Trials@uspto.gov
`571-272-7822
`
`Paper 8
`Entered: December 8, 2020
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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
`
`
`Before BRYAN F. MOORE, GREGG I. ANDERSON, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`

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`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 2 (“Pet.”). Corephotonics, Ltd. (“Patent Owner”) did not
`file a Preliminary Response.
`We have jurisdiction under 35 U.S.C. § 314. Upon considering the
`record developed thus far, for reasons discussed below, we institute inter
`partes review.
`
`II. BACKGROUND
`A. Real Parties in Interest
`The real parties in interest are Apple Inc. and Corephotonics, Ltd.
`Pet. 1; Paper 6, 1.
`
`B. Related Matters
`Petitioner advises us that the ’277 patent is the subject 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-
`
`2
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`IPR2020-00897
`Patent 10,324,277 B2
`01146 (’1146 IPR), which challenge respectively certain claims of U.S. Pat.
`Nos. 9,568,712 (’712 patent) and 9,402,032 (’032 patent).1 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 Guide2 at 18; see also 84 Fed. Reg. 64,280 (Nov.
`21, 2019).
`U.S. Patent No. 10,317,647 (“the ’647 patent”), along with U.S.
`Patent No. 10,330,897, (“the ’897 patent”) claims 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 U.S. Patent No. 9,568,712, “the
`’712 patent”), which claims priority to
`Application No. 14/932,319 (now U.S. Patent No. 9,402,032, “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);
`IPR2020-00878 (challenges the ’878 patent);
`
`1 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 Federal Circuit. ’1140 IPR, Paper 38; ’1146 IPR, Paper 38.
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated
`
`3
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`IPR2020-00897
`Patent 10,324,277 B2
`IPR2019-00030 (challenged the ’568 patent); along with
`IPR2018-01146 (challenged ’712 patent); and
`
`IPR2018-01140 (challenged 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,
`2013.3 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.
`
`2. ’277 Patent
`Figure 1A of the ’277 patent is reproduced below.
`
`
`3 Because the effective filing date of this patent is March 16, 2013, or later,
`post-AIA § 103 applies to this proceeding.
`
`4
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`IPR2020-00897
`Patent 10,324,277 B2
`
`
`Fig. 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 (at the depicted 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 have 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);
`
`third lens 106 has a negative refractive power a concave object-
`side surface and a concave image-side surface (Id. at 3:31–33);
`
`
`5
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`IPR2020-00897
`Patent 10,324,277 B2
`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, “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]4 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,
`
`[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,
`
`
`4 Brackets for each claim limitation are used by Petitioner and adopted for
`purposes of this Decision.
`
`6
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`IPR2020-00897
`Patent 10,324,277 B2
`[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)5: Ogino et al., US 9,128,267 B2, filed Mar. 29,
`2013, issued Sept. 8, 2015;
`Bareau (Ex. 1012)6: 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 Declaration,” Ex. 1003).
`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–24 would have been unpatentable on
`the following grounds (Pet. 9):
`
`
`5 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.
`6 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
`Claim(s) Challenged
`1–3, 5–8
`1–24
`
`
`
`35 U.S.C. §
`103
`103
`
`Reference(s)/Basis
`Ogino Example 4,7 Bareau
`Ogino Example 5, Bareau
`
`III. ANALYSIS
`A. Legal Standard for Obviousness
`A patent claim is invalid as obvious if the differences between the
`claimed subject matter and the prior art are “such that the subject matter as a
`whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.”
`35 U.S.C. § 103(a).
`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
`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
`
`
`7 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.
`
`8
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`IPR2020-00897
`Patent 10,324,277 B2
`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).
`
`B. 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 ¶ 198). 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 design course.” Id. (citing Ex. 1003 ¶ 19). On this record, and for
`purposes of this Decision, we adopt Petitioner’s proposal.
`Claim Construction
`C.
`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
`
`8 Petitioner alters 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 numbers if needed for clarity.
`
`9
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`IPR2020-00897
`Patent 10,324,277 B2
`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).
`As Petitioner alleges, we construed “effective focal length” and “total
`track length” 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 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.
`Our reviewing court has held that “[c]ollateral estoppel protects a
`party from having to litigate issues that have been fully and fairly tried in a
`previous action and adversely resolved against a party-opponent.” Nestle
`USA, Inc. v. Steuben Foods, Inc., 884 F.3d 1350, 1351–1352 (Fed. Cir.
`2018) (quoting Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342
`(Fed. Cir. 2013)). Collateral estoppel applies to claim construction. Id.
`Collateral estoppel, also known as issue preclusion, applies in the
`administrative context, specifically in inter partes review. Maxlinear, Inc. v.
`CF CRESPE LLC, 880 F.3d 1373, 1376 (Fed. Cir. 2018).
`Both parties here fully participated in the ’1140 and ’1146 IPRs. On
`this record and subject to any change on appeal to the Federal Circuit, we
`
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`IPR2020-00897
`Patent 10,324,277 B2
`apply the claim constructions from those proceedings here. At this stage of
`the proceeding, we do not identify any other claim term requiring
`construction. Thus, the remaining words of the claims “are generally given
`their ordinary and customary meaning,” as understood by a person of
`ordinary skill in the art in question at the time of the invention. Phillips, 415
`F.3d at 1312−13.
`We note, however, that Petitioner proposes a different construction of
`TTL in IPR2020-00877, which involves the same parties. The parties
`should address during trial whether and why the construction of this term
`should differ in these two IPRs.
`D. 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. Ex. 1003 ¶¶ 44–62. The Sasián Declaration includes a claim
`chart appended to paragraph 62. Id. at 34–60.
`1. Ogino (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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`IPR2020-00897
`Patent 10,324,277 B2
`
`
`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 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 that
`has a meniscus shape which is convex toward the image side; and the fifth
`lens L5 that has a negative refractive power and has at least one inflection
`point on an image side surface.” Id. at 13:5–16.
`
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`IPR2020-00897
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`
`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.
`Bareaus 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 5.6um 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 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, 8:9). 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,
`App. Figs. 2A–2D).
`Whether or not the preamble is limiting, Petitioner has sufficiently
`shown that Ogino teaches the recited lens assembly.
`
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`IPR2020-00897
`Patent 10,324,277 B2
`Limitation 1.1 recites “wherein at least one surface of at least one of
`the plurality of lens elements is aspheric.” Ogino describes that 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).
`Petitioner has sufficiently shown that Ogino teaches the lens assembly
`has at least one aspheric lens, as recited in limitation 1.1.
`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).
`Petitioner has sufficiently shown that Ogino teaches the lens assembly
`has an EFL, as recited in limitation 1.2.
`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.”
`
`14
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`IPR2020-00897
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`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 listed in Table 7 between lenses of
`Ogino, Di, as 4.3629 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).
`Petitioner has sufficiently shown that Ogino teaches the lens assembly
`has a TTL of “6.5 millimeters or less,” as recited in limitation 1.3.
`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).
`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 is 4.362/4.555, which
`equals 0.9576 and is less than 1.0. Id. (citing Ex. 1003, 44).
`Petitioner has sufficiently shown that Ogino teaches “a ratio of
`TTL/EFL of less than 1.0,” as recited in limitation 1.4.
`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
`
`9 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 is still less than 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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`IPR2020-00897
`Patent 10,324,277 B2
`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 calculation next looks to
`the focal length of the entire system as shown for limitation 1.2, which is
`4.555 mm. Id. (citing Ex. 1003, 46). Dividing the EFL of 4.555 into the
`f/f1 ratio the focal length for L1 alone is 4.555/2.49=1.829 mm. Id. (citing
`Ex. 1003, 46). Relying on the Sasián Declaration, Petitioner alleges
`refractive power is the inverse of focal length or 1/1.829 mm=0.5467 mm-1,
`which would have been understood by a person of ordinary skill to be a
`positive refractive power. Id. at 33–34 (citing Ex. 1003, 46–47 (citing Ex.
`1010,10 159)).
`Petitioner has sufficiently shown that Ogino teaches “a first lens
`element with [a] positive refractive power,” as recited in limitation 1.5.
`Limitation 1.6 recites “a second lens element with negative refractive
`power.” Petitioner cites to its showing with respect to limitation 1.5 for lens
`L2. Pet. 34. Petitioner calculates L2’s focal length (f2) starting with the
`“entire Example 4 lens system (f) and the data provided in Table 13 for
`Example 4 showing f/f2=-1.83.” Id. at 34–35 (citing 1005, 23:25–40 (Table
`13, annotated at Pet. 35); Ex. 1003, 47). Petitioner repeats the calculation
`method for limitation 1.5, [f2]=4.55 mm/-1.83=2.489 mm. Id. at 35 (citing
`Ex. 1003, 47). Petitioner then calculates refractive power as the inverse of
`focal length, 1/-.2489=-0.4017 mm-1, which is a negative refractive power.
`Id. (citing Ex. 1003, 48).
`
`
`10 Born M. and Wolf E., Principles of Optics, (Pergamon Press, 6th Ed.
`1980).
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`Petitioner has sufficiently shown that Ogino teaches “a second lens
`element with [a] negative refractive power,” as recited in limitation 1.6.
`Limitation 1.7 recites “and a third lens element.” Petitioner alleges
`Ogino teaches this limitation “because its Example 4 lens assembly includes
`a third lens L3.” Pet. 36–37 (citing Ex. 1005, Fig. 4 (annotated at Pet. 36);
`Ex. 1003, 48–49).
`Petitioner has sufficiently shown that Ogino teaches “a third lens
`element,” as recited in limitation 1.7.
`Limitation 1.8 recites “wherein a focal length f1 of the first lens
`element is smaller than TTL/2.” Petitioner alleges Ogino’s L1 lens, as
`shown in connection with Example 4 and limitation 1.5, has a focal length f1
`of 1.829 mm. Pet. 37 (citing Ex. 1003, 49). Petitioner alleges, as it did in
`connection with limitation 1.2, that “the TTL of the Example 5 lens
`assembly with the cover glass element is 4.362 mm.” Id. Performing the
`calculation, Petitioner alleges the f1 of 1.829 is less than TTL divided by 2
`or 4.362 mm/2=2.181 mm. Id. (citing Ex. 1003, 49). Similarly, Petitioner
`contends that Ogino’s Example 4 lens assembly also meets the recited ratio
`because f1=1.829 mm and TTL/2=2.181 mm. Id. (citing Ex. 1003, 49).
`Petitioner has sufficiently shown that Ogino teaches “a focal length f1
`of the first lens element is smaller than TTL/2,” as recited in limitation 1.8.
`Limitation 1.9 recites “and wherein a lens assembly F # is smaller
`than 2.9.” Petitioner relies on Bareau to show the f# limitation, requiring a
`combination of Ogino and Bareau. Pet. 38. Petitioner alleges a person of
`ordinary skill “would have found this modification to be both predictable
`and desirable due to Ogino’s other disclosed embodiments supporting a
`lower f-number and Bareau’s [] ‘teaching of cell phones supporting f-
`numbers of 2.8 or less.” Id. (citing Ex. 1005, Figs. 8–13; Ex. 1003, 49).
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`Petitioner also cites to a desire for faster lenses. Id. (citing Ex. 1013,11 104).
`Petitioner relies on the Sasián Declaration to present Ogino’s Example 4
`modified with an f-number of 2.8 is provided below with corresponding
`data. Id. at 38–39 (citing Ex. 1003, 50, Fig. 2A).
`Petitioner has sufficiently shown that a person of ordinary skill would
`have reasons to combine Ogino and Bareau. Further, the combination of
`Bareau with Ogino teaches “a lens assembly F # is smaller than 2.9,” as
`recited in limitation 1.9.
`
`4. Claims 2–3 and 5–8
`We have reviewed Petitioner’s evidence and argument regarding
`claims 2–3 and 5–9. Pet. 39–51. We have also reviewed the evidence
`provided in the Sasián Declaration. Ex. 1003, 50–60.
`Specifically, claim 2 depends from claim 1 and recites that “the third
`lens element has negative refractive power.” Petitioner cites to its showing
`regarding limitations 1.6 and 1.7 as teaching a third lens with a negative
`refractive power. Pet. 39 (citing Ex. 1005, 23:25–40 (Table 13, annotated at
`Pet. 40); Ex. 1003, 51).
`Claim 3 also depends from claim 1 and recites five lens elements, as is
`shown in Ogino, which Petitioner relies on. Pet. 42 (citing Ex. 1005, Fig. 4
`(annotated at Pet. 42)).
`Claim 5 depends from claim 2 and recites five lens elements where
`the fourth and fifth lenses have “different refractive power signs.” As with
`claim 3, Petitioner cites to Ogino’s Figure 4 for the five lens elements. Pet.
`43–44 (citing Ex. 1005, Fig. 4 (annotated at Pet. 44); Ex. 1010, 159, 161–
`
`
`11 Kingslake, R., Optics in Photography, (The Society of Photo-Optical
`Engineering, 1992).
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`162; Ex. 1003, 54). As to the recitation of different refractive powers,
`Petitioner cites to Ogino and the Sasián Declaration as showing “[t]he
`refractive power of lens elements L4 and L5 are calculated [] by finding the
`reciprocal of their respective focal lengths calculated” as was done in
`limitation 1.5. Id. at 44–47 (citing Ex. 1005, 19:28–40, 20:28–40 (Table 7
`annotated at Pet. 45), 23:25–40 (Table 13, annotated at Pet. 46); Ex. 1003,
`55–57).
`Claim 6 depends from claim 3 but otherwise recites the subject matter
`of claim 5 regarding different refractive powers of the fourth and fifth
`lenses. Petitioner relies on its showing made in connection with claim 5.
`Pet. 47.
`Claim 7 depends from claim 3 and recites “a fourth lens element and a
`fifth lens element are separated by an air gap smaller than TTL/20.”
`Petitioner cites to Ogino’s Table 7 to obtain the distance between lenses L4
`and L5, the “air gap,” which is 0.151 mm. Pet. 48 (citing Ex. 1005, 19:28–
`40, 20:28–40 (Table 7, annotated at Pet. 48)). Petitioner takes its calculation
`of TTL from limitation 1.5, which is 4.362 mm, and calculates the recited
`“TTL/20” as 0.218 mm, which is less than the air gap of 0.151 mm. Id. at
`48–49 (citing Ex. 1003, 58–59).
` Claim 8 depends from claim 3 and recites “one of a fourth lens
`element and a fifth lens element is characterized by an Abbe number smaller
`than 30 and wherein the other of the fourth lens element and the fifth lens
`element is characterized by an Abbe number greater than 50.” Petitioner
`again cites to Ogino’s Table 7 and the Sasian Declaration. Pet. 49–51 (citing
`Ex. 1005, 19:28–40, 20:28–40 (Table 7, annotated at Pet. 50; Ex. 1003, 60).
`Petitioner identifies the Abbe numbers for lenses L4 and L5 directly from
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`Table 7 as the “vdj” numbers of 23.63 and 54.87 respectively. Id. at 50
`(citing Ex. 1005, 14:45–47 (the vdj value is the Abbe number).
`On this record, Petitioner has sufficiently shown the limitations of
`claims 2–3 and 5–8.
`
`5. Conclusion
`Petitioner has shown a reasonable likelihood that claims 1–3 and 5–8
`would have been obvious over Ogino Example 4 and Bareau.
`E. Obviousness of Claims 1–24 over Ogino Example 5 and Bareau
`Petitioner alleges claims 1–24 would have been obvious over Ogino
`Example 5 and Bareau.12 Pet. 51. Petitioner also relies on the Sasián
`Declaration. Ex. 1003 ¶¶ 63–77. The Sasián Declaration includes a claim
`chart appended to paragraph 77. Id. at 71–110.
`1. Claim 1
`Much of Petitioner’s showing for Example 5 of Ogino is very similar
`to the showing made above in Section. III.D.3 for Example 4 of Ogino.
`Compare Pet. 21 (annotated Fig. 4 of Ogino), with Pet. 60 (annotated Fig. 5
`of Ogino). Petitioner has sufficiently shown that Ogino Example 5 in
`combination with Bareau teaches all the limitations of claim 1.13 Petition’s
`allegations regarding claim 1 are summarized below.
`
`
`12 At the institution phase, once it is determined that there is a reasonable
`likelihood that Petitioner will succeed on a single claim, review of all claims
`is justified. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018). Having
`already determined Petitioner has met the reasonable likelihood standard
`with respect to claims 1–3 and 5–8, trial is instituted. Notwithstanding the
`preceding, we do not and need not analyze all claims and/or limitations
`under this ground.
`13 Petitioner refers to a “second modification” of Example 5 as also teaching
`certain limitations. See, e.g., Pet. 62 (citing Ex. 1003, 76). The second
`modification is Example 5 “modified for an f-number of 2.8,” as taught by
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`For limitation 1.0, the preamble of claim 1, Petitioner cites to Figure
`5, Example 5, of Ogino, lenses L1 through L5, and optical axis Z1 as
`meeting the preamble. Pet. 59–61 (citing Ex.