`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`_____________________
`
`IPR2020-00906
`U.S. Patent No. 10,225,479 B2
`_____________________
`
`
`PETITIONER APPLE INC.’S NOTICE OF APPEAL
`
`
`via E2E
`Patent Trial and Appeal Board
`
`via Hand Delivery
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel, 10B20
`Madison Building East
`600 Dulany Street
`Alexandria, VA 22314
`
`via CM/ECF
`United States Court of Appeals for the Federal Circuit
`
`
`
`

`

`IPR2020-00906
`Petitioner Apple Inc.’s Notice of Appeal
`U.S. Patent No. 10,225,479 B2
`Attorney Docket No. 52959.54R479
`
`
`Pursuant to 28 U.S.C. § 1295(a)(4)(A), 35 U.S.C. §§ 141(c), 142, and 319,
`
`and 37 C.F.R. §§ 90.2(a), 90.3, and Federal Circuit Rule 15(a)(1), Petitioner Apple
`
`Inc. (“Petitioner”) provides notice that it appeals to the United States Court of
`
`Appeals for the Federal Circuit from the Final Written Decision of the Patent Trial
`
`and Appeal Board (“Board”) entered November 8, 2021 (Paper 54), and from all
`
`underlying and related orders, decisions, rulings, and opinions regarding U.S.
`
`Patent No. 10,225,479 B2 (“the ʼ479 patent”) in Inter Partes Review IPR2020-
`
`00906.
`
`
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), the expected issues on appeal
`
`include, but are not limited to: the Board’s error(s) in determining that challenged
`
`claims 19-22 of the ʼ479 patent are not unpatentable, the Board’s findings and
`
`conclusions regarding combining the prior art references presented, and all other
`
`issues decided adversely to Petitioner in any orders, decisions, rulings, or opinions.
`
`
`
`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), a copy of this Notice is
`
`being filed with the Director of the United States Patent and Trademark Office and
`
`with the Patent Trial and Appeal Board. In addition, a copy of this Notice and the
`
`required docketing fees are being filed with the Clerk’s Office for the United States
`
`Court of Appeals for the Federal Circuit via CM/ECF.
`
`
`
`
`
`
`
`1
`
`

`

`Petitioner Apple Inc.’s Notice of Appeal
`Attorney Docket No. 52959.54R479
`
`
`Dated: January 10, 2022
`
`
`
`
`
`
`
`
`HAYNES AND BOONE, LLP
`2323 Victory Avenue
`Suite 700
`Dallas, TX 75219
`Telephone: (972) 739-8611
`Facsimile: (214) 200-0853
`michael.parsons.ipr@haynesboone.com
`
`IPR2020-00906
`U.S. Patent No. 10,225,479 B2
`Respectfully submitted,
`
`/Michael S. Parsons/
`Michael S. Parsons
`Reg. No. 58,767
`
`
`
`
`
`2
`
`

`

`IPR2020-00906
`Petitioner Apple Inc.’s Notice of Appeal
`U.S. Patent No. 10,225,479 B2
`Attorney Docket No. 52959.54R479
`
`CERTIFICATE OF FILING
`
`The undersigned hereby certifies that, in addition to being electronically
`
`filed through PTAB E2E, a true and correct copy of the above-captioned
`
`PETITIONER APPLE INC.’S NOTICE OF APPEAL is being filed by hand with
`
`the Director on January 10, 2022, at the following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel, 10B20
`Madison Building East
`600 Dulany Street
`Alexandria, VA 22314
`The undersigned also hereby certifies that a true and correct copy of the
`
`above-captioned PETITIONER APPLE INC.’S NOTICE OF APPEAL and the
`
`filing fee is being filed via CM/ECF with the Clerk’s Office of the United States
`
`Court of Appeals for the Federal Circuit on January 10, 2022.
`
`Dated: January 10, 2022
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Michael S. Parsons/
`Michael S. Parsons
`Reg. No. 58,767
`Attorney for Petitioner Apple Inc.
`
`
`
`3
`
`

`

`IPR2020-00906
`Petitioner Apple Inc.’s Notice of Appeal
`U.S. Patent No. 10,225,479 B2
`Attorney Docket No. 52959.54R479
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, this is to certify that a true and correct copy of
`
`
`
`the foregoing “Petitioner Apple Inc.’s Notice of Appeal” was served on the Patent
`
`Owner Corephotonics, Ltd. as detailed below:
`
`Date of service
`
`January 10, 2022
`
`Manner of service Electronic Service by E-mail:
`− nrubin@raklaw.com
`− jchung@raklaw.com
`− mfenster@raklaw.com
`− jtsuei@raklaw.com
`− jlink@raklaw.com
`
`Persons served
`
`
`Documents served Petitioner Apple Inc.’s Notice of Appeal
`
`Neil A. Rubin (nrubin@raklaw.com)
`C. Jay Chung (jchung@raklaw.com)
`Marc A. Fenster (mfenster@raklaw.com)
`James S. Tsuei (jtsuei@raklaw.com)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Floor
`Los Angeles, CA 90025
`
`Jonathan Link (jlink@raklaw.com)
`Russ August & Kabat
`800 Maine Ave SW, Suite 200
`Washington, DC 20024
`
`
`
`
`
`
`
`
`4
`
`

`

`Petitioner Apple Inc.’s Notice of Appeal
`Attorney Docket No. 52959.54R479
`
`
`
`
`
`IPR2020-00906
`U.S. Patent No. 10,225,479 B2
`Respectfully submitted,
`
`
`
`/Michael S. Parsons/
`Michael S. Parsons
`Reg. No. 58,767
`Attorney for Petitioner Apple Inc.
`
`5
`
`

`

`Trials@uspto.gov
`571-272-7822
`
`Paper 54
`Date: November 8, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.,
`Petitioner,
`v.
`COREPHOTONICS LTD.,
`Patent Owner.
`
`IPR2020-00906
`Patent 10,225,479 B2
`
`
`
`
`
`
`
`
`
`Before BRYAN F. MOORE, JOHN F. HORVATH, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`HORVATH, Administrative Patent Judge.
`
`JUDGMENT
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`

`

`IPR2020-00906
`Patent 10,225,479 B2
`
`INTRODUCTION
`I.
`Background and Summary
`A.
`Apple, Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 19–22 (“the challenged claims”) of U.S. Patent No.
`10,225,479 B2 (Ex. 1001, “the ’479 patent”). Paper 3 (“Pet.”), 10.
`Corephotonics Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 8
`(“Prelim. Resp.”). Upon consideration of the Petition and Preliminary
`Response, we instituted inter partes review of all challenged claims on all
`grounds raised. Paper 10 (“Dec. Inst.”).
`Patent Owner filed confidential (Paper 15) and public (Paper 16)
`versions of a Response to the Petition. See Paper 16 (“PO Resp.”).1
`Petitioner filed confidential (Paper 24) and public (Paper 23) versions of a
`Reply. See Paper 23 (“Pet. Reply”). Patent Owner filed a Sur-Reply. See
`Paper 33 (“PO Sur-Reply”). An oral hearing was held on August 12, 2021,
`and the hearing transcript is included in the record. See Paper 52 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(b). This is a Final Written
`Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
`set forth below, we find Petitioner has failed to demonstrate by a
`preponderance of evidence that claims 19–22 of the ’479 patent are
`unpatentable on the grounds raised in the Petition.
`Real Parties-in-Interest
`B.
`Petitioner and Patent Owner identify themselves, respectively, as the
`real parties-in-interest. Pet. 1; Paper 5, 1.
`
`
`1 Throughout this Decision, unless noted otherwise, we cite to the public
`versions of the papers filed by the parties.
`
`2
`
`

`

`IPR2020-00906
`Patent 10,225,479 B2
`Related Matters
`C.
`Petitioner and Patent Owner identify Corephotonics Ltd. v. Apple Inc.,
`5:19-cv-04809 (N.D. Cal.), as a district court proceeding that can affect or
`be affected by this proceeding, and Petitioner also identifies IPR2020-00905
`as an inter partes review that can affect or be affected by this proceeding.
`Pet. 1; Paper 5, 1. In addition, we note that the ’479 patent is part of a
`family of patents and patent applications that include at least U.S. Patent
`Nos. 10,326,942; 10,015,408; 9,661,233; and 9,185, 291. Ex. 1001, code
`(63). Many of these patents were or currently are involved in inter partes
`review proceedings that could affect or be affected by a decision in this
`proceeding.
`Evidence Relied Upon2
`D.
`Reference
`Parulski
`Soga3
`Morgan-Mar
`Kawamura4
`Ogata
`
`US 7,859,588 B2
`JP 2007/259108 A
`US 8,989,517 B2
`JP S5862609 A
`US 5,546,236
`
`Effective Date
`Dec. 28, 2010
`Oct. 4, 2007
`Mar. 24, 2015
`Apr. 14, 1983
`Aug. 13, 1996
`
`Exhibit
`1005
`1006
`1009
`1012
`1026
`
`Instituted Grounds of Unpatentability
`E.
`We instituted review on the following grounds:
`Ground
`Claims
`35 U.S.C. §
`References
`1
`19, 20
`103(a)
`Parulski, Ogata, Kawamura, Soga
`
`2 Petitioner also relies upon the Declarations of Fredo Durand, Ph.D.
`(Exs.1003, 1038) and José Sasián, Ph.D. (Exs. 1021, 1039).
`3 Soga is a non-certified translation of a Japanese Patent Application
`Publication originally published in Japanese. See Ex. 1006, 18–30.
`4 Kawamura is a certified translation of an Unexamined Japanese Patent
`Application Publication originally published in Japanese. See Ex. 1012, 10–
`16.
`
`3
`
`

`

`IPR2020-00906
`Patent 10,225,479 B2
`Ground
`Claims
`2
`21, 22
`
`35 U.S.C. §
`103(a)
`
`References
`Parulski, Ogata, Kawamura,
`Soga, Morgan-Mar
`
`II. ANALYSIS
`The ’479 Patent
`A.
`The ’479 patent is directed to “a thin (e.g., fitting in a cell-phone)
`dual-aperture zoom digital camera with fixed focal length lenses” that is
`configured to use “partial or full fusion to provide a fused image in still
`mode.” Ex. 1001, 3:18–23. Figure 1A, reproduced below, illustrates dual-
`aperture zoom digital camera 100.
`
`
`Figure 1A is a “block diagram illustrating a dual-aperture zoom” digital
`camera 100. Id. at 5:64–65. Camera 100 includes a wide imaging
`subsystem consisting of wide lens 102, wide sensor 104, and wide image
`
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`IPR2020-00906
`Patent 10,225,479 B2
`signal processor (“ISP”) 106, and a tele imaging subsystem consisting of tele
`lens 108, tele sensor 110, and tele ISP 112. Id. at 6:24–29.
`Camera 100 also includes controller 114, which includes sensor
`control 116, user control 118, video processing module 126 and still
`processing module 128. Id. at 6:33–37. User control 118 controls various
`camera functions, including, operational mode 120, region of interest
`(“ROI”) 122, and zoom factor (“ZF”) 124. Id. at 6:38–40. Zoom factor 124
`allows a user “to choose a zoom factor.” Id. at 6:50–51. Sensor control 116
`chooses “which of the sensors is operational” based on the selected zoom
`factor. Id. at 6:41–45. ROI function 122 allows a user to “choose a region
`of interest,” i.e., a sub-region “on which both sub-cameras are focused.” Id.
`at 6:46–50.
`The dual lenses allow camera 100 to take an image having a shallow
`depth-of-field (“DOF”) “by taking advantage of the longer focal length of
`the Tele lens.” Id. at 4:23–27. The image taken with the Tele lens can be
`enhanced “by fusing data from an image captured simultaneously with the
`Wide lens.” Id. at 4:27–30. For example, the Tele lens can focus “on a
`subject of the photo” and the Wide lens can focus on “a closer distance than
`the subject so that objects behind the subject appear very blurry.” Id. at
`4:30–34. Then, a shallow depth-of-field image can be formed when
`“information from the out-of-focus blurred background in the Wide image is
`fused with the original Tele image background information, providing a
`blurrier background and even shallower DOF.” Id. at 4:34–38.
`The process for fusing images taken with the Wide and Tele lenses is
`shown in Figure 5 of the ’479 patent, which is reproduced below.
`
`5
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`

`

`IPR2020-00906
`IPR2020-00906
`Patent 10,225,479 B2
`Patent 10,225,479 B2
`
`ISP: Perform image signal
`processing on data received form
`each sensor to obtain processed
`Wide and Tele images
`502
`
`Rectification: Align processed
`Wide and Tele images to be on an
`epipolar line to obtain aligned
`(rectified) images
`504
`
`Registration: Map the aligned
`Wide and Tele images to obtain a
`registration map
`506
`
`Resampling: Process registration
`map and processed Tele image to
`obtain a re-sampled Tele image
`S08
`
`Decision: Use re-sampled Tele
`image and Wide image to detect
`errors in the registration and to
`provide a decision output
`S10
`
`Fusion: Fuse the decision output,
`re-sampled Tele image and Wide
`image into a fused zoom image
`512
`
`
`
`6
`
`

`

`IPR2020-00906
`Patent 10,225,479 B2
`Figure 5 is a flow chart depicting a method for acquiring a zoom image in a
`dual lens camera. Id. at 9:39–40. At step 502, separate images are captured
`by each of the Wide and Tele lenses. Id. at 9:40–44. At step 504, these
`images are aligned on an epipolar line. Id. at 9:46–47. At step 506, a
`registration map is generated. Id. at 9:47–49. At step 508, the registration
`map is used to resample the Tele image. Id. at 9:50–51. At step 510, Tele
`image pixel values are compared to Wide image pixel values, and if a
`significant difference is detected, the Wide image pixel values are chosen for
`the output image. Id. at 9:51–58. Finally, at step 512, a fused image is
`generated from the re-sampled Tele image and the Wide image. Id. at 9:58–
`60.
`Illustrative Claim
`B.
`Claims 19 is the only independent claim challenged. See Ex. 1001,
`14:66–15:32. Claims 20–22 depend directly or indirectly from claim 19. Id.
`at 15:33–15:48. Claim 19 is illustrative of the challenged claims and is
`reproduced below.
`19. A dual-aperture digital camera for imaging an object or
`scene, comprising:
`a) a Wide camera comprising a Wide lens and a Wide image
`sensor, the Wide camera having a respective field of view
`FOVW and being operative to provide a Wide image of the
`object or scene;
`b) a Tele camera comprising a Tele lens and a Tele image
`sensor, the Tele camera having a respective field of view
`FOVT narrower than FOVW and being operative to provide a
`Tele image of the object or scene, wherein the Tele lens has
`a respective effective focal length EFLT and total track
`length TTLT fulfilling the condition EFLT/TTLT > 1;
`c) a first autofocus (AF) mechanism coupled mechanically to,
`and used to perform an AF action on the Wide lens;
`
`7
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`IPR2020-00906
`Patent 10,225,479 B2
`d) a second AF mechanism coupled mechanically to, and used
`to perform an AF action on the Tele lens, wherein the Wide
`and Tele lenses have different F numbers F#Wide and F#Tele,
`wherein the Wide and Tele image sensors have pixels with
`respective pixel sizes Pixel sizeWide and Pixel sizeTele wherein
`Pixel sizeWide is not equal to Pixel sizeTele, and wherein the
`Tele camera has a Tele camera depth of field (DOFT)
`shallower that a DOF of the Wide camera (DOFW); and
`e) a camera controller operatively coupled to the first and
`second AF mechanisms and to the Wide and Tele image
`sensors and configured to control the AF mechanisms, to
`process the Wide and Tele images to find translations
`between matching points in the images to calculate depth
`information and to create a fused image suited for portrait
`photos, the fused image having a DOF shallower than DOFT
`and having a blurred background.
`Id. at 14:66–15:32.
`Level of Ordinary Skill in the Art
`C.
`Petitioner identifies a person of ordinary skill in the art (“POSITA”) at
`the time of the invention as someone that would have had “a bachelor’s or
`the equivalent degree in electrical and/or computer engineering or a related
`field and 2-3 years of experience in imaging systems including optics and
`image processing.” Pet. 7 (citing Ex. 1003 ¶ 13). In our Institution
`Decision, we adopted this description as our own. See Dec. Inst. 9–10.
`Neither party disputes that preliminary finding, which we maintain for
`purposes of this decision. See PO Resp. 4–5; Pet. Reply 1–26.
`D. Claim Construction
`In inter partes reviews, we interpret a claim “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).” 37 C.F.R. § 42.100(b) (2019). Under this
`standard, a claim is construed “in accordance with the ordinary and
`
`8
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`

`IPR2020-00906
`Patent 10,225,479 B2
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” Id. Only claim
`terms which are in controversy need to be construed and only to the extent
`necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`The parties dispute the meaning of the camera controller limitation
`recited in claim 19. See Pet. 8–10; PO Resp. 9–11; Pet. Reply 1–4; PO Sur-
`Reply 2–3. We did not provide a preliminary construction for this term in
`our Institution Decision because Patent Owner initially did not dispute
`Petitioner’s proposed construction or argue for an alternative construction.
`See Dec. Inst. 10–11. Although the parties currently dispute the meaning of
`this limitation, we need not construe it because our decision does not depend
`on its meaning. See Nidec, 868 F.3d at 1017.
`Patentability of Claims 19–21
`E.
`Petitioner argues claims 19 and 20 are unpatentable over Parulski,
`Ogata, Kawamura, and Soga, and claims 20 and 21 are unpatentable over
`Parulski, Ogata, Kawamura, Soga, and Morgan-Mar. Pet. 12–74. Patent
`Owner disagrees. PO Resp. 36–80.
`For the reasons discussed below, we find Petitioner has failed to
`produce sufficient evidence to demonstrate that a person having ordinary
`skill in the art would have known that a scaled version of Ogata’s lens could
`have been used in Parulski’s camera with reasonable expectation of success.
`This failure is dispositive of all grounds in the Petition. Accordingly, we
`limit our analysis below to the evidence and argument presented regarding
`the teachings of Parulski, Ogata, and the reasons to combine these
`references.
`
`9
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`

`IPR2020-00906
`Patent 10,225,479 B2
`1. Parulski
`Parulski discloses “a digital camera that uses multiple lenses and
`image sensors to provide an improved imaging capability.” Ex. 1005, 1:8–
`10. A schematic illustration of Parulski’s camera is shown in Figure 1,
`which is reproduced below.
`
`
`Figure 1 is “a block diagram . . . of a digital camera using a first zoom lens
`[3] with a first image sensor [12], and a second zoom lens [4] with a second
`image sensor [14].” Id. at 8:28–30, Fig. 1. Each of zoom lenses 3 and 4
`could be “replaced with a fixed focal length lens.” Id. at 13:3–6. Image
`sensors 12 and 14 can “have a variety of aspect ratios” and “do not have to
`have the same specifications.” Id. at 13:26–32. Parulski’s digital camera
`could be, for example, the Kodak Easyshare V610 dual lens digital camera,
`which uses a 6MP (megapixel) 1/2.5” charge coupled device (CCD) as an
`image sensor. Id. at 5:21–35; see also Ex. 1033, 62 (showing the Easyshare
`V610 uses a 6 MP 1/2.5” CCD). Charge coupled devices of this type were
`rectangular with a 7.18 mm diagonal. See Ex. 1030, 1.
`
`10
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`

`IPR2020-00906
`Patent 10,225,479 B2
`In Parulski’s digital camera, analog data captured by image sensors 12
`and 14 are digitized by analog signal processors 22 and 24, respectively, and
`sent to multiplexers 34 and 36. Ex. 1005, 13:48–59. Control processor 40
`uses multiplexer 34 to select data from one of image sensors 12 or 14 as
`image data and uses multiplexer 36 to select data from the other of image
`sensors 12 or 14 as autofocus data. Id. at 14:1–5. Image processor 50
`generates an image from the selected image data and autofocus signals for
`first and second zoom lenses 3 and 4 from the selected autofocus data. Id. at
`14:5–16.
`2. Ogata
`Ogata discloses “[a] wide-angle photographic lens system which has a
`short total length . . . a high aperture ratio and excellent optical performance,
`and is suited for use with the collapsible mount type cameras.” Ex. 1026,
`3:2–5. Ogata’s wide-angle lens system is shown in Figure 1, which is
`reproduced below.
`
`
`Figure 1 of Ogata is a schematic illustration of a first embodiment of Ogata’s
`wide-angle lens system. Id. at 12:1–4.
`
`11
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`

`IPR2020-00906
`Patent 10,225,479 B2
`Lens prescription data for the first embodiment of Ogata’s lens is
`provided in tabular form in column 7. An annotated version of that table is
`reproduced below.
`
`
`Id. at 7:35–62. The Figure shows lens prescription data in tabular form for
`the first embodiment of Ogata’s lens, annotated to highlight the index of
`refraction (n3) and Abbe5 number (ʋ3) for the third lens element.
`
`
`5 An Abbe number is an approximate measure of how a material’s index of
`refraction depends on the frequency of light passing through it. See, e.g.,
`Darryl Meister, Understanding Reference Wavelengths (April 12, 2010),
`available at http://www.opticampus.opti.vision/files/memo_on_reference_
`wavelengths.pdf (last visited October 18, 2021).
`
`12
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`IPR2020-00906
`Patent 10,225,479 B2
`3. Reasons to Combine Parulski and Ogata
`Petitioner argues that it would have been obvious to modify Parulski
`to include a scaled version of Ogata’s wide-angle lens because “Parulski
`does not indicate lens prescription data for . . . [the] lens systems in its
`camera.” Pet. 29. Thus, a skilled artisan would have looked to Ogata for
`“lens data that specifies the properties and configuration that teaches . . .
`how to construct a wide-angle lens unit.” Id. (citing Ex. 1003 ¶ 63).
`Petitioner argues that a skilled artisan would have known that the
`wide-angle lens described in Parulski (“40 mm equiv.”) would have had a
`56.8 degree FOV6 and focused its image onto the 43.27 mm diameter image
`plane of a 35 mm camera. Id. at 29–30 (citing Ex. 1003 ¶ 68; Ex. 1005,
`23:23–43; Ex. 1019, 107). Petitioner further argues that such an artisan
`would have also known that scaling Ogata’s lens to instead focus its image
`onto the 7.12 mm diameter image plane of a 1/2.5” CCD would have
`resulted in a scaled lens having a similar 63.4 degree FOV and 2.9 F-
`number, but a 5.72 mm effective focal length (EFL) and a 6.89 mm total
`track length (TTL). Id. at 26–28 (citing Ex. 1005, 5:21–35; 1020, 57;
`Ex. 1021 ¶¶ 37–39; Ex. 1022, 254–255; Ex. 1026, 7:35–61, Fig. 1; Ex. 1029;
`Ex. 1030; Ex. 1033, 62).
`Petitioner supports its argument with the testimonial evidence of Dr.
`Sasián. See Pet. 26–27 (citing Ex. 1021 ¶ 38). According to Dr. Sasián, a
`person skilled in the art could have used Zemax lens design software to scale
`Ogata’s lens. Ex. 1021 ¶ 39 (citing Ex. 1021, App’x, Figs. 3A–3C). The
`appendix to Dr. Sasián’s declaration includes a heading “C” entitled “Fig. 3
`- Ogata scaled to fill a 1/2.5” image sensor using Zemax (v.02/14/2011).”
`
`
`6 Corresponding to a 28.40 degree HFOV or half field-of-view.
`
`13
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`IPR2020-00906
`Patent 10,225,479 B2
`Id. at 34.7 The appendix also includes a heading “C.3” entitled “Figure 3C –
`Prescription Data,” followed by a “Lens Data Editor” spreadsheet, an
`annotated version of which is reproduced below.8
`
`The Figure is an annotated version of “Fig. 3C – Prescription Data” showing
`lens prescription data entered into a “Lens Data Editor” spreadsheet and
`
`7 When citing to the appendix, we cite to the declaration page numbers.
`8 In Zemax, a “Lens Data Editor is the primary spreadsheet where the
`majority of the lens data will be entered.” Ex. 1022, 789.
`
`
`
`14
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`IPR2020-00906
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`annotated to highlight the index of refraction (1.83) and Abbe number (26.5)
`of the third lens element in the “Glass” column.
`A few inconsistencies between the lens prescription data for Ogata’s
`first embodiment lens and the data entered into the “Lens Editor Data”
`spreadsheet are noticeable. First, the Abbe number for the third lens element
`is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the
`“Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021,
`36. Second, the data for the fourth and tenth aspherical surfaces are
`noticeably different. For example, the fourth order term (A4) for the fourth
`aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and
`151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare
`Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain
`these discrepancies.
`Patent Owner identifies the Abbe number discrepancy for the third
`lens element between Ogata’s first embodiment lens and the “Lens Data
`Editor” spreadsheet. See PO Resp. 31. Patent Owner argues that, due to this
`discrepancy, “Dr. Sasián’s field curvature, distortion and OPD [optical path
`difference] fan plots on page 35 of his declaration do not accurately reflect
`the performance of a scaled version of Ogata’s Embodiment 1 lens.” Id.
`(citing Ex. 2015 ¶ 62). Moreover, Dr. Moore opines that “[a] significant
`change in the index of refraction or the Abbe number can change a highly
`performing lens design into an unacceptable design.” Ex. 2015 ¶ 88.
`Petitioner was provided an opportunity to try to explain or correct this
`Abbe number discrepancy in its Reply, but did not attempt to do so. See Pet.
`Reply, 1–26. Instead, Petitioner argued that “Petitioner and Dr. Sasián have
`provided detailed lens design software analysis, which confirms the viability
`of . . . Ogata’s lens designs in Parulski and reinforces the Petition’s
`
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`motivation to use the same.” Id. at 15 (citing Pet. 21–24, 28–30; Ex. 1021
`¶¶ 35–45, App’x; Ex. 1039 ¶ 22, App’x).9 But Dr. Sasián’s lens design
`analysis appears to be based on the erroneous data discussed above, calling
`into question Petitioner’s contention that a person skilled in the art would
`have known that Ogata’s lens could be scaled to work in Parulski’s camera
`with a reasonable expectation of success. Indeed, Petitioner criticized Patent
`Owner for offering opinions that were not based on lens design software
`analysis because a person skilled in the art “would have performed lens
`design software analysis and formed its opinion based on the lens design
`software.” Id.
`In an inter partes review, Petitioner is “master of its complaint.” SAS
`Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018). Thus, the Petition is
`“the centerpiece of the proceeding both before and after institution.” Id. at
`1358. Moreover, Petitioner “has the burden from the onset to show with
`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
`Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). Petitioner’s
`contention that a person skilled in the art would have found it obvious that
`Ogata’s lens could have been scaled to work in Parulski’s camera with a
`reasonable expectation of success is entirely based on Dr. Sasián’s opinion,
`which is based on Dr. Sasián’s Zemax lens design software analysis. See
`Pet. 24–30; see also Ex. 1021 ¶¶ 35–39, App’x, 34–36. But, as noted above,
`the lens prescription data used for that analysis appears to differ from the
`
`
`9 Petitioner cites paragraphs 50–55 and 61–65 of Dr. Sasián’s declaration,
`which has 46 enumerated paragraphs. See Ex. 1021, 27. Dr. Sasián analyzes
`scaling Ogata’s lens in paragraphs 35–39 of his declaration and scaling
`Kawamura’s lens in paragraphs 40–45. We make that correction here.
`
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`lens prescription data for Ogata’s first embodiment lens.10 Compare
`Ex. 1026, 7:46, with Ex. 1021, 36. We accept as true Petitioner’s contention
`that a person skilled in the art “would have performed lens design software
`analysis and formed [an] opinion based on the lens design software.” Pet.
`Reply 15 (citing Ex. 1039 ¶ 22). A logical consequence of that contention is
`that the opinion of a person skilled in the art will be only as reliable as the
`lens design software analysis that person performed, which will be only as
`reliable as the data used to perform that analysis.
`Moreover, as also discussed above, Patent Owner pointed out this
`Abbe number discrepancy in its Patent Owner Response. See PO Resp. 31.
`This put Petitioner on notice of the discrepancy and shifted the burden of
`production to Petitioner to either correct its analysis or explain why the
`Abbe number discrepancy did not affect the analysis. See Dynamic
`Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`2015) (explaining the shifting burden of production in an inter partes review
`may require “producing additional evidence and presenting persuasive
`argument based on new evidence or evidence already of record”) (internal
`citations omitted). Petitioner neither corrected its reason to combine
`analysis nor explained why it would not be affected by the apparent Abbe
`number discrepancy. See Pet. Reply 1–26.
`Finally, in response to Patent Owner’s argument that a person skilled
`in the art “would not have used the Ogata lens design scaled down,” but
`would have instead constructed a miniature camera lens using “a fully
`
`
`10 We note, as well, that the lens prescription data for example 1 of
`Kawamura’s lens appears to differ from the lens prescription data Dr. Sasián
`used to perform the Zemax analysis for scaling Kawamura’s lens. Compare
`Ex. 1012, 3, with Ex. 1021, 37, 39.
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`aspheric design with plastic elements” having an aperture stop near the front
`of the lens (PO Resp. 58–59), Petitioner argues that a person of ordinary
`skill in the art “could have used lens design software to modify and adjust an
`older lens design into a miniaturized version” because the “modifications or
`adjustments [needed] were within the skill” level of a person of ordinary
`skill in the art (Pet. Reply 15–16 (citing Ex. 1039 ¶¶ 24–31)).11 Patent
`Owner argues that “Dr. Sasián’s new Zemax analyses should be disregarded
`as an untimely obviousness theory presented in reply” because “[t]he Zemax
`analyses in Dr. Sasián’s original declaration simply took the lens
`prescriptions in the Kawamura and Ogata patents and confirmed that Zemax
`would scale them.” PO Sur-Reply 13–14.
`We agree with Patent Owner. The Petition contends that a person of
`ordinary skill in the art would have known that Ogata’s lens (using glass lens
`elements) could have been scaled to focus an image onto a 1/2.5” image
`sensor for use in Parulski’s camera. See Pet. 24–30; Ex. 1021, 36.
`Petitioner’s reply evidence and argument is not introduced to support that
`contention but a different contention—that a person of ordinary skill in the
`art would have known that Ogata’s lens could have been redesigned using
`aspheric plastic lens elements to focus an image onto a 1/3” image sensor.
`See n.11, supra. This is a new contention that does not support Petitioner’s
`
`11 We note that Dr. Sasián’s analysis discloses how Kawamura’s lens can be
`modified by replacing the spherical glass lens elements with aspherical
`plastic lens elements, moving the aperture stop to the first lens element,
`changing the F number to 2.8, and reducing the effective focal length to
`focus an image onto a 1/3” image sensor rather than a 1/2.5” image sensor.
`See Ex. 1039 ¶¶ 25–30; App’x, 17–18. Dr. Sasián also opines that although
`this analysis illustrates how Kawamura’s lens could have been modified, a
`person skilled in the art “would have recognized that Ogata could have been
`similarly adjusted to yield a miniaturized form-factor.” Id. ¶ 25.
`
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`original contention that Ogata’s lens could simply be scaled. Therefore,
`because it is a new and untimely contention, we do not consider it further.
`See Consolidated Trial Practice Guide (Nov. 2019)12 (“Petitioner may not
`submit new evidence or argument in reply that it could have presented
`earlier, e.g., to make out a prima facie case of unpatentability.”); see also
`Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir.
`2015) (“The Board must make judgments about . . . when a Reply contention
`crosses the line from the responsive to the new.”); Intelligent Bio-Sys., Inc.
`v. Illumina Cambridge Ltd., 821 F.3d at 1359, 1369–70 (Fed. Cir. 2016)
`(affirming the Board’s rejection of a reply argument presenting an “entirely
`new rationale to explain why one of skill in the art would have been
`motivated to combine” prior art references); Henny Penny Corp. v.
`Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (affirming the
`Board’s rejection of a reply argument presenting an “entirely new rationale”
`for why a claim would have been obvious).
`For the reasons discussed above, we find Pe