable devices. Ex.
`1005, Abstract, 1:6–16. Ogino’s lens system is designed for use in “a digital
`still camera, a cellular phone with a camera, a mobile information terminal
`(PDA: Personal Digital Assistance), a smartphone, a tablet terminal, and a
`mobile game machine, on which the imaging lens is mounted to perform
`photography.” Id. at 1:11–16.
`Figure 4 of Ogino is reproduced below.
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`Figure 4 is a lens cross-sectional view of an imaging lens corresponding
`to Example 4.
`
`Ex. 1005, 4:1–4. Ogino explains that there is a demand for five-lens systems
`in portable devices to “to enhance the resolution and performance of the
`imaging lens.” Id. at 1:30–31.
`As shown in Figure 4 above, Ogino’s Example 4 includes five lenses
`in order from the object side, L1 through L5, each lens having an aspheric
`surface. Ex. 1005, 13:4–8. All embodiments, including the fourth
`embodiment disclosed in Ogino, which is shown above, include a “first lens
`Ll that has a positive refractive power and a meniscus shape which is convex
`toward the object side” and a second lens L2 that has a biconcave shape. Id.
`at 13:8–11. In the fourth embodiment, the third lens L3 has a negative
`refractive power. Id. at 13:44–50. Also common among all embodiments,
`“the fourth lens L4 . . . has a meniscus shape which is convex toward the
`image side; and the fifth lens L5 . . . has a negative refractive power and has
`at least one inflection point on an image side surface.” Id. at 13:5–16. The
`specific lens data for the lens system of Example 4 is described in Table 7.
`Id. at 15:18–22, 19:28–40, 20:28–40.
`2. Bareau (Ex. 1012)
`Bareau describes how “[d]esigning lenses for cell phone cameras is
`different from designing for traditional imaging systems.” Ex. 1012, 1.
`Bareau explains the “scale of cell phone camera systems creates particular
`challenges for the lens designer that are unique to this format.” Id.
`Bareau explains that “initial cell phone cameras were based around
`VGA and QVGA modules with 5.6 µm pixels” with formats between 1/7”
`and 1/4” in size. Ex. 1012, 2. Bareau lists “typical lens specifications for a
`¼” sensor format” for use in cellular telephones, including an f-number of
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`2.8. Id. at 3–4. Bareau also indicates a TTL must be at least 0.050mm to
`protect the front of the lens. Id. at 3. Bareau states that “most camera
`module customers specify f/2.8, it is not uncommon to see lenses at f/3.0 and
`f/3.3 when the increased fno has a significant effect on performance or
`manufacturability.” Id. at 4.
`
`3. Claim 1
`Limitation 1.0, the preamble of claim 1, recites “[a] lens assembly,
`comprising: a plurality of refractive lens elements arranged along an optical
`axis.” Petitioner cites to Figure 4, Example 4, of Ogino, lenses L1 through
`L5, and optical axis Z1 as meeting the preamble. Pet. 20–22 (citing
`Ex. 1005, Fig. 4 (annotated at Pet. 21)). Petitioner alleges that all lenses are
`“refractive.” Id. at 21–22 (citing Ex. 1005, 9:11–12, 9:29, 7:51–53, 7:67–
`8:1, 8:8). That the lenses are arranged along the optical axis Z1 is further
`supported by the Sasián Declaration. Id. at 22–23 (citing Ex. 1003, 35–37,
`115–118 (Figs. 2A–2D)).
`Limitation 1.1 recites “wherein at least one surface of at least one of
`the plurality of lens elements is aspheric.” Ogino describes that in the
`imaging lenses in Examples 1 through 6, “both surfaces of each of the first
`to fifth lenses L1 to L5 are aspheric.” Pet. 23–24 (citing Ex. 1005, 15:22–
`24) (emphasis omitted). Table 7 of Ogino shows specific data for Example
`4. Ex. 1005, 15:18–22. Table 7 specifically further identifies “surface
`numbers” 1, 2, and 4–11. See id. at 17 (Table 4 (“Surface Number”), 19:28–
`40, 20:28–40 (Table 7 (*1, *2, *4–*11 (“*ASPHERIC SURFACE”)).
`Petitioner relies on the preceding disclosures and alleges that lens surfaces 1,
`2, and 4–11 are aspheric and correspond to lenses L1 through L5. Pet. 23–
`25 (citing Ex. 1005, 19:28–40, 20:28–40 (Table 7, annotated at Pet. 24));
`Ex. 1003, 38).
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`Limitation 1.2 recites “wherein the lens assembly has an effective
`focal length (EFL).” Petitioner alleges a person of ordinary skill would
`“understand the term ‘effective focal length’ (EFL) to describe the focal
`length of the entire lens system. In that regard, Ogino states ‘f is a focal
`length of a whole system.’” Pet. 25 (citing Ex. 1005, 3:16; Ex. 1003, 38).
`Petitioner also cites to Table 7 and its disclosure of “f=4.555” as teaching
`EFL. Id. at 26 (citing Ex. 1005, 19:28–40, 20:28–40 (Table 7, annotated at
`Pet. 26); Ex. 1003, 39).
`Limitation 1.3 recites “wherein a lens system that includes the lens
`assembly plus a window positioned between the plurality of lens elements
`and an image plane has a total track length (TTL) of 6.5 millimeters or less.”
`Petitioner alleges cover glass (“CG”) is a “window” at 6.5 millimeters or
`less from the lens elements L1 through L5. Pet. 27–29 (citing Ex. 1005,
`5:55–60, Fig. 4 (annotated at Pet. 28); Ex. 1003, 41–42). Petitioner
`calculates TTL by summing the distances (Di) listed in Table 7 between
`lenses of Ogando as 4.36216 mm. Id. at 29 (citing Ex. 1005, 19:28–40,
`20:28–40 (Table 7, annotated at Pet. 29); Ex. 1003, 43); see also Ex. 1005,
`Fig. 4 above (illustrating distances between lenses L1 to L5 as D1 through
`D13).
`Limitation 1.4 recites “wherein a ratio TTL/EFL is less than 1.0.”
`Petitioner alleges “the EFL of Ogino’s Example [4] lens assembly is 4.555
`mm, as shown in Table 7.” Pet. 30 (citing Ex. 1005, 19:28–40, 20:28–40).
`
`16 While this is the sum of D1 to D13 of Table 7, Table 7 specifically states
`“TL=4.260.” See Pet. 29 (citing Ex. 1005, 19:28–40, 20:28–40 (Table 7,
`annotated at Pet. 29)). On this record, we accept the 4.362 mm calculation.
`See Ex. 1003, 40–44. We also note that if TL=4.260 that still falls within
`the recited “6.5 millimeters or less” recited in limitation 1.3. This is also the
`case for limitation 1.4 discussed immediately below.
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`Petitioner cites to its showing regarding limitation 1.3 to allege “the TTL of
`Ogino’s Example [4] lens assembly with the cover glass element is 4.362
`mm.” Id. (citing Ex. 1005, 19:28–40, 20:28–40 (“summing distances from
`D1–D13”). Petitioner calculates the ratio of TTL/EFL as 4.362/4.555,
`which equals 0.9576 and is less than 1.0. Id. (citing Ex. 1003, 44).
`Limitation 1.5 recites “wherein the plurality of lens elements
`comprises, in order from an object side to an image side, a first lens element
`with positive refractive power.” Petitioner again cites Ogino’s Example 4
`and its showing in connection with limitation 1.1. Pet. 31–32 (citing Ex.
`1005, Fig. 4 (annotated at Pet. 32); Ex. 1003, 45). Petitioner starts with lens
`L1’s optical data for the Example 4 lens in Table 13, f/f1 =2.49. Id. at 33
`(citing Table 13, annotated at Pet. 33). Petitioner’s ca
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